Home > Topics > Institutional Policies and Strategies > The Role of the Inventor in the Technology Transfer Process > Editor's Summary, Implications and Best Practices

Inventors create the raw material for technology transfer. However, for this to occur with any degree of coherence or regularity, technology transfer professionals are necessary. Therefore, a successful commercialization enterprise is built on the foundation of good relations between inventors and technology transfer professionals. Such relationships should be established long before the transfer services of the technology transfer office (TTO) are required, so as to enable technology managers to negotiate both faculty and business concerns about licensing agreements whenever the opportunity arises.

As this chapter discusses, successful technology transfer cannot be accomplished without the inventor. The challenge for the technology transfer professional is to obtain full support for his or her efforts from the inventor, an individual over whom the technology transfer manager has no real control. The essential role played by the inventor is to create and develop the technology that will be transferred. Thus, as no one else will understand the technology as well as the inventor, the inventor’s full cooperation in disclosure and participation in the technology transfer process is necessary.

In order to establish a good working relationship between an inventor and the TTO, several prerequisites are essential:

1. The technology professional should strive to ensure that the inventor hears of the TTO before coming up with a great invention.
2. An inventor is responsible for, and has much to gain by, making timely disclosure of an invention to the technology transfer office.
3. The technology transfer manager has a great opportunity in easing an inventor’s concerns regarding confidentiality so as to solicit complete participation of the inventor in the technology transfer process.

The inventor and patent counsel should interact early in order to form the critical relationship necessary for drafting a solid patent application. The inventor should realize the necessity of providing a full disclosure of the technology to patent counsel. In addition, the inventor is responsible to assist counsel in determining inventorship. For example, faculty frequently erroneously equate inventorship with authorship, listing collaborating inventors using the same criteria for naming authors on scientific manuscripts. Patent counsel can assume the role of adjudicator for inventorship matters, although the TTO may be required to enlist the assistance of department chairs and other university administrators for difficult cases. Further along, the inventor should be a willing partner during the actual prosecution of the patent application.

Furthermore, the role of the inventor continues on, often throughout the life of the technology. Inevitably, the technology transfer professional will also need the inventor to actually transfer the technology to the licensee later in the process. In addition, once the patent is issued and the technology licensed, the inventor may take on the unofficial role of “infringement police officer” by recognizing when a product is sold that may infringe the patent. In the management of biological materials, it is essential for the technology transfer professional and the inventor to design and agree upon a distribution plan that maximizes commercial potential without negatively affecting scientific research.

In assessing the commercialization potential for a technology, the inventor plays another essential role. Technology transfer professional cannot expect to understand every industrial sector, market, or niche into which technologies may fit. Hence, it is the inventor who will know both the academic and industrial players in the field. A manager can expect an inventor to be contacted by potential licensees because of the inventor’s publications, meeting presentations, and industrial contacts build extensive professional networks.

When it comes to licensing, the manager may, or may not, seek the participation of the inventor during negotiations with potential licensees. The manager should weigh the inventor’s personality, interpersonal skills, and knowledge of business negotiations, as well as the inventor’s understanding of office policy, knowledge of the licensee, and ability to function as part of a negotiation team. Following execution of the license, the inventor is a major source of information. Frequently the inventor will have more information than anyone else about technology development by the licensee. Therefore, the inventor can greatly assist the TTO in the development of systems to follow license compliance and diligence.

If litigation is a possibility, the technology transfer professional may wish to enlist the help of the university’s Office of the General Counsel to make sure that the inventor understands the process. Specifically, the inventor needs to know what is expected of him or her as inventor, and what is involved in such a proceeding. Litigation is complex and requires coordination and cooperation. Indeed, should the TTO need to litigate on a matter related to a license, the technology transfer professional and the inventor will both benefit from having previously established a long-lasting, supportive relationship.

With the increased emphasis on the role of technology transfer in economic development activity, managers can expect a change in the relationship when the inventor moves into the role of entrepreneur. Many factors will influence the evolving relationship, including whether it is the inventor or the TTO pushing the entrepreneurial activity. Regardless, it is important for the inventor to recognize that the technology transfer professional’s fiduciary duty is to the university.

Finally, it is technology transfer managers who can keep the inventors expectations grounded. Inventors are prone to fall in love with their own creations, and, perhaps unreasonably, anticipate that theirs is the next “great invention”. Hence, the technology transfer professional can also make sure that the inventor has realistic expectations about marketability. A significant part of managing the relationship between the TTO and the inventor is making sure the inventor maintains realistic expectations. A former colleague coined this hypothetical disclosure- form question: “Please indicate the value of this technology: Is it worth millions, billions, or priceless?” And while this was suggested tongue in cheek, the sentiment does ring true. There is frequently a big disconnect between the inventor and the TTO when it comes to an invention’s marketability. The challenge faced by the technology transfer professional is how to tactfully keep inventor’s expectations in line with realistic expectations.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• Technology transfer and IP management are complex, requiring the creative input and participation of different professionals from varying fields of expertise. Therefore, it is important to recognize that investments in public sector education and training programs should be across the gamut of disciplines, from scientific, to business and from administration to law. In this way, the level of institutional capacity requisite for effective and sustained technology transfer and IP management and innovation will be built.

For Senior Management (university president, R&D manager, etc)

• Successful technology transfer depends on building and maintaining solid networks. Scientist and technology transfer managers should be encouraged and supported in building both networks with their respective institutions and also more extensive external, indeed international, networks.

For Scientists

• As the creator of technology, your role in technology transfer is critical. Build and maintain a good relationship with your institution’s technology transfer managers. They will provide guidance and assistance throughout the process of technology development, evaluation, and possible subsequent patenting. These are all critical steps along the path of moving research from the laboratory to commercialization, and, in order to realize the greatest value of your creative endeavors, your input will be essential.
• Inventorship and authorship are not the same. They are determined by different criteria. When the time comes to make such determinations, work with your institute’s technology transfer office and patent counsel; they know how to verify who are inventors, who are authors and who are both.
• Be cautious when it comes to disclosing invention, such as via publication, presentation or even posting on the worldwide web. Consult with your institution’s technology transfer manager prior to any such disclosure.
• The knowledge, skills, abilities and experience required to be a good scientist and to be a successful entrepreneur are not the same. One does not automatically translate into the other. Therefore, do not assume that moving into the role of an entrepreneur, such as in a startup company, will be easy.
• Build and maintain networks of colleagues, in both public and private sector organizations. These colleagues can work with you as collaborators and also might represent future licensees of inventions and innovations arising from your program.
• Understand that the vast, vast majority of inventions arising from research programs, including yours, will never lead to a financial windfall… for either you or your institution. Therefore, work closely with your institution’s technology transfer office to make the most of your program’s technologies, whether (or not) they are eventually patented, transferred or commercialized.

For Technology Transfer Officers

• Whenever inventors participate in licensing negotiations, instruct them as to what it means to be a member of the negotiating team. Guide them through the actual negotiations, always remembering that you, and your entire team, have a fiduciary duty to the institution.
• Scientists are often busy and might not appreciate that they have critically essential roles in technology transfer, IP management and the eventual patenting, licensing and commercial development of their inventions. Therefore, make efforts to reach out to scientists in your institution. This should be done from the start, with formal lectures, seminars or workshops, or with informal get-togethers. These early investments in relationship building will set the foundation for successful cooperative interactions later, as creations turn to inventions and innovations.
• Scientists do not always appreciate that commercial potential and scientific value are rarely equivalent. A simple invention in the laboratory, for example an improvement in a tool or method, might be easily overlooked as scientifically irrelevant, yet could have significant commercial potential. Therefore, maintain open lines of communication with your institution’s scientists, so as to keep informed as to new developments.
• Protocols and procedures for working with scientists as inventors should be institutionalized in the technology transfer office. In other words, a systematic approach should be established and followed. In this way, the value of your institution’s IP assets will be identified, managed, valued and maintained.
• The professional networks of your institution’s scientists will be of considerable value in technology transfer, product development, and eventual commercialization. In technology transfer, networking is fundamental.
• Introduce scientists to patent counsel, and work to facilitate a solid, and amicable, rapport between the two. Their ability to mutually understand each other, and cooperate as colleagues, will be essential for achieving your goals of establishing, and then implementing, a system of best practices in IP management and technology transfer.