Cory Abernathy spends his day researching patents and determining what sorts of university-related items can be shipped overseas. Abernathy recently joined the Illinois State campus community as the intellectual property and export control officer.
The patent process is very involved. Abernathy first has to learn as much as he can about an invention. “After I understand how it works, I do an anticipation search to see if the technology already has a patent,” he said. “I have to search databases for U.S. patents and patents issued in other countries.”
After Abernathy runs an initial search, he meets with an intellectual property attorney. The attorney has to have a clear understanding of the project and then runs a professional search on the technology. “After the attorney runs the search, we can fill out a provisional U.S. patent application,” said Abernathy. “We then have one year to file a formal application. During that year, I search for a company that might be interested in licensing and selling the new product.”
“Although the University has long had a process for filing patent disclosures and patent applications, until we hired Cory there was very little on-campus expertise,” said Interim Associate Vice President for Research John Baur.
A patent is lengthy and includes drawings as well as claims asserting what an invention can do. “We have to include every aspect of what the invention is capable of when writing the patent,” said Abernathy. The claims have to be written broad enough to cover as many options as possible for the invention so no one else can design around the patent. “For example, Assistant Professor of Analytical Chemistry Chris Mulligan was recently issued two patents for a new water sampling technology that totaled around 100 pages in length,” he said.
A creation doesn’t have to be patentable to be commercially viable, however. For example, the Center for Mathematics, Science and Technology (CeMaST), worked with a publishing company to create instructional materials in science and math for K–8 education. “This is protected by copyright and we have licensed the right to distribute these materials to a publisher,” said Abernathy.
Abernathy is also the export control officer. “Having an export control officer will be important for educating university faculty and staff on how the export control laws affect their professional activities,” said Baur. “Few people realize that these laws have impact on travel to foreign countries and the use of certain technologies and software.”
For example, anyone overseas who is receiving a controlled item from the University is screened. “A controlled item is something that can have a military application or that can be manipulated into something dangerous, such as chemical and biological agents used in lab experiments or certain types of computer technology,” explained Abernathy.
“I screen people by running names against dozens of denied parties lists administered by various national and international agencies such as the U.S. Department of State, U.S. Department of Commerce, and the FBI,” he said. “Basically, anyone who commits, or is suspected of, a federal crime anywhere in the world substantial enough to warrant a threat to governments gets put on a list. If they are flagged, then we can’t ship the controlled item to them.”
There are also guidelines for university employees traveling overseas. “In order for faculty and staff to travel overseas with lab equipment or even their personal cell phones and laptops, we would need to perform an export control assessment,” said Abernathy. This involves identifying what items are being taken with them, where they are going and who in another country is going to be exposed to the items or information. “This allows us to determine if the item or information is controlled or if they can freely take the items with them,” he said. If the item is controlled, a license exception or an export license from the Bureau of Industry and Security can be obtained.
Abernathy will help familiarize faculty and staff with these laws and regulations by holding meetings in the upcoming months. There is also an export control website currently in development that will be available to faculty and staff soon.