Any surgeon with a creative mind can come up with an idea for a new surgical innovation, but few are able to make their idea a reality and bring it to market. Here we will briefly address five common questions of novice inventors and, hopefully, will shed some light on the complexities of inventing in neurosurgery.
How do I know if my idea is worth developing?
Ideas come in many forms, and not all are worthy of developing into an invention. For an invention to create any significant return on investment, it needs to have two key characteristics.
- Fill a significant need or solve a significant problem. In other words, there needs to be a market for it. If the problem the idea solves is only encountered in rare circumstances and can already be solved by other means, you won’t sell much product. If your idea solves a frequent problem that has no other satisfactory solution easily at hand, you’ve got something.
- Your idea needs to be patentable. This means it must be useful, novel and non-obvious to someone “skilled in the art.” Notably, a surgical technique is not patentable, but tools or devices used in the technique are. To find out if your idea is new, start with a Google search. If you find nothing similar, you can then hire a lawyer to perform a patentability search and a freedom-to-operate (FTO) investigation. This will determine the novelty of your idea. If your idea is novel, patentable and you believe there is a significant market for it, then you have an idea worth pursuing.
How do I develop an idea into an invention?
Start with a pencil and paper. Draw out your idea until you think you have the best possible design. This step is free, so take your time and flesh out the idea as much as possible. Next, decide how far you want to develop your idea before you disclose it. Further development requires personal financial investment but will lead to better understanding by a potential partner (a better “pitch”). The next steps are commissioning CAD drawings, building prototypes, proof of concept (saw bone or cadaver application), FTO investigation, patentability search, patent application (first provisional, then non-provisional), lab testing, filing for FDA approval, manufacturing inventory and marketing. Each of these steps comes with additional cost and you could decide to disclose to a potential partner at any phase.
What resources are available to help me develop my idea?
There are four ways to develop an idea and bring it to market, each with advantages and disadvantages.
- You could develop the idea by yourself and fund it entirely yourself. This is expensive, but you keep control and all the profit.
- Angel investors can ease the financial burden, but they will also take most of the profit and will not provide any assistance or expertise in development.
- If you work for a university, you most likely have a line in your contract giving the university ownership of your intellectual property. As such, most universities are willing to assist in developing of your ideas, both financially and using university resources like lawyers, lab space, other experts, etc. Policies vary between institutions, but typically universities will either invest and assist with development for a significant portion of the proceeds (up to 75%) or decline and release you to pursue other avenues of development.
- A corporate partner can provide ample resources like lawyers, engineers, manufacturing, marketing, etc., and will negotiate the terms of the partnership on an individual basis. Be aware that, while extremely helpful in development, corporate partners are profit driven and use every trick in the book to maximize their profit, not yours. This sometimes includes buying up ideas and then shelving them to prevent competition with their other products. This can be avoided with “claw back” clauses, guaranteed minimum royalties or payment milestones negotiated into the contract.
What do I need to do before disclosing my idea to a potential partner?
The further developed your idea, the more interested your potential partner is likely to be. A simple drawing on a cocktail napkin is not nearly as enticing as a device prototype, and a successful patentability search will increase their confidence that this idea may be profitable. Also, take legal steps to protect your idea from theft. If the idea is not yet patented, both parties should sign a mutual non-disclosure agreement.
What do I need to know about contracts?
The first thing to know about contracts is that you know nothing about contracts. The nuances of contract language are far beyond the skills of anyone not specifically trained it. Hire an experienced lawyer to help you negotiate a contract that won’t sign away your first-born child. For example, be aware of “any” clauses (“brain drain clauses”) that will assign “any” (“all”) of your ideas to the company, “representations/guaranties” that can leave you liable to pay the company if your idea infringes on a pre-existing patent, or one-sided “indemnification/reimbursement” clauses that will make you solely liable if the company is sued. The second thing to know about contracts is that personal relationships mean nothing. The person writing the contract you are offered is never the person you think you have an agreement with, and the person you think you have a good relationship with will most likely be replaced within a few years. Contracts are emotionless and all-important. That is why an experienced lawyer is paramount.
