WARF’s Dr. Victoria Sutton talks about her career in technology transfer and intellectual property management strategy

Graduate Women in Science

Dr. Victoria Sutton is a Registered Patent Agent at the Wisconsin Alumni Research Foundation (WARF), the technology transfer office serving the University of Wisconsin (UW)-Madison. Her Ph.D. is from UW-Madison’s Cellular and Molecular Biology Program. Over the past 13 years, she has managed hundreds of intellectual property (IP) cases for UW in diverse fields including agriculture, animal science, bacteriology, biochemistry, biotechnology, cellular and molecular biology, chemistry, dairy science, drug discovery, environmental science, food science, genetics, health and nutrition, human and veterinary medicine, pharmaceuticals, plant sciences, and transgenic crops and animals.

Can you describe what you do in a short paragraph as if you were talking to a colleague?

I’m an intellectual property manager and a patent agent. I work with inventors at UW-Madison to identify innovations that may have commercial relevance, and where we (WARF) may be able to play a role in commercialization. My job is to work with patent counsel and the inventors to strategically protect the innovations disclosed to WARF. My work sits where science meets law—I’m trying to appreciate how each invention is different from what came before and how it’s going to be used in the world, the legal frameworks that are available to protect it, and the challenges that exist. I consider those things to inform our strategies. At WARF, every invention is also assigned a licensing agent who works on the commercialization. Licensing is another field that scientists can go into—they negotiate contracts to get these things out into world. The money brought in by technology licensing goes to the inventor(s), the department, and the University since WARF is non-profit. In many tech transfer offices, licensing isn’t a separate role; one person handles everything.

What is the difference between a patent agent and a patent attorney?

If you pass the patent registration exam, also referred to as the “patent bar,” you are a patent agent, and you are registered to represent inventors before the USPTO (United States Patent and Trademark Office). If you go to law school and pass a state or federal bar exam, then you are an attorney registered to represent clients in that court system. If you pass both, you are a patent attorney.

What is something that others normally misunderstand or misrepresent in your field?

There’s a lot involved in IP strategy. You don’t want to protect the version of something that the inventors created in their lab; that is often a proof of concept and not the version a company will actually make and sell. You want to protect a definition of the invention that includes the versions that are likely to show up on the shelf, so you learn to think about it broadly. We’ll put in a patent application; sometimes the examiner won’t pick it up for at least two or three years, and then it takes years to negotiate back and forth. We have cases that don’t issue until ten years after the initial application is filed. While a patent is being prosecuted, you can’t change the application except to amend claims at the end of the patent, which are the legally binding definition of the invention. A lot can change in ten years. The Supreme Court has had a couple rulings in the last decade that have dramatically shifted the way we handle patenting. The whole field constantly shifts. Protecting inventions with patents requires a lot of strategic thinking. Read more …