Home > Topics > Establishing and Operating Technology Transfer Offices > Practical Considerations for the Establishment of a Technology Transfer Office > Editor's Summary, Implications and Best Practices

It is very important to establish certain aspects of a technology transfer office (TTO) from the outset: its scope, how it will be funded, and how it will be managed. This chapter provides indispensable information for the effective and efficient establishment, organization, and functioning of a TTO.

There are several basic requirements for the establishment of a TTO:

• Human infrastructure: an office director, an administrative assistant, a licensing specialist, an attorney, and, in some cases, student workers
• Physical infrastructure: workspace and furniture, computer systems, hardware and networking, communication systems, photocopiers, software packages, and an area for greeting visitors
• An operational plan for the office that defines office protocol for various topics: patents, trademarks, copyrights, trade secrets; plant variety protection (in addition to plant patents); contracts, agreements, and licenses; policy development; technology evaluation; invention marketing; conflict analysis; and negotiation support/training/strategy

A wide range of organizational matters also needs to be addressed early on in the establishment of a TTO. These include, but are not necessarily limited to:

• A coordinated, coherent staffing plan that details a staff line of authority and plan and work definitions
• A staff employment handbook that clearly explains the ethical standards that employees should follow
• A plan for addressing governmental and state filing requirements. A local representative of the Secretary of State may provide assistance with certain issues, such as work permits, pension plans, occupancy permits, and fire inspection permits.
• The possibility of incorporation. The TTO may find it advantageous or necessary to become a separate legal entity.
• A tax plan. The office should hire a good accountant and auditing firm.
• Payroll. Obviously indispensable.
• Most TTOs will need to draw on external expertise: an advisory panel, a series of consulting contracts, or very effective personal networks. Typically, required specialists include, but are not limited to, patent attorneys (various kinds depending on field of invention), general legal counsel, licensing specialists, marketing specialists, database specialists, and drawing and design specialists.

The office should always emphasize the importance of confidentiality in all its operations. Without it, the TTO will fail to manage IP. In addition, changes in technology and technology markets should also be monitored; to this end, TTO employees should attend professional meetings, such as the Association of University Technology Managers (AUTM) and the Biotechnology Industry Organization (BIO).

In order to more concretely illustrate the principles of establishing and operating a successful TTO, let us take the following example:

You are a candidate for the position of Director of the TTO at the University of Costa Rica, a mid-sized university. The current director has resigned to take up a position elsewhere, effective in 6 months. Up to this point, the university has not had a formal TTO; instead, the Office of the Vice President for Research has filed patents with the assistance of outside counsel. As part of the candidate selection process, you have been asked to draft a business plan for the new TTO, given the following constraints:

1. The office will receive approximately $300,000/yr for four years. At the end of this time, the TTO should break even.
2. The university currently holds eight patents in biotechnology platform technologies, but none are licensed. One inventor has left the university to start a consulting business.
3. The faculty governance committee opposes university-licensed patents, on the grounds that such patents prevent faculty from publishing their own work. The committee fears that the university will divert money away from faculty research in order to establish a TTO.
4. The general counsel of the University is nearing retirement and has no knowledge of patent law.
5. Currently, 90% of the university’s funding comes from the government of Costa Rica. The university wants to acquire more private sector funding.
6. Because of union rules, the university wants to have as many full-time employees as possible, although the administration of the university is on record as having problems with this approach.

Develop a business plan of no more than 4 pages for consideration by the President of the University. Describe how you will establish the TTO, how you will staff it, and how you will ensure that the office breaks even within 4 years.

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

• Advancing your nation’s commitment to and capacity in IP management will require a serious investment in institutional infrastructure, both physical and human. The technology transfer office (TTO) can be the focal point of this investment. Without such institutions, it will not be possible to implement sustainable IP management programs and strategies.

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

• A technology transfer office (TTO) will be an integral factor in your institution’s capacity to manage IP, enter into licensing and technology-transfer agreements, engage in partnerships and collaborations (both within your institution and with potential partners and collaborators), and maximize the value of its own IP. The TTO should, therefore, receive financial and administrative support.

For Scientists

• The technology transfer office (TTO) will help you and your staff learn about the proper management of IP, consistent with the policies and guidelines of your institution. Remember to take advantage of any IP training that your institution’s TTO may offer.

For Technology Transfer Officers

• Your duties will include increasing the IP awareness and capacity building of your institution’s administrators, staff, and scientists. You will need to build and maintain the required expertise within your technology transfer office, and you should know what problems will need to be outsourced. Remember that you are important to both your institution and your nation, and that your efforts are instrumental in improving the quality of health care and nutrition.