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
4. 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
5. Lab Notebooks
TTO providing a guide to lab
notebooks:
› http://www.parteqinnovations.com/pdf-doc/Lab
› Also makes a good
advertisement for office
6. Academic publication imperative
› Runs contrary to patent rules
Need to patent before publishing
Create paradigm:
› Patent, Publish and Profit
7. 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
8. 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
9. Invention Disclosure
› Disclosure Form
Assessment
› Prior Art Search
Protection
› Patent, trademark, copyright
http://www.techtransfer.umich.edu/resources/inventors/index.php
10. 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
11. Patent – most applicable
Copyright
Trademark
Trade Secret
› Most likely inapplicable in
academic environment
12. 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
13. Protection of Confidentiality
› Non-disclosure agreements (NDAs)
› Employment agreements
Protection of Technology
› Licenses
› Technology transfer agreements
› Material Transfer Agreements
Research Agreements with Industry
15. Education:
› MSc or PhD
AND
› MBA or JD
Training:
› AUTM or LES course
› Some additional providers (TTT)
16. Patent law changes
› Patent Agents on TTO staff?
Improvements in office practice
AUTM Annual Meeting is useful
LES provides good contacts
Regional activity
› ASTNET?
17. • 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
18. • 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’