Home > Topics > Patents and Patenting: Balancing Protection with the Public Domain > Designing Patent Applications for Possible Field-of-Use Licensing > Editor's Summary, Implications and Best Practices

This chapter examines and discusses field-of-use licensing from a very practical, applied perspective and links it with the important claim structure in patent applications. The foundation of an effective field-of-use licensing strategy is a patent application that is carefully drafted. It should allow one to consider further foreseen licensing opportunities—and make unforeseen opportunities visible.

Patent applications should be organized and drafted within the context of a long-term objective that carefully considers the multiple possibilities and opportunities of field-of-use licensing. They should be structured to anticipate the potential scope of an invention and thus maximize subsequent field-of-use licensing opportunities. In the agricultural, pharmaceutical, biochemical and chemical disciplines this is especially the case, since inventions can have multiple, and often unforeseen, applications. Technology managers should focus strategically not only on the basic idea of an invention, but also more broadly so that the various ways such an invention might be developed, and subsequently licensed, for multiple and more profitable uses can be considered. This strategy applies equally to inventions with commercial or humanitarian applications.

When drafting patent applications, it is important to remember that the more details, examples, and alternatives that are thought through and then disclosed, the greater the opportunity for future divisional or continuation applications, as well as future claims that can then be exclusively for a particular field of use. In other words, proactive patent application drafting and prosecution will maximize an invention’s potential value: the more angles that are considered, the greater the number of field-of-use licenses.

It is also critical for the technology manager to retain control over the patent application process, since this will allow her to be able to manage and maximize the patent’s potential scope. If licensees are given the responsibility of patent application preparation and prosecution, their interests may not be consistent with those of the licensor, and the maximal value of the invention can be lost. By retaining control over the patent application process and making all of the institution’s licenses, in effect, field-of-use licenses, the technology manager retains the ability to take one of these possible future uses and license it to someone else, thus generating higher royalties for the institution, or, in the case of humanitarian licensing, creating the greatest benefit for the most individuals.

The main point of this chapter is to encourage creative thinking when preparing patent applications. It is not enough to focus just on the basic idea. Instead, technology managers should encourage inventors to think broadly about all the various ways that their invention might be used. Moreover, since there is no way of knowing every possible use of the invention, the more invention ideas that can be put into a patent application, the more support there is for future divisional or continuation applications, as well as claims that can be exclusively licensed via field-of-use licensing strategies. By making all of the institution’s licenses, in effect, field-of-use licenses, the technology manager retains the ability to take one of these possible future uses and license it to someone else, maximizing the benefits of the inventions and generating higher royalties for the institution or realizing the greatest potential for humanitarian licensing.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• Field-of-use licensing is an important tool for maximizing value of inventions arising from the R&D of a nation’s institutions. It is therefore prudent to support the activities of research institutions so that they can realize the full value of their human and institutional capital. This might involve tangible support, as well as drafting and implementing appropriate legislation.
• Public sector institutions should be free to determine the best licensing strategies which might include exclusive licenses. Whenever possible, exclusive licensing should be limited to specific field of uses or territories together with safeguards that the technology is advanced and disseminated.

For Senior Management (university president, R&D manager, etc)

• Strategically managing inventions, patent applications, and licensing is the key to maximizing value and creating the greatest, broadest benefit for the public good. Field-of-use licensing is one tool to help maximize the value of inventions arising out of an institution’s R&D efforts. Recognize the potential for such value, and provide support to technology transfer office so that they can properly implement policies and procedures.

For Scientists

• Field-of-use licensing will entail clearly communicating with your technology transfer office all of the potential aspects and applications of your R&D efforts.
• Remember to think creatively when considering applications of your inventions. In other words, ask yourself what might conceivably be a future application for your invention, even if it seems remote. Such creative endeavors can create lucrative future field-of-use licensing opportunities for your institution.

For Technology Transfer Officers

• In order to maximize field-of-use licensing opportunities, it will be important for your office to establish and implement strategies for patent application preparation that seek to anticipate any and all licensing opportunities that can arise from an invention.
• Communicate, communicate, communicate with your R&D personnel! They are the repository of ideas and can, better than anyone else, foresee potential applications for their inventions. Carefully work with them to fully realize the value of their inventions.
• Retain control of you patent applications. Don’t permit a licensee to gain control, because their interests and your interests are likely very different. For example, you will favor a broader claim scope, but a licensee will only wish to prosecute claims of direct interest to their particular purposes.