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About

Editor-in-Chief,   Anatole Krattiger

Editorial Board

Concept Foundation

PIPRA

Fiocruz, Brazil

bioDevelopments-   Institute

CHAPTER NO. 6.6

Hines S. 2007. Administration of a Large Technology Transfer Office. In Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices (eds. A Krattiger, RT Mahoney, L Nelsen, et al.). MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

Editors’ Note: We are most grateful to the Association of University Technology Managers (AUTM) for having allowed us to update and edit this paper and include it as a chapter in this Handbook. The original paper was published in the AUTM Technology Transfer Practice Manual (Second Edition, Part II: Chapter 3).

© 2007. S Hines. Sharing the Art of IP Management: Photocopying and distribution through the Internet for noncommercial purposes is permitted and encouraged.

Administration of a Large Technology Transfer Office

Sally Hines, Administrative Services Manager, Office of Technology Licensing, Stanford University, U.S.A.

Show SummaryEditor's Summary, Implications and Best Practices

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.

1. Background

The mission of the Stanford University Office of Technology Licensing (OTL) is to promote the transfer of Stanford University’s technology for society’s use and benefit, while generating unrestricted income to support research and education. Thus, the primary focus of OTL has not been to maximize income generation, but to facilitate putting into use for society’s benefit the innovations developed at Stanford University.

In the early years, staffing levels were kept very low to control total expenses. There were only two people on staff for the first five years of operation. A third person was added in FY 1974–75 and total staffing was three people for the next six years. Today, the OTL has the following employee composition:1

  • director (1)
  • assistant to the director (1)
  • licensing associate I (0)
  • licensing associate II (1)
  • licensing associate III (6)
  • marketing, software and copyright specialist (1)
  • licensing liaison I (0)
  • licensing liaison II (8)
  • administrative services manager (1)
  • administrative support personnel (7)

The benefits to Stanford resulting from the formation and operation of the OTL have been many. Although it took many years for substantial net revenues to be obtained, at the end of FY 2005–06, the OTL had received total revenues of US$1 billion and had total operating expenses of US$45 million. In its 36 years of operation, the OTL has contributed US$591 million to Stanford and its inventors

2. Personnel Issues

Reporting to the director are the licensing associates, administrative services manager, marketing, software and copyright specialist, manager of compliance, accountant, manager of the industrial contracts office, and the director’s assistant. Each of the licensing liaisons supports one licensing associate; the liaisons report directly to the associates. The manager of information systems reports to a senior licensing associate. The receptionists report to the administrative services manager.

Professional staff are divided into licensing liaison and licensing associate positions (Table 1), whereas Figure 1 shows the organigramm. Complete job descriptions are provided in Box 1, at the end of this chapter.

TABLE 1: MAIN PROFESSIONAL LICENSING POSITIONS

Position Job Description (corresponding appendix)
Licensing liaison I Direction from supervisor, assist with marketing, routine amendments, patent prosecution, database management; position is 75% clerical
Licensing liaison II With some supervision, market new inventions, including carrying out market research and preparing abstracts; docket administration; coordinate and monitor patent activities; inventor meeting scheduling; handle administrative/clerical responsibilities in support of licensing associate
Licensing associate I Evaluate and handle licensing with respect to standard and nonstandard cases with some guidance
Licensing associate II Evaluate and handle licensing with respect to nonstandard cases with independence; take appropriate, independent action in a majority of situations
Licensing associate III Evaluate and handle independently the licensing of complex cases; appropriately handle a variety of IP
Note: Standard cases involve nonexclusive licenses and template-type agreements. Nonstandard cases require creativity in resolving issues. Complex cases require unusual creativity in resolving new issues. See also Box 1 at the end of this chapter for job descriptions.

 

Figure 1: Oranigramm of Stanford University's Office of Technology licensing

2.1 Licensing associates

Each licensing associate has a specific area of expertise (see OTL Web site2). Many of the Stanford licensing associates have been recommended to OTL by other universities or individuals in the field. There are no lawyers in the licensing associate category.

  • The technology licensing associate I handles routine cases (with supervision) and participates in the negotiation and preparation of more complex cases. Some experience in at least one of the following is necessary: licensing, negotiation/contracts, marketing, or patents.
  • The technology licensing associate II handles a variety of complex cases and requires a high degree of technical and business expertise, a familiarity with the legal issues involved, and at least four years of applicable experience.
  • The technology licensing associate III is reserved for individuals handling major cases where licensing potential is estimated to be in the millions of dollars. Because of the magnitude of the cases, the work has a significant impact on the university and involves much coordination and complex decision making. Eleven or more years of applicable experience and/or two years of experience at the OTL are required. After an individual has been with the office for five years (and has reached the associate III level), he/she has the privilege of using the title senior associate.

2. 2 Licensing liaisons

Stanford OTL has two levels of licensing liaisons. The licensing liaison I level requires more direction from the licensing associate than the licensing liaison II level. There are many ways to find good people. Probably the best ways are referrals, ads on various Web sites, and through licensing organizations such as the Association of University Technology Managers and the Licensing Executives Society.

3. Conclusions and the Need for Sops

Running and administering a technology transfer and licensing office is a challenging task from many perspectives, ranging from policy to strategy. As Nelsen3 describes them, one of the key aspects are rigorous, consistent, and authoritative administrative approaches and procedures. This chapter described the approach of one entity, Stanford University’s OTL.

It is important to keep yearly statistics about the office and collect them in a database for analyzing the progress of the office and for use by other entities. Such data for Stanford University’s OTL are published annually and are available on the OTL Web site.4

Finally, in order to ensure smooth operations, each member of the staff of the office is trained in and has access to the Standard Operating Procedures (SOP’s) through the OTL Intranet. These SOP’s consist of step-by-step instructions about procedures for handling various documents. Two sample SOPs are included in Box 2. It is important to note, however, that the SOPs are evolving, and each tech transfer office should develop its own operating procedures, adjusted to institutional policies and the prevailing administrative procedures.

BOX 1: OTL LICENSING JOB DESCRIPTIONS

TECHNOLOGY LICENSING ASSOCIATE I

The Licensing Associate works with the inventors (Stanford professors, graduate students, and research staff) and with prospective licensees. The Licensing Associate evaluates, obtains proprietary protection, markets, and negotiates the terms and conditions of the licensing agreement with industry.

The Licensing Associate I typically performs the following functions:

  • Evaluation and analysis of new invention disclosures (initial review; meeting with inventor(s); identify industry reviewers; make contact, send materials, follow-up; collect and evaluate information; and make decisions and provide necessary notifications)
  • Licensing (Develop licensing strategy; identify potential licensees; negotiate terms; prepare draft agreements; and close the deal)
  • Patent-related activities (selection of attorney; make decisions regarding when and where to file patent applications; and manage inventory of unlicensed cases from a financial perspective)
  • License Agreement Monitoring/Relations with Licensees (ensure compliance with diligence terms; prepare and execute amendments; process terminations; and hold meetings with licensees to monitor progress in Licensed Product(s) development)
  • Professional Development (participate in professional associations; attend association conferences; and take training classes)

The Licensing Associate I level handles (with supervision) standard and nonstandard cases, where agreements tend to be modifications of established patterns. The Licensing Associate also participates in the negotiation and preparation of more complex cases.

Some experience is necessary in at least one of the following: licensing, negotiation/contracts, marketing, and patents. Approximately four years of work experience is preferable. A minimum of a BS/BA degree in a science or engineering field—or equivalent applicable experience—is required.

TECHNOLOGY LICENSING ASSOCIATE II

The Licensing Associate works with the inventors (Stanford professors, graduate students, and research staff) and with prospective licensees. The Licensing Associate evaluates, obtains proprietary protection, markets and negotiates the terms and conditions of the licensing agreement with industry.

The Licensing Associate II typically performs the following functions:

  • Evaluation and analysis of new invention disclosures (initial review; meeting with inventor(s); identify industry reviewers; make contact, send materials, follow-up; collect and evaluate information; and make decisions and provide necessary notifications).
  • Licensing (develop licensing strategy, identify potential licensees, negotiate terms, prepare draft agreements, and close the deal.
  • Patent related activities (selection of attorney; make decisions regarding when and where to file patent applications; and manage inventory of unlicensed cases from a financial perspective)
  • License Agreement Monitoring/Relations with Licensees (ensure compliance with diligence terms; prepare and execute amendments; process terminations; and hold meetings with licensees to monitor progress in Licensed Product(s) development)
  • Professional Development (participate in professional associations; attend association conferences; and take training classes)

The Licensing Associate II independently handles a variety of nonstandard cases and would be considered an experienced professional. These positions require a high degree of technical and business expertise, a familiarity with the legal issues involved, and approximately four years of applicable experience (for example, scientific, research, marketing, business development, patents, and licensing). A minimum of a BS/BA degree in a science or engineering field is required.

The Licensing Associate II is a position in which qualified professionals may enhance their career experience and move up the OTL career development ladder to a Licensing Associate III. The Licensing Associate II must be able to participate as a member of the OTL team, while continually assuming increased responsibility and independence.

TECHNOLOGY LICENSING ASSOCIATE III

The Licensing Associate works with the inventors (Stanford professors, graduate students, and research staff) and with prospective licensees. The Licensing Associate evaluates, obtains proprietary protection, markets and, negotiates the terms and conditions of the licensing agreement with industry.

The Licensing Associate III typically performs the following functions:

  • Evaluation and analysis of new invention disclosures (initial review; meeting with inventor(s); identify industry reviewers; make contact, send materials, follow-up; collect and evaluate information; and make decisions and provide necessary notifications)
  • Licensing (Develop licensing strategy; identify potential licensees; negotiate terms; prepare draft agreements; and close the deal)
  • Patent-related activities (selection of attorney; make decisions regarding when and where to file patent applications; and manage inventory of unlicensed cases from a financial perspective)
  • License Agreement Monitoring/Relations with Licensees (ensure compliance with diligence terms; prepare and execute amendments; process terminations; and hold meetings with licensees to monitor progress in Licensed Product(s) development)
  • Professional Development (participate in professional associations; attend association conferences; and take training classes)

The Licensing Associate III level would be reserved for individuals handling major cases (for example, Cohen/Boyer or FM Sound) where licensing potential is estimated to be in the millions of dollars. Because of the magnitude of these cases, the work has significant impact on the University and involves much coordination and complex decision making (for example, participating in decisions on whether to pursue major litigation).

In order to qualify for the level of Licensing Associate III, an individual is required to have 11 or more years of applicable experience and/or two years of experience at the Office of Technology Licensing.

A Complex Case has one or more of the following attributes:

  • Requires exceptional good judgment and special attention because of the following: exceptional number of patent applications/patents involved; the level of royalty revenue (potential or actual); and/or the number of licensees involved
  • Involved in litigation in which Stanford is either responsible or intimately involved and where Stanford’s involvement presents a significant liability or revenue opportunity for Stanford
  • New and complex intellectual property issues are involved in the licensing such that creative solutions must be developed
  • The case has either the potential to generate $3–5 million or costs $1 million (in litigation costs or claims against Stanford) or has a major impact to OTL’s licensing program

Examples of complex cases include:

  • Sondius Program: the technology consists of a portfolio of patents, trademarks, copyrighted works; licensees include a start-up, major corporation, and other companies, and the licensed fields of use are varied; the revenue potential is considered significant; Stanford invested significant resources into the development of the technology; the potential of litigation is relatively high.
  • ARIM Portfolio: involves 20 patents and copyrighted technologies licensed exclusively and nonexclusively to many companies; licensing strategy is to make the technology broadly available while encouraging investment in the technology.
  • Phycobiliprotein: Complicated license strategy (exclusive license to two companies, converting one of these two licenses to a nonexclusive); sued one licensee; generating over $3 million/year in royalties with the extensive management and monitoring of the licensees because the chain of distribution is often unclear; auditing; each license is separately and individually negotiated.

The Licensing Associate must have demonstrated exceptional good judgment, breadth of knowledge of patents, copyrights, and trademarks, and the ability to independently resolve complex issues and deal with unusually difficult situations. The Associate must use exceptional creativity in structuring win-win licenses in difficult and complex cases. Typically, complex cases present issues that have not been dealt with in the past and, therefore, require particularly creative solutions.

LICENSING LIAISON I

With close supervision from Licensing Associate:

  • Assist in the marketing of inventions to industry, including identifying potential licensees, initiating contact, preparing and distributing promotional materials
  • Research library and computer database resources to identify potential licensees in the invention field of use
  • Help monitor performance of licensees to ensure diligence provisions are met
  • Prepare routine amendments to agreements, give notice and process termination of agreements when required
  • Assist in the coordination and monitoring of patent filing and prosecution
  • Prepare financial and status reports and complete other tasks in the analysis and marketing of inventions as assigned and designated by Licensing Associate
  • Keep highly organized and indexed files (both paper and computer database) to track evaluation, patenting, marketing, and maintenance functions for inventions
  • Extensive database management including entry of information on new inventions, keeping people, company records, and patent information up to date, and entry of license agreement data
  • Prepare and sign own correspondence whenever possible, and prepare correspondence for associate’s signature

General:

Assist with general office-support tasks as needed for the efficient operation of the office. It would be expected that 75% time would be devoted to clerical duties.

Qualifications:

College level training highly desirable, preferably in science or engineering. Demonstrated strong oral and written communication skills. Ability to take initiative, to prioritize workload, and to work independently. Exceptional organizational and analytical skills. Attention to detail. Interest/experience desirable in technical marketing. Ability to use PCs, familiarity with databases (preferably 4th Dimension) and software programs Microsoft Word and Microsoft Excel.

LICENSING LIAISON II

With some supervision from Associate, Licensing Liaison is responsible for marketing and invention management assistance. The Licensing Liaison will work with the Licensing Associate (with some supervision and good judgment on the part of the Licensing Liaison):

  • Marketing, including identifying potential licensees through market research, initiating contact, preparing and distributing promotional materials
  • Market research using library and computer database resources
  • Preparation of invention abstracts for database
  • License Agreement monitoring ensuring compliance with diligence provisions and financial terms of the agreement
  • Patent-related activities including coordinating and monitoring patent filings and prosecution. Coordination of inventor signatures on documents and licensee input
  • Responsible for all sponsor compliance ensuring that all regulations and obligations are fulfilled
  • Prepare financial and status reports and complete other tasks in the analysis and marketing of inventions as assigned and designated by Licensing Associate
  • Preparation and execution of royalty sharing and nondisclosure agreements
  • Processing of dropped cases and follow through
  • Secondary administrative support and database entry for Associate
  • Keep highly organized and indexed files (both paper and computer database) to track evaluation, patenting, marketing, and maintenance functions for inventions.
  • Schedule inventor meetings
  • Assist with general support tasks, including reception, as needed for the efficient operation of the office. This position will have administrative/clerical responsibilities in support of licensing associate

Qualifications:

No licensing experience is required, but at least three years of experience as a paralegal or other relevant experience is preferred. BS/BA strongly preferred. Experience with intellectual property preferred. Ability to take initiative, to prioritize workload, follow-up consistently, and work independently. Good communication skills (oral and written) important. Exceptional organizational skills and attention to detail required. Experience with databases, word processing, and spreadsheet software required.

BOX 2: STANDARD OPERATING PROCEDURES5

LIST OF SOPs

Invention disclosures
Conceptual Disclosures
Preliminary Disclosure Information Entered into Database
Disclosure Notification of Government and Other Sponsors
Associate Docket Review

Royalty-Sharing Agreements (RSA)
Prepare Royalty-Sharing Agreement
Copy Distribution
Enter RSA Data into Database

Compliance—Government and other Sponsors
Government Sponsors
Disclosure Notification of Government Sponsors
Transmit Compliance Information to the Government
Copy Distribution
Corporate and Other Sponsors
Disclosure Notification of Corporate and Other Sponsors
Transmit Compliance Information to Corporate and Other Sponsors
Copy Distribution

Processing patents
Patent Application
Patent Prosecution
Newly Issued Patents
Patent Maintenance
Patent Abandonment/Expiration

Marketing
Decision to Market
Develop Non-Confidential Abstract
Develop List of Companies
Marketing Letter—Have Inventors Review/Comment

Confidential Disclosure Agreements (CDA)
Send Two Original CDAs to Potential Licensee(s) for Signature
File Stanford’s Original Agreement

License Agreements
Negotiate the Terms of the Agreement with Potential Licensee(s)
Agreement Signature Procedure
Enter License and License Terms into Database
Copy Distribution
License Agreement Process
Amendments
Terminated-Agreements Process

Equity
Receiving Stock Certificates from Company

Tabled dockets
Assess whether Invention Belongs in “The Pound”
Steps for Sending Invention to “The Pound”
Consider Re-Marketing While in “The Pound”
To Remove from “The Pound”

Terminated Agreements
Letter to Terminate Received/Issued
Update “Terminated” Safe Documents
Termination-Letter Distribution

Dropped Dockets
Decision to Drop a Docket

Off-Site Storage
Files to Be Archived for First Time
Files to Be Re-filed at Off-Site Storage
Miscellaneous Documents to Be Archived

General Administrative filing
Outgoing Correspondence
General Filing

SAMPLE SOPs FOR LICENSE AGREEMENTS 4

  1. Negotiate the terms of the agreement with potential licensee ........Associate

    A Royalty-Sharing Agreement should be completed when a patent is filed or when a license negotiation is initiated.

    (See also Exhibit L, titled 1st Licensee Meeting Checklist and Exhibit M, titled Parameters of an Exclusive License Agreement [not included in the Handbook].)

    1.1 Term Sheet .................................. Associate/Team

    Associate and Team determine the desired:

    • financial terms
    • BATNA (Best Alternative to No Agreement)
    • walk-away conditions for the agreement
    • type of license (non-exclusive, field exclusive, or exclusive)

    Associate either generates a term sheet (See Terms Sheet example [not included in the Handbook]) or requests a proposal from a licensee. For all field and fully exclusive licenses, Associate receives a development plan from licensee.

    Associate and company representative agree on financial terms.

    1.2 License Agreement .................................. Associate

    Once term sheet is agreed upon, enter financial terms, and docket-specific information, into standard License Agreement (see standard document license agreements on OTL Intranet; not included here). Utilize clauses library and input from Team as needed. Keep Director informed, particularly if the license contains nonstandard provisions.

    1.3 Conflict of Interest Review ...................... Associate

    Prepare Conflict of Interest Memo if inventor has a financial stake in the company or other relationships with the company, including:

    • has equity
    • is or will be a consultant
    • is or will be on the Scientific Advisory Board
    • is or will have sponsored research or collaboration with company

    a. Ask inventor to send their COI memo to Deans describing relationship with company and how any potential conflict of interest would be managed. Suggest inventor check out the COI Web site of their respective institution (for Stanford University, see www.stanford.edu/dept/DoR/ad_hoc.html). .................. Associate

    b. Obtain approval required by School Dean and Dean of Research before signing the Agreement. ................................ Associate Tracks

  2. Agreement Signature procedure

    Signature order not critical; if OTL signs first, include a deadline for the agreement to be returned.

    2.1 Director reviews and approves final draft of agreement. .........Director

    2.2 Prepare two original agreements for execution. ................. Liaison

    2.3 Licensee signs (preferably first). .......................Licensee

    2.4 Director signs for OTL. ...............................Director

    2.5 Return one original to Licensee. ....................Associate/Liaison

  3. Enter license and license terms into the database ................. Liaison/Associate Be sure to add all necessary information, including:

    - To License record

    • All standard fields
    • Equity (if applicable)
    • Office of Scientific Research funds (if applicable)
    • Corporate contact
    • Entity size
    • License-specific notes

    - To License Terms:

    • All royalty terms
    • Progress report terms and
    • Diligence terms or reminders to self
  4. Copy distribution ................................Receptionist

    • Original to SAFE file
    • Routing copy, which is routed to:
      1. OTL Accounting; then
      2. OTL staff; then
      3. Receptionist for scanning
    • Personal copy to Associate (Associate should notify receptionist if he/she already has a personal copy).
  5. processing and filing Stanford’s original agreement

    5.1 After license terms entered: ....................... Associate

    • If license issue fee was received, forward check to OTL Accounting for processing.
    • If license issue fee was not yet received, have OTL Accounting send invoice to Licensee.

    5.2 Notify inventors of license agreement, verify their address and update 4D .............................. Associate/Liaison

    5.3 If inventor requests a copy of the license agreement and there are no confidentiality provisions in the agreement that prevent this: ............ Associate/Liaison

    • The inventor must sign and return an Inventor Confidential Disclosure Agreement.
    • File original inventor CDA in SAFE and stamp “CONFIDENTIAL” on the copy of the agreement before sending it to the inventor.

    5.4 When licensed, notify patent attorney to: ................ Liaison

    • Pay large entity fees.
    • cc licensee on correspondence with the patent office (for exclusive licensees only).
  6. Amendments

    Amend for “minor” changes; rewrite agreement if major changes.

    6.1 Prepare up to two amendments per agreement, rewrite agreement thereafter. ...........................................Associate/Liaison

    6.2 Associate and team determine desired terms and conditions. .......Associate/Liaison

    6.3 Follow same signature procedures for original agreements (see Section 2, above) ...................................Associate/Liaison

    6.4 Update 4D license and license terms, if necessary. ...............Associate/Liaison

    6.5 Original Amendment filed in SAFE; Associate keeps a personal copy. .................................Associate/Liaison

  7. Terminated-agreements process ..................... Associate

    (See SOP section “Terminated Agreements” for further instructions [not included in the Handbook].)

SAMPLE SOPs FOR INVENTION DISCLOSURES

  1. OTL/Associate receives new paper disclosure .................. Associate/Liaison (for online disclosures, go to 3)

    Give disclosure to Director.
    (See http://otl.stanford.edu/inventors/resources/disclosure.pdf)

  2. Preliminary disclosure information entered in database ...............Director

    2.1 Assign docket number, associate initials and title. ...............Director

    2.2 Give copy of disclosure to Front Desk. ............... Assistant to the Director

    2.3 Create correspondence folder and give folder to Associate. ............... Front Desk Give copy of disclosure to Compliance Manager. (See SOP section “General Administrative Filing” [not included in the Handbook].)

    2.4 Review, sign and witness disclosure, then give it to Liaison for processing. ....................................................Associate

    2.5 Enter all remaining information from invention disclosure form into database, including each inventor’s:

    • Name
    • Addresses
    • E-mail address
    • Phone number
    • Fax number
    • Department (please verify using Stanford Directory) .................Liaison

    Also check each Database box that corresponds to a special affiliation or situation (e.g., HHMI or SRC).

    2.6 If invention is sponsored, and sponsor is already listed in the database: enter sponsor name and contract number in the sponsor portion of the docket screen. ...................................................Liaison

    If no sponsor or “None” listed: double check with the inventor.

    If an inventor is an HHMI employee: HHMI should be included as a sponsor.

    If an inventor is a VA employee: VA should be included as a sponsor. (See SOP section “Compliance: Government & Other Sponsors” [not included in the Handbook].)

    2.7 If sponsor not already in database, obtain copy of any nonfederal sponsored agreement from Industrial Contracts Office, Office of Sponsored Research, or inventor and put agreement in file. Then enter sponsor information/terms into database. Verify sponsor requirements and communicate them to Compliance Manager as needed. (See SOP section “Compliance: Government & Other Sponsors” [not included in the Handbook].) .....................................Liaison

  3. OTL receives new online disclosure, and database notifies director ........Director

    3.1 Director assigns docket to Associate and generates database e-mail to Associate/Liaison team. ............................................Director

    3.2 Print out attachment(s) included with Director’s e-mail, if any, for correspondence file....................................Liaison

    3.3 Review disclosure (found in the Database Disclosures view):

    • Add/update inventor and sponsor information in Database, as needed
    • If no sponsor or “None” listed: double check with inventor
    • If inventor is a Howard Hughes Medical Institute employee: HHMI should be listed as a sponsor
    • If inventor is a Veteran’s Administration employee: VA should be listed as a sponsor
    • Approve docket and generate database e-mail to director
    • Print out disclosure

    3.4 Director creates docket and sends 4D e-mail to Associate/Liaison team. ......Director

    3.5 Once docket number has been assigned by Director, write docket number in upper right-hand corner of printed disclosure and give original disclosure (with printouts of attachment(s), if any) to Front Desk to create correspondence folder. ...............Liaison

    3.6 Database notifies Compliance Manager of new disclosure ..........Database

  4. OTL notifies government and other sponsors of Stanford’s action on the disclosure
    (See SOP section “Compliance: Government & Other Sponsors” [not included in the Handbook].) ......................................Compliance Manager

  5. Associate docket review

    5.1 Read disclosure and arrange to meet with Inventor(s) within 1 month. .......Associate

    Have the disclosure signed by inventor(s), witness, and Associate.

    If there was a material transfer agreement (MTA): copy the MTA from Industrial Contracts Office files and review for any IP requirements.

    Confirm whether inventor(s) plan to publish or present, including online.

    Enter status note (in Database Notes view) that describes inventor meeting and docket evaluation.

    (See also Exhibit B: 1st Inventor Meeting Checklist; [not included in the Handbook].)

    5.2 Evaluate disclosure for patentability and commercial potential. Evaluation may include input from:

    • Biological or Physical Sciences Team
    • Patent attorneys
    • Industry contacts
    • Technical Experts (for example other faculty, Niodesign Network)
    • Full marketing ...................................... Associate/Team

    5.3 If not provided with disclosure, obtain marketing abstract information from inventor or create marketing abstract. ............................... Associate/Liaison
    (See Exhibit D: Marketing Abstract [not included in the Handbook].)

    5.4 Enter following information into database (these should be updated if there was an online disclosure):

    • Abstract
    • Applications
    • Advantages
    • Publications
    • Stage of Development
    • Continuing Research
    • Links to lab Web site
    • Status
    • Action
    • Categories
    • Bio/PhySci
    • EPIC if applicable
    • Patent Bar date...................................... Associate/Liaison

    5.5 Make preliminary domestic/foreign filing decision—defer if more research required ......................................... Associate/Team

    5.6 Send out standard royalty sharing agreement (RSA) memo if:

    • Invention is being marketed
    • Patent application is filed
    • RSA not needed if invention is being dropped prior to marketing. .............Liaison

    (See SOP Section “Royalty Sharing Agreements” [not included in the Handbook].)

Endnotes

All referenced Web sites were last accessed between 1 and 10 October 2007.

1 The information provided here is current as of the publication date. As with any technology transfer office, structure, job descriptions and responsibilities, and the number of persons employed change over time.

2 otl.stanford.edu.

3 See, also in this Handbook, chapter 6.1 by L Nelsen, which provides relevant information for heads of research institutes and research hospitals, whether private or government supported.

4 otl.stanford.edu/about/resources.html.

5 Note that SOPs are rarely shared with third parties because they are highly specific for the particular institution and environment in which an office operates.

Hines S. 2007. Administration of a Large Technology Transfer Office. In Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices (eds. A Krattiger, RT Mahoney, L Nelsen, et al.). MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

Editors’ Note: We are most grateful to the Association of University Technology Managers (AUTM) for having allowed us to update and edit this paper and include it as a chapter in this Handbook. The original paper was published in the AUTM Technology Transfer Practice Manual (Second Edition, Part II: Chapter 3).

© 2007. S Hines. Sharing the Art of IP Management: Photocopying and distribution through the Internet for noncommercial purposes is permitted and encouraged.