Why new technology should be shared to 'improve the lives of everyone'

Anne Burkhart, who sits at the heart of a US university’s commercial arm, tells Sarah Speight that good ideas must not only be viable, but also socially beneficial, to be truly successful.

As senior patent coordinator at a major US university’s commercial arm, Anne Burkhart knows a thing or two about how to commercialise good ideas.

Approximately 150 patent disclosures cross the desks of her and her team each year at the Office of Technology Management (OTM), University of Illinois in Chicago (UIC).

Their job is to work with the university faculties, staff and students to advance research, education, and economic development. Technology transfer is the goal, “moving scientific discoveries from the inventor’s mind to the hands of society,” as Burkhart describes it.

A registered patent attorney, she began her IP career as internal and external counsel—both at a privately held medical device company, and an external counsel in private practice, working mostly on prosecution.

Now, in her role at the OTM—where she has worked since 2018—Burkhart and her team represent various colleges within the university. These include the dental, pharmacy and medical schools, a hospital, as well as the engineering, physics and chemistry departments.

Burkhart’s team advises the internal office on the patentability of new technologies and other matters, files provisional patent applications in the US Patent and Trademark Office (USPTO), and manages patent portfolios after conversion of an IP.

“We file them not only for inventions that are solely owned by the university, but sometimes we also take the lead in collaborations,” she explains.

“Occasionally we file internally on cases that have involved collaborations between either our inventors and other universities, and/or our inventors and companies—or a combination of both of those.”

Priority preservation

At the OTM, the types of disclosures received vary in size, from small to very large, but the team has a “pretty neat system” which helps them to pick the best projects, Burkhart explains.

“We're able to do an initial screening of a project we filed to preserve priority for an invention internally. Then we have a one-year period in which we can market the technology or seek other feedback.

“Or we can give the faculty an opportunity to do some de-risking milestones, so that we can decide whether we want to continue with the technology.”

One year from filing, you have to make a decision as to whether to proceed or not, she explains. “So we give our team an opportunity to both preserve the priority of an invention, but to also try to get feedback on which ones are the best projects they have.”

What companies want

Academic inventors may be thought of as lacking commercial nous, but Burkhart disagrees with this notion.

She explains that many universities do not have their own internal patent experts. Instead, they may send out disclosures to be filed, sometimes just before their professors are ready to publish.

“They'll file a cover sheet provisional, which are not developed provisional applications written by an attorney who’s looked through the material, developed it and worked with the inventor to broaden it out,” explains Burkhart.

“That can be a problem. If it's something that you just [file] without really working through the legal aspects of it, then that's not necessarily the most licensable option for a company to look at.”

Companies, she explains, will ask: “What have you protected? How have you protected it? Do you have valuable technical information, in addition to the IP, the patent or patents? What's the whole package you're presenting?”

Having worked as an internal corporate attorney, Burkhart is familiar with the corporate review process.

She explains that the team tries to help de-risk its projects internally so that a company will look at them and say, “there's valuable IP, valuable technical information here. And this professor could provide some consulting services for us”.

Commercial value

The goal is not only to de-risk the invention, but also to make it easy for a company to take on a technology if they're interested in it. “Those are the kinds of things that our office, in conjunction with our faculty, work together on to try to achieve.”

She doubts whether it really matters if the inventor knows a lot about business—especially if “they are very good at what they do and they've developed an idea, and we've broadly covered it and protected them”, she says.

“Ideally the company will see that they've done a lot of the work that they would have otherwise had to develop.

“If a company is interested in the invention, then we try to make it as easy as possible to get them to align with and partner with us.”

One of the obstacles of early-stage research is that each IP that someone develops out of research or a project is unique, and finding how that uniqueness can translate potential commercial value, she explains.

“Sometimes that can be a challenge, if it's something that no one else is really working on, and they don't really understand how you could capitalise on it. Whether it's readily apparent how you could use something commercially or not can be an issue.”

Addressing unmet needs with tech

Many of the innovations Burkhart and her team deal with can be classified as early-stage technologies that address “unmet technical or clinical needs”, she explains.

For example, the university recently supported a startup company called Selagine, which entered into a research collaboration with pharmaceutical company Grifols.

As a result, Selagine will now be able to conduct clinical studies to turn a treatment that it has developed for people who suffer from dry eye disease into an available commercial product.

“This is huge,” says Burkhart. “For a large university to have something that has been able to spin out into a startup and then come into a research collaboration on this scale is a very big deal.

“I feel very honoured—I was helping Selagine with the IP on this technology before they became a startup and I'm still working with them.

“It's really exciting to have something actually translate out into the world that might make it a better place for people who are suffering.”

AI the disruptor

But what about the potential risks of disruptive technology such as AI, such as the sources used by large language models?

“There's a lot to be learned about AI,” she says, mainly: Which version does someone have? How has the database been trained? Can you possibly protect your information?”

She explains that when you ask OpenAI to provide you with some code, it uses resources that are available on the internet. This is not limited to open source—it takes anything it has access to, to create this.

“That's very interesting—it's possible that parts of the code that people [are given] when they ask an AI to generate a code for them could be proprietary from other companies. That's a mess.”

As for the idea that AI will take jobs or replace humans in the ownership of ideas, she is equally sceptical, believing firmly that the role of AI should be to support innovation.

“I'm hoping that in the future, people will stop thinking that they don't need employees, or lawyers, and they don't need anybody, they'll just use a computer. Well, a computer's not going to stop you from bleeding.

“People have even asked me, Can't I just take an abstract or something and have an AI generate an invention and patent application, and then just file it?

“The answer is no. I mean, the USPTO has just determined that you cannot have an AI as an inventor. You have to have a person.

“The good thing about that is you can interact with an AI to cause it to invent, but only if you're also an inventor. You have to contribute to the subject matter of the claims in your interaction with an AI.

“I think that's a good result. I also think that whoever establishes the high-level algorithms that causes the AI to be able to do inference like that should be considered an inventor on any AI application that comes out of their system because they created it.”

Hopes for the future

Leaving ownership issues around AI aside, the role that technology, Burkhart suggests, can and should be used for altruistic motives.

“It's easy in the news to have a big splash, especially about stuff that scares people, [such as AI]. Yet there's a lot of technology that could be inexpensively shared with countries to improve people’s lives.”

Among her goals, she explains, are taking those technologies that can both save lives and be developed inexpensively, and broadly adapting them—especially in developing countries.

“I'm hoping that the future of technology can be used to improve the lives of people everywhere by finding simple solutions or even complex solutions, but ones that allow us to perform our activities in a way that's more beneficial to everyone,” she says.

Anne Burkhart is a speaker at the WIPR Summit in Chicago, this week, March 20-21, and will speak on the panel discussion: ‘IP in the age of AI’. She was speaking in a personal capacity for this interview.