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Establishing and Operating Technology Transfer Offices
Establishing and Operating Technology Transfer Offices
Summary and Overview
Key Implications and Best Practices
 Abstract
6.1
Ten Things Heads of Institutions Should Know about Setting Up a Technology Transfer Office
by Lita Nelsen
Abstract:
Technology transfer is a rewarding process for the university, researchers, students, the business community, the public, and the professionals who make it all happen. Technology transfer brings new products, services, and jobs. But it is a complex process, one that requires sustained dedication at every level. This chapter offers advice about some of the most important policy and strategy issues: five are economic issues and five relate to implementation. The chapter concludes with a discussion of technology transfer pitfalls caused by unrealistic expectations. The chapter emphasizes the role of senior management in changing the IP (intellectual property) culture, the need for transparent conflict-of-interest policies, and the importance of sufficient autonomy and infrastructure support for technology transfer officers.
Abstract
6.2
Establishing a Technology Transfer Office
by Terry A. Young
Abstract:
Technology transfer does not just happen. Transferring knowledge and innovation from a public research organization to the private sector for commercial application and public benefit requires a formal mechanism—a technology transfer office (TTO)—to protect and license intellectual property. Establishing a new TTO is no trivial matter, and the decision to create one should be made within the context of a long-term plan that takes into consideration the following questions: (1) Does “research commercialization” align with the institution’s mission? (2) Do the quality and quantity of research within the institution warrant the establishment of a TTO? (3) Is the institution willing to make a long-term commitment to required institutional changes and to adequately invest in resources and people? If the answer to all of these questions is yes, then it is time to develop a clear TTO business plan. In this effort, a strong dose of patience will help. An often-quoted rule of thumb in professional circles suggests that even under the very best circumstances, TTOs do not become successful for seven to ten years after they are established. This chapter provides practical advice for creating a proactive TTO and also offers historical examples from around the globe of TTO launches.
Abstract
6.3
How to Set Up a Technology Transfer Office: Experiences from Europe
by Alison F. Campbell
Abstract:
Technology transfer has an important role to play in the today’s world, where access to know-how and knowledge are valuable economic commodities. A technology transfer office (TTO) can be set up in many different ways. The TTO should be tightly aligned with its supporting institution’s missions and goals. Available external resources will affect the TTO’s strategy and its operational structures, so it is important to consider the TTO’s external environment. Income generation is typically one of the main objectives for the TTO, but technology transfer is valuable also because of its capacity to facilitate innovation and broker the exchange of knowledge for society’s benefit. This chapter discusses the key elements involved in building a TTO—from structure and staffing to external engagement—and how to lay the foundations for success. A number of European models and trends are described to provide greater context.
1. Introduction
There is no “right” way to set up a technology transfer office (TTO), but success does require considering some key issues. This chapter discusses how to establish and run a TTO, and, drawing on experiences from a number of such offices, the chapter provides case studies to illuminate these issues. Emerging trends in funding TTOs are also discussed.
2. Foundations
Any technology transfer office should be aligned with and supported by the institution it serves. The TTO’s mission should be consistent with the institutional mission, and the TTO’s approach and activities should support and add value to the institution. The TTO and the institution should agree upon what adds value, because financial returns alone are an insufficient measure of value for universities viewing their commercial activities strategically and contextually. Long-term returns, such as sustained partnerships, cultural change, job creation, and societal well-being should be part of the value provided by TTOs. These long-term returns supplement shorter-term, more tangible returns such as income, access to resources and expertise, and program delivery. This point has been emphasized by the U.S. technology transfer association, the Association of University Technology Managers (AUTM) and the U.K. association for technology transfer (UNICO1), which have disseminated data and case studies of how technology and knowledge transfer can benefit society.2
Deciding whether the TTO should undertake pure commercialization or broader knowledge transfer is important for developing an operational strategy. In a knowledge-based economy, access to know-how and use of knowledge (outside of the environment in which the knowledge was gained) is a valuable commodity.3 The U.K. Research Councils define such knowledge transfer as:
Abstract
6.4
How to Set Up a Technology Transfer System in a Developing Country
by Carlos Fernandez
Abstract:
This chapter reports the results of a recent study of the current state of technology transfer in Chile, including recommendations for the development of a new technology transfer system. Currently in Chile, few commercially viable technologies are transferred from research institutions to the private sector. This means that many universities should review their role and implement innovative ways of contributing to society.
Abstract
6.5
Practical Considerations for the Establishment of a Technology Transfer Office
by John Dodds, Susanne Somersalo
Abstract:
The establishment of a technology transfer office (TTO) is a complex undertaking, so it is important to decide—before the office is established—about its operational scope, how the office will be funded, how it will be managed, and for what kind of issues the office should develop a policy. This chapter provides basic information that is indispensable for running effective TTOs. The chapter explains what physical and human infrastructures are needed, outlines the responsibilities and powers of TTOs, emphasizes the importance of technology evaluation, and stresses the centrality of good communication and negotiation skills.
Abstract
6.6
Administration of a Large Technology Transfer Office
by Sally Hines
Abstract:
This chapter describes the organizational management of a technology transfer and licensing office based on the experience of Stanford University’s Office of Technology Licensing (OTL). It consists of a director, seven licensing associates, eight licensing liaisons, one copyright licensing specialist, and an administration staff. The administrative staff comprises an assistant to the director, an administrative services manager, a manager of information systems, receptionist(s), a manager of compliance and assistant, and an accountant and assistant. The industrial contracts office is part of OTL and consists of a manager and three associates.
Abstract
6.7
Training Staff in IP Management
by Sibongile Pefile, Anatole Krattiger, 1,
Abstract:
This chapter provides an overview of training opportunities that developing country institutions can explore to start to address problems related to a smooth implementation and execution of all intellectual property-related aspects (policy, management, procedures, and so forth). The chapter offers to institutions guidelines for evaluating training needs and reviews different kinds of training programs, identifying the pros and cons of each. IP management training is a long-term investment, but a cost-effective one, leading to better utilization of third-party IP resources, more effective internal IP management policies and procedures, and higher efficiency in regard to out-licensing and partnership development. The chapter emphasizes the importance of strategic and practical training programs related to participants’ responsibilities within an organization. Finally, multidimensional case studies are provided to illustrate the myriad issues that may arise with respect to the management of intellectual property.
Abstract
6.8
Building Networks: The National and International Experiences of AUTM
by Karen Hersey
Abstract:
Developing and implementing best practices in intellectual property (IP) management requires several critical inputs, and building networks is among the most important. The experience of the Association of University Technology Managers (AUTM) serves as an excellent example of how to build and maintain such networks. The important lessons learned as AUTM grew and expanded its networks are broadly applicable to building dynamic, productive, and sustainable networks anywhere in the world. Furthermore, since AUTM is an association of individual, rather than institutional or organizational members, it functions all the more as a catalyst for networking. Networking provides two important benefits. First, it facilitates relationships between individuals with varied experience, expertise, and skill sets, encouraging individuals to contribute to each other’s professional expertise. Second, the network itself contributes to the overall quality of group performance. Working through networks, practitioners exchange ideas and experiences to form best practices that become performance standards for individuals and their institutions. Networks thereby contribute to building IP management capacity at both the individual and institutional levels, and this capacity building then feeds back to further support and expand the network. This chapter considers the networking practices established by AUTM. It charts the organization’s growth over a period of 30 years from a small group of U.S. and Canadian patent managers to an association of more than 3,400 members from countries on every continent.1 As the story of AUTM demonstrates, networks can begin locally and gradually expand to operate on a national, regional, and even international scale. However, as AUTM has shown, the organization itself must begin with—and steadfastly maintain—a clear and focused central mission.
Abstract
6.9
How to Select and Work with Patent Counsel
by Michael L. Goldman
Abstract:
Public sector technology transfer offices (TTOs) are in the business of “moving” technology from research and development to eventual commercialization in order to advance their missions of serving the greater public good. Intellectual property (IP) management is integral to this process, and integral to IP management is patenting. Maximal captured value for public sector technologies will be greatly affected by the quality and scope of the patent coverage and this, in turn, is greatly influenced by the quality of work done by patent counsel. It is therefore essential for a TTO to select a patent attorney whose work will enhance the institution’s prospects for obtaining optimal licensing arrangements. From selection to hiring to ongoing interactions, it is important for the TTO and the patent counsel to develop and maintain a good working relationship. Central to this relationship is ensuring that patent counsel can prepare and prosecute patent applications in a manner that achieves positive results cost effectively. This is a complex process, and there are many responsibilities that both counsel and the TTO must assume. In addition, patent attorneys can provide general counseling: resolving inventorship issues, providing licensing and agreement support, and settling disputes. The TTO will be the patent attorney’s actual client and function as the interface between counsel and the institution. By selecting qualified patent counsel and then developing a good relationship, a TTO can ease its workload and facilitate its mission. Therefore, retaining a skilled patent attorney and one that is well suited to the particular needs of the TTO is an essential element for operating a viable technology transfer program. The search for such an attorney must be approached thoughtfully.
Abstract
6.10
How to Hire an IP Attorney and Not Go Bankrupt
by John Dodds
Abstract:
As a result of the growth in intellectual property (IP) protection, more and more institutions are establishing technology transfer offices (TTOs) to spearhead or support the effective transfer of technology. These offices serve a variety of functions, all of which must be integrated in order to transfer the technology cost effectively and to benefit the institution. One responsibility of a TTO is to provide services: from strategy development to contracts and agreements; from patenting to trademark protection; and from conflict-of-interest analysis to negotiation support. In all of these areas, legal inputs are important, and few offices will have the necessary range of in-house expertise. Gaining access to and developing relationships with attorneys are important elements in any strategy to set up effective TTOs. This chapter provides important information for deciding how to select and work with an attorney (or attorneys) who will provide IP backstopping to the TTO.
Abstract
6.11
Technology Transfer Data Management
by Robert G. Sloman
Abstract:
A technology transfer office must be able to manage enormous amounts of dynamic data. This chapter examines how electronic file systems can meet this need, focusing on the importance of shared communication links and the benefits of using advanced spreadsheet applications developed by the private sector. It considers the relative merits of spreadsheets, flat file databases, and relational databases, and highlights the numerous benefits of a network solution. The chapter explains how to ensure data integrity and manage “analysis paralysis” in such systems, and it offers a self-questionnaire to guide decisions about adopting a software management solution.
Abstract
6.12
WIIPS™: Whitehead Institute Intellectual Property System (A Relational Database for IP Management and Technology Transfer)
by Amina Hamzaoui
Abstract
6.13
Organizing and Managing Agreements and Contracts
by Robert Potter, Hild Rygnestad
Abstract:
Agreements and contracts are not just pieces of paper to be signed before money changes hands; they are vitally important documents. If an organization hopes to properly fulfill the terms of its contracts, to say nothing of negotiating future contracts, it must have a system for organizing and managing its contracts. Such a system must make data accessible as well as keep it secure. Resources and tools should be incorporated wherever possible to design and implement a system within the available budget. After it is implemented, the effectiveness of the contract management system should be continuously monitored and evaluated.
Abstract
6.14
Monitoring, Evaluating, and Assessing Impact
by Sibongile Pefile
Abstract:
Much has been written about the socio-economic benefits and competitive advantage achieved by developed countries as a result of investing in scientific research and technological innovation. For developing and emerging economies, sustainable development is dependent on establishing and supporting R&D institutions that not only perform good science, but also effectively share their knowledge and technology outputs. Both the extent to which a return on an investment is realized from R&D activities and the magnitude of the resulting impact on intended beneficiaries are important to funders, policy-makers, taxpayers, government officials, development agencies, and the research institutions themselves. This chapter provides guidance on building organizational capacity to plan, monitor, evaluate, and assess the impact of R&D investments. It should be noted that the chapter does not address measuring the performance of a Technology Transfer Office to manage intellectual property, but rather focuses on determining the socio-economic impact of transferred knowledge and technology.
Abstract
The Activities and Roles of M.I.T. in Forming Clusters and Strengthening Entrepreneurship
by Lita Nelsen
Abstract:
This chapter describes the structure, policies, and operations of the Technology Licensing Office at the Massachusetts Institute of Technology (M.I.T.). The chapter emphasizes the licensing office’s role in generating spinout companies and considers the importance of the biotechnology cluster within the state of Massachusetts and it’s surrounding regions. Also discussed is M.I.T.’s approach to ensuring that licensing procedures maximize access to medicines and vaccines arising from M.I.T.’s research.
Abstract
Administration of Technology Licenses
by Hans H. Feindt
Abstract:
The National Institutes of Health Office of Technology Transfer (NIH OTT) administers technology licenses for the NIH, generating substantial royalties (in the millions of dollars). Although this revenue flow is important, the NIH OTTs principal mission is the timely introduction of new products and technologies into the marketplace to ensure that the fruits of NIH research and development are made commercially available to serve the greater public good. The NIH OTT utilizes six types of technology licenses:
- commercial evaluation licenses (also known as options)
- patent commercialization licenses (either exclusive or nonexclusive)
- nonexclusive patent licenses (for internal use)
- biological materials licenses
- software licenses
The NIH OTT insists that licenses are drafted with well-defined financial terms and clearly delineated reporting obligations, so that both parties to the license (NIH as licensor and, for example, a biotech firm as licensee) understand their respective obligations. The NIH OTT seeks to build cooperative relationships with its licensees in order to facilitate problem solving discussions, resolve outstanding issues, and identify possible opportunities for advancing commercialization of products and/or services. As a best practices licensor, the NIH OTT carefully manages license administration by monitoring commercial development performance benchmarks, reviewing sales reports, and enforcing other license obligations. The office will also, if necessary, impose sanctions in license enforcement and implement procedures for dealing with infringement of its patents. The policies, protocols, and procedures of the NIH OTT have broad applicability to both developed and developing countries; scientists, administrators, technology managers, intellectual property professionals, and even attorneys can learn from the NIH OTT, a good example of an office operating effectively, efficiently, and profitably by employing best practices.
Abstract
Benchmarking of Technology Transfer Offices and What It Means for Developing Countries
by Anthony D. Heher
Abstract:
At universities in both developed and developing countries, increasing emphasis has been placed on promoting technology transfer. Unfortunately, technology transfer is sometimes undertaken for the wrong reasons, especially in the mistaken belief that technology transfer will lead to substantial additional income for the institution. While it is important to protect intellectual property arising from research and to actively promote the transfer of research results, generating income should not be the primary objective in the transfer of technology. This is particularly important for health science, where there is a risk that research results, if not properly protected, will be inaccessible to private or public entities seeking to use the research for public benefit.
International technology transfer benchmark data can be used to understand the implications of promoting technology transfer and the likely outcomes of a technology transfer initiative. The benchmarks indicate that average income to an institution, after eight to ten years of activity, is likely to be a modest 1%–2% of annual research expenditure. The income is, moreover, highly uncertain and variable. Institutional and public sector managers must understand the nature of this income and the dynamics of the technology transfer process in order to manage this emerging discipline effectively, because unrealistic expectations can lead to dysfunctional policy decisions. The data and dynamic model presented in this paper are intended to promote better decisions.
Abstract
Creating and Developing Spinouts: Experiences from Yale University and Beyond
by Alfred (Buz) Brown, Jon Soderstrom
Abstract:
This chapter is about university spinouts: why they are created, who founds them, and how they are developed. It also considers many of the issues that a university and its faculty have to address to successfully launch and develop new for-profit ventures. Spinouts carry risks, but they may also be the best vehicle for developing early-stage university technologies and providing a host of other benefits. The chapter offers examples from the past five years at Yale University, as well as from the private sector, that suggest ways to minimize the risks and maximize benefits.
Abstract
Dealing with Spinout Companies
by Jon C. Sandelin
Abstract:
This chapter provides a practical guide for organizations seeking to transfer their intellectual property (IP) rights to a spinout company (normally through a licensing agreement) so that the company can convert the IP into products or services that benefit the public. Based on experiences at Stanford University over the past three decades, key issues have been identified for negotiating transfer to a spinout, and guidance on best practices for reaching a successful agreement is provided. The chapter briefly reviews potential conflict-of-interest and conflict-of-commitment issues that inevitability arise when employees of public research organizations become involved in spinout companies.
Abstract
From University to Industry: Technology Transfer at Unicamp in Brazil
by Rosana Ceron Di Giorgio
Abstract:
This chapter discusses how Brazil has dramatically increased technology transfer and innovation through the State University of Campinas, or Unicamp. The leader in patenting and licensing activities in Brazil and Latin America, Unicamp has vaulted to this position in the short span of two and a half years through its technology transfer office, Inova. Providing background information about Brazil’s legal framework and practices, especially as it concerns the ownership of intellectual property and benefit sharing, the chapter discusses government incentives for innovation in light of Inova’s impressive results. Two successful cases of technology transfer are presented as guides to realistic expectations about investments, terms of license, and royalties.
Abstract
Intellectual Property and Technology Transfer by the University of California Agricultural Experiment Station
by Gregory D. Graff, Alan B. Bennett
Abstract:
One of the primary missions of the University of California Agricultural Experiment Station (AES) is to create knowledge and develop technologies that improve the productivity and environmental sustainability of agriculture in California. In addition to the public release of information and the educational activities of cooperative extension services, the University of California places the inventions of AES faculty directly into commerce through the process of patenting and technology transfer. This channel is particularly useful—and often essential—when further financial investments are necessary to develop the technology for practical applications or to manufacture, market, and distribute new products that incorporate the new technology. This report documents the patenting and formal technology transfer activities of the University of California Agricultural Experiment Station over the last 40 years.
More than 800 inventions have been reported by AES researchers between 1960 and 2001. These inventions are categorized into the five broad technology areas: biotechnology (49%), plant varieties (19%), chemicals (14%), equipment/machinery (13%), and environmental (1%). Biotechnology inventions were entirely absent until the mid-1980s, but the category has grown rapidly over the last 15 years. The growth in the number of biotechnology-related inventions has occurred not at the expense of inventions reported in the areas of plant varieties, agricultural equipment, or novel chemicals, all of which have shown a relatively stable level of activity.
Financial returns from the licensing of AES inventions was US$1.4 million in fiscal year 1982 (2.5 million in 2001 dollars) but had grown to US$12 million by fiscal year 2001. After accounting for expenses associated with patenting new inventions and distribution of a share of income to inventors, AES inventions returned over US$6 million to the university in fiscal year 2001. Since 1982, the cumulative financial return has totaled US$105.2 million in fees and royalties. About 87% of that income has been derived from the licensing of plant varieties in spite of the fact that they compose only 19% of the AES inventions, indicating the commercial importance of UC plant varieties. To date, relatively few biotechnology- or environmental-related inventions have been commercialized, but the extensive and growing UC portfolio in these areas should provide a strong base for future licensing activity.
Abstract
IP and Information Management: Libraries, Databases, Geographic Information Systems, and Software
by John Dodds, Susanne Somersalo, Stanley P. Kowalski, Anatole Krattiger
Abstract:
The last decades have seen a revolution in knowledge management, library services, and information resource database configurations. The use of integrated computer networks and the ability to produce and distribute information have had far-reaching implications for IP (intellectual property) protection. In order to demonstrate IP laws and their application, this chapter will use, as its primary example, Geographic Information Systems and Remote Sensing (GIS/RS), a technology that presents interesting and complex IP issues.
Abstract
IP Management at Chinese Universities
by Hua Guo
Abstract:
For the People’s Republic of China, intellectual property (IP) is a new legal and social concept. Formal legislation was first introduced in the 1980s and was later strengthened. Due to recent publicity, however, social awareness of IP rights in China has grown. Following a series of ministerial and commission rules concerning technology transfer, universities now usually own the IP resulting from government-funded research. Not surprisingly, the number of patent applications filed by Chinese universities has increased rapidly, exceeding 13,000 in 2004. But such numbers may reflect a trend for researchers and institutions to use patents as a way of enhancing their reputations, rather than for actually transferring or commercializing technology. Most universities still lack institutional IP policies and independent offices responsible for IP management. Rates of technology transfer and commercialization, while difficult to observe, remain low. Still, some world-class universities, such as Tsinghua University and Beijing University, have become adept at IP management. These are both an exception to and an example for other universities in China, having successfully adapted IP management policies and practices to the country’s legal and economic circumstances.
Abstract
IP Management in the National Health Service in England
by Tony Bates
Abstract:
This chapter summarizes how intellectual property (IP) arising from within the National Health Service in England is managed within the context of a national framework for managing IP from public sector research in the United Kingdom. Describing how the policy framework was developed and how National Health Service organizations were set up to manage IP, this chapter also charts progress in the administration of health R&D and the management of IP and summarizes how IP management complements R&D in the National Health Service.
Abstract
The Making of a Licensing Legend: Stanford University’s Office of Technology Licensing
by Nigel Page
Abstract:
The history of technology transfer at Stanford goes back to an initial pilot program launched by Niels Reimers in 1970, a program that put the university in an excellent position to take advantage of the Bayh-Dole Act. Enacted in 1980, the act gave U.S. universities ownership of any patents developed using federal funds. Today, Stanford University and successful technology transfer are almost synonymous. But success is more than just a matter of timing. Stanford’s Office of Technology Licensing (OTL) takes a flexible, broad outlook on the development of its intellectual property that has made Stanford a favorite business partner. This chapter reveals the secrets behind the success of Stanford’s OTL.
Abstract
The New American University and the Role of “Technology Translation”: The Approach of Arizona State University
by Peter J. Slate
Abstract:
This chapter provides a conceptual overview of Arizona State University’s mission, and explains how the university’s “technology translation” efforts support that mission. The chapter offers a rationale for why effective technology translation and commercialization are economically and socially relevant. A case study illustrates how a program established by Arizona State University’s technology commercialization group has led to significant returns for the university and the local community. The authors conclude that public and private institutions in both developed and developing countries can implement the concepts and strategies for technology commercialization described in the chapter.
Abstract
Ownership of University Inventions: Practical Considerations
by B. Jean Weidemier
Abstract:
Several factors help to establish who owns a university invention and what rights the university may, or may not, have. These factors include whether (1) there are express or implied agreements to assign ownership, (2) the inventor is employed by the university, (3) the invention was made within the scope of employment, and (4) where and when the invention was made. Under U.S. law, individuals own their inventions, except where there is an express agreement providing for assignment of ownership of inventions to an employer or where an implied agreement to assign is found because the employee was hired or assigned to invent or solve a specific problem or served the employer in a fiduciary capacity. Therefore, in addition to implementing clearly delineated policies, it is critically important for a university to absolutely require all employees and visitors to sign invention assignment agreements (IAAs) on their date of arrival. It is unwise to rely on policy statements to determine whether or not a university employee owns his or her invention: universities should always obtain signed (express) agreements, and both the employee and the technology transfer office should retain copies. Research contracts with the government and other sponsors should have a checklist item on the existence of IAAs for the principal investigator and other researchers (whether or not a university should have undergraduates routinely sign IAAs is up to each university). Upon termination of employment, personnel should be asked to sign an exit form indicating that they have disclosed all inventions falling within the terms of the IAA to the university licensing office.
Abstract
Policing Intellectual Property
by H. Walter Haeussler, Richard S. Cahoon
Abstract:
A university’s intellectual property (IP) cannot be simply shelved and forgotten. IP, with patents as a particularly cogent example, must be managed, monitored, maintained, and policed in an ongoing “cultivation” of the IP rights. For patents, it is important to be able to identify potential infringement early, by means of coordinated surveillance by the technology transfer office. If, and when, possible patent infringement is detected, it will then be necessary to evaluate the type of infringement, that is, direct or contributory, and also to assess whether the activity legally appears to be infringing, reading on each and every element of a patent claim. Strategic and business considerations must be considered as the university decides what course of action might be appropriate in response to an alleged infringement of a patent. Specifically, in the context of litigation, the university must consider whom to sue (if there are multiple infringers), when to sue (if too late, could risk loss of IP rights), and where to bring suit (for a favorable venue). An even more critical consideration is whether to even litigate at all. It may be wiser to seek one of various forms of alternate dispute resolution, for example, negotiation, mediation, or arbitration. It is important to never forget that litigation is expensive, risky, and unpredictable. Hence, it should be viewed as not the first option, but as the final one, and it should be approached as a cold business decision and not to give teeth to emotions or carry out revenge. Throughout the process of managing and policing its IP rights, a university should have access to legal counsel. Finally, proactive, good license hygiene is the best way to proceed, and the most effective way to avoid expensive litigation. By demonstrating credibility, conviction, and focus, the university will show potential infringers that it is serious about policing its IP, and that they therefore won’t be able to escape the university’s diligent surveillance. Licensing, and not infringement, will then become the only sensible route to accessing the patent rights.
Abstract
Potential Use of a Computer-Generated Contract Template System (CoGenCo) to Facilitate Licensing of Traits and Varieties
by Anatole Krattiger, John Dodds, Donna Bobrowicz
Abstract:
Licensing between companies of both traits and varieties is routine, and there is no reason that it should be anything other than routine between companies and public sector institutions, as well. Some public entities struggle to gain experience in this area. This leads companies to shun negotiations and, even, discussions. Yet opportunities for the public sector to in-license traits (in the form of well-characterized and deregulated transgenic “events”) and varieties are vast and could lead to earlier access with respect to transgenic events (through backcrossing into local varieties) and to improved varieties for subsistence farmers. In order to improve the ability of the public sector to both in-license and out-license germplasm, a test version of a software program, the “Computer Generated Contract Template System” (CoGenCo), was developed. It aims to facilitate the exchange (or licensing) of commercial varieties by “walking” potential licensors and licensees though a systematic list of questions and tested parameters. CoGenCo is a pragmatic way of increasing the licensing of both finished varieties and germplasm containing transgenes for backcrossing, and its flexibility would make it especially suited for use in developing countries. This chapter explains the concept behind the software’s test version and leads the reader through its use. The authors very much welcome comments and suggestions about the software and look forward to collaborating with interested parties to further develop CoGenCo into a comprehensive and widely available system.
Abstract
The Role of Technology Transfer Intermediaries in Commercializing Intellectual Property through Spinouts and Start-ups
by Tim Cook
Abstract:
Intellectual Property (IP) can be commercialized via free distribution or licensing, or through new companies that develop and exploit it. These new companies are called spinouts, or start-ups. Establishing successful spinouts and start-ups requires a solid business plan, coordinated teams of professionals who share a common vision, a respected managing director, and technology transfer intermediaries. Intermediaries help bridge the cultural divide that often exists between the generators of intellectual property and the new companies.
Abstract
The Role of the Inventor in the Technology Transfer Process
by Anne C. Di Sante
Abstract:
Without inventors, there would be no technology to transfer. But without technology transfer professionals, there would be limited transfer of technology. Good relations between inventors and technology transfer professionals are therefore essential for the commercialization enterprise to succeed. Relationships should be established long before the transfer services of the technology transfer office (TTO) are required. A healthy relationship will allow technology managers to negotiate both faculty and business concerns about licensing agreements. Making sure that the inventor is sympathetic to the aims of the TTO will also make it much easier for everyone to understand how a technology may meet market needs, recognize potential licenses, and determine whether a licensee is fulfilling its obligations. For all of these reasons and more, a TTO should always go the extra mile to educate, develop, and maintain good working relationships with inventors.
Abstract
Technology Transfer at the University of California
by Alan B. Bennett, Michael Carriere
Abstract:
The University of California (UC), based on its mission as a land grant university, has a long history of seeking intellectual property protection for its research discoveries and managing those technologies for the public benefit. By some measures, the UC technology transfer program is the largest public program in the world. The program has evolved over the years but has always been at the forefront of intellectual property protection. This article focuses on the history, policy, and organizational framework of the UC technology transfer program, and the information discussed herein may be instructive to administrators and others seeking to learn from the UC experiences. The program has been administered through six functional departments: Information Technology and Communications, General Counsel (legal), Licensing, Patent Prosecution, Financial Management, and Policy Analysis and Development. Perhaps the most distinctive feature of the UC technology transfer system is the development of a distributed institutional network of ten university campuses, which operate under a common policy framework and share resources. At the same time, each office functions relatively independently of the others. This structure could be emulated and implemented at different scales, from a relatively small-scale research consortium made up of a network of institutions, to a larger-scale national network of universities, to a global-scale international network of research institutions linked by common policies and objectives.
Abstract
Technology Transfer in South African Public Research Institutions
by Rosemary Wolson
Abstract:
This chapter provides an analytical overview of technology transfer in South Africa. Technology transfer offices (TTOs) are relatively new in the country, and not all South African universities have explicit IP policies. The chapter discusses and analyzes the current performance of TTOs. Among other things, the results show that the income accruing to universities from technology transfer activities is not substantial, that there is a time lag before a TTO can generate sufficient income to become self-supporting, and that the performance of TTOs at different institutions varies widely. A history of public policy efforts to strengthen technology transfer in South Africa is provided, and the government’s 2006 publication of the Framework for Intellectual Property Rights from Publicly Financed Research receives considerable analysis. Other measures being undertaken to support technology transfer are also discussed, as are the problems that such efforts still face.
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