Purpose of using a technology disclosure doc template by a Tech-Transfer Support staff in an academic/research institution (esp. a UK perspective): “What one should ask an academic researcher in a face-to-face meeting, in order to capture relevant information that will enable creating the confidence that their technology is worth taking forward"

1. Shan Mairembam (BEng, MBA, LLM) | Page #1 E-mail: shanjoym@gmail.com http:www.linkedin.com/in/shanjoymairembam
“What one should ask an academic researcher in a face-to-face meeting, in order to capture relevant
information that will enable creating the confidence that their technology is worth taking forward'”
Overall Logic of Approach: “Begin with the end in mind”
Clarity on Realistic IP Commercialisation Support at the institution: “Expectation vs Availability”
Institutional Objectives Current FY targets 5 FY targets HEBCIS metrics
(relevant for UK)
KEF / REF / TEF metrics
(relevant for UK)
Technology Development Pathway
IP & regulatory norms
Competitive landscape
(Technologies / Companies / Products)
Business dependency
(Ecosystem / Value Chain Map)
No of years (FY) needed
Required R&D investment amount
(and sources of funding)
R&D technical hurdles
Inventor(s) Self-Interest
Monetary return Recognition & Publication Freedom to operate (incl. continued research)
Complex relationship among inventors (incl. contributors, partners, institutions)

2. Shan Mairembam (BEng, MBA, LLM) | Page #2 E-mail: shanjoym@gmail.com http:www.linkedin.com/in/shanjoymairembam
“Pre-meeting Info Gathering + First-time Catch-up Meeting”
Fill-up Technology Disclosure (TD) form
Purpose: “Official documentation of invention in brief (for record management and legal reasons)”
Maintain due-diligence (DD) records
Prepare Initial Observation report
Lead inventor info (esp. employment) Other inventor(s) & contributor(s)
Prior funding sources (incl. T&Cs)
Prior disclosures & planned future disclosures Technical specification & How innovative/unique? (incl. IP format)
Market opportunity (esp. issues identification & available solutions)
R&D status: Current & immediate next
Any material transferred from elsewhere
Technology brief (esp. what is it?)
IP assignment agreements (e.g. student, sub-contractor, previous owner/institution)
Collect & review legal clauses; if unavailable, recreate or establish a workaround
Previous grant funding agreements (esp. IP ownership, exploitation right, expected monetary return)
Previous revenue sharing agreements (incl. any IP usage arrangement)
Technical files (incl. market report)
Trade Secret docs & Patent prosecution files) Earlier business case report
Software codes (incl. OSS)
Potential licensees DD check (esp. financial)
Future R&D plan
Workable business model Return for the institution
Technology assessment scoring Marketing flyer text
Capture basic aspects of the invention for easy pointers to plan follow-up actions
Draft a workable way forward plan on the proposed idea/invention
Doubtful Qs

3. Shan Mairembam (BEng, MBA, LLM) | Page #3 E-mail: shanjoym@gmail.com http:www.linkedin.com/in/shanjoymairembam
“Post-meeting Info Crosscheck & Mutually Agreed Way-forward Plan”
Purpose: “Agree a plan to take forward or assign to another Support-staff or drop the proposition”
Technology Development Plan
IP Optimisation & Protection Plan
External Engagement Plan
Identify available IPs and yet-to-be created IPs to create a complete IP package offer
Chart out funding & technical development targets to reach a presentable status (for market)
Agree which companies/partners to be engaged and how/when to be contacted
Agree a periodic follow-up plan
Initial patent filing
&
Continued patent prosecution
– ‘cost justification’
Draft Tech-Transfer-Office
support letter
for
translational grant applications
Prepare Confidentiality Agreement
to engage clients
&
Negotiate with clients for deal terms
Example Tasks