Running A TT Office – Best Practices

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Running an institutional (usually university) technology transfer office. Presentation given in Bangkok, Thailand as part of an ASEAN-USPTO Program on Technology Transfer - July 1, 2009

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Running A TT Office – Best Practices

  1. 1.  Policies and practices  Education of researchers and management  The 4 steps: › Identify › Protect › Improve › Move out:  Licence; Spin-off; Additional sponsored research
  2. 2. Source: Berneman, Start UP Business Development, AUTM Annual Meeting 2008 ED9
  3. 3.  Ensure basic understanding of trademarks, copyrights, patents, and trade secrets  Train scientists/inventors in record keeping, patent application filing process  Likely to be first lesson on IP  Challenges with researchers doing it wrong › Especially patent searching 4
  4. 4.  Lab Notebooks  TTO providing a guide to lab notebooks: › http://www.parteqinnovations.com/pdf-doc/Lab › Also makes a good advertisement for office
  5. 5.  Academic publication imperative › Runs contrary to patent rules  Need to patent before publishing  Create paradigm: › Patent, Publish and Profit
  6. 6.  Societal good › Will research results get adopted without protection? › How to benefit local and international populations?  Recognition › Career advancement for researchers  Money › Further research money › Personal rewards
  7. 7.  Who owns and manages resulting IP?  IP from research agreements  Disclosures  Initial valuation  Managing commercialization process  End-points: › Licence; Spin-off; or Additional Research  After end-point administration
  8. 8.  Invention Disclosure › Disclosure Form  Assessment › Prior Art Search  Protection › Patent, trademark, copyright http://www.techtransfer.umich.edu/resources/inventors/index.php
  9. 9.  Market › Start-up › Existing Business  Licensing › Contract to use (without relinquishing ownership) for financial and other benefits › Inventor’s involvement is critical  Commercialization  Revenue › Incentives to creators/inventors (royalties/distribution, recognition program) http://www.techtransfer.umich.edu/resources/inventors/index.php
  10. 10.  Patent – most applicable  Copyright  Trademark  Trade Secret › Most likely inapplicable in academic environment
  11. 11.  Patent Protection › Conduct cost/benefit analysis › Determine Patentability › Choose right patent agent/attorney › Choose countries to file applications (U.S., PCT applications, Foreign countries) › Manage expense-attorney’s fees, government fees › Manage patent family › Pay maintenance fees
  12. 12. Protection of Confidentiality › Non-disclosure agreements (NDAs) › Employment agreements Protection of Technology › Licenses › Technology transfer agreements › Material Transfer Agreements Research Agreements with Industry
  13. 13. SCIENCE IP LAW BUSINESS & INDUSTRY EXPERIENCE
  14. 14.  Education: › MSc or PhD AND › MBA or JD  Training: › AUTM or LES course › Some additional providers (TTT)
  15. 15.  Patent law changes › Patent Agents on TTO staff?  Improvements in office practice  AUTM Annual Meeting is useful  LES provides good contacts  Regional activity › ASTNET?
  16. 16. • Direct correlation between TT personnel and research income • ~ 2,000 FTE for $50 B –  $25 Million Research per TT FTE • Compare your own research size – 2004 HERD Data for Thailand  $150 M • Challenge for smaller countries: – How to obtain ‘critical mass’ of TT expertise – Solution in S Africa: Central facility
  17. 17. • 1G: – Lots of patent applications – Not many licensees – Financial hardship • 2G: – Much more analysis before deciding to file – Applications are highly targeted – Start-up Company creation attempted • 3G: – Science portfolios explored with patent back-up – Creation of industry-directed research groups – Use of IP for ‘public good’
  18. 18. Marcel D. Mongeon +1 (905) 481 0133 marcel@mongeonconsulting.com

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