issue Summer 2022

Patent Portfolios Bridge the Gap Between Innovation and the Public Good

By Judy Masterson

Entrepreneur in Residence Peter Paredes, JD, advises Helix 51 incubator companies and other startups, universities and investment firms on strategic intellectual property acquisition, licensing and enforcement. A graduate of the University of Chicago and Chicago-Kent College of Law, he has practiced patent law for 17 years.

Why should a startup build a patent strategy?

A startup is founded on a great idea, and with this great idea, you’re trying to solve a healthcare problem or fill an unmet social need. If they don’t have the proper strategy to protect that great idea, it will be very difficult to get investment to be able to bring your great idea to market. One of the top questions a venture capitalist or angel investor will ask is, “How are you protecting your technology?” And “What is your approach or roadmap to not only protect this technology, but protect anything downstream that follows from it?” Investors are looking for a return on their money, which can take a startup from “seed” to series A–D funding for research, pre-clinical studies, regulatory or validation studies.

Why is it important for a university to have an intellectual property portfolio?

The Bayh–Dole Act of 1980 allows federally-funded research to be patented by universities and for universities to own the resulting inventions. Those universities have the obligation to patent all inventions it elects to own and commercialize or license those inventions, to ensure that innovation serves the greater good and potentially reaches the general public. For RFU, the patent portfolio serves not only to invest in the professor and a potential startup, but to find commercial partners that will take that innovation into clinical trials. If it is a therapeutic or diagnostic tool, the innovation must go through FDA clearance. The university itself doesn’t have the resources or tools to do that or to commercialize the innovation. The IP portfolio bridges that gap.

What invention have you helped to patent that has improved human health?

I’ve been counsel for quite some time to PhotoniCare, a spinout of the University of Illinois at Urbana-Champaign. They developed an inner ear diagnostic tool — the FDA-approved OtoSight™ Middle Ear Scope — which uses optical technology to look at the tympanic membrane, making it easier to diagnose ear infections, especially in little kids. The technology can prevent the overprescription of antibiotics and invasive surgical procedures. The product is launching now across clinics and hospitals.

What’s the most fulfilling part of your work?

Building value for a company that allows them to attract investment, validate their product or get FDA approval, to eventually fulfill an unmet social need or fix healthcare problems.

Judy Masterson is a staff writer with RFU’s Division of Marketing and Brand Management.