Home > Topics > Establishing and Operating Technology Transfer Offices > Administration of a Large Technology Transfer Office > Editor's Summary, Implications and Best Practices

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. That office consists of a director, seven licensing associates, eight licensing liaisons, one copyright licensing specialist, and eight and one-half administrative staff. The administrative staff includes the positions of: assistant to the director, administrative services manager, manager of information systems, receptionist(s), manager of compliance and assistant, and accountant and assistant. There is also an industrial contracts office, consisting of a manager and three associates.

The licensing associates, administrative services manager, copyright licensing specialist, manager of compliance, accountant, manager of the industrial contracts office, and the director’s assistant report to the Director. The manager of information systems reports to a senior licensing associate. The receptionists report to the administrative services manager.

Technology Licensing Associates work with the inventors (professors, graduate students, and research staff) and with prospective licensees. They evaluate and obtain proprietary protection, and also market and negotiate the terms and conditions of the licensing agreement with industry. Each of the licensing liaisons supports one licensing associate, reporting directly to the associates. The specific licensing positions in the office include:

• Technology Licensing Associate I: handles routine cases (with supervision), participates in the negotiation and preparation of complex cases, evaluates, obtains proprietary protection, markets and negotiates the terms and conditions of the licensing agreement with industry.
• Technology Licensing Associate II: handles a variety of complex cases and requires a high degree of technical and business expertise as well as a familiarity with legal issues involved.
• Technology Licensing Associate III: is reserved for individuals handling major cases where licensing potential is estimated to be in the millions of dollars, works with the inventors and with prospective licensees.
• Licensing Liaison I: assists with marketing, routine amendments, patent prosecution, database management, inventor meeting scheduling, and administrative/clerical responsibilities in support of licensing associate.
• Licensing Liaison II: markets new inventions (including market research and preparing abstracts), docket administration, coordinates and monitors patent activities, inventor meeting scheduling, and administrative/clerical responsibilities in support of licensing associates.

In addition to providing a list of key personnel for a technology transfer office’s operation, the chapter also defines, and gives examples of, complex cases (for example, litigation, complex intellectual property, cases involving large sums of money). A comprehensive list of standard operating procedures is also listed, and these are then illustrated in a sample list of standard operating procedures for a licensing agreement and sample list of standard operating procedures for an invention disclosure.

The experience of the Stanford University of Technology Licensing can provide similar offices in developing countries with a solid, and clearly explained, organizational outline of how an office can be structured, especially in terms of personnel and human resources. As such, this chapter can be a valuable guide for both establishing a technology transfer office or for offices that are already up and running but considering expansion.

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

• Establishing a technology transfer office requires investment in both physical and human infrastructure; both are essential. Provide your public sector institutions with sufficient and ongoing support, so that they can recruit, hire and then train the very best professionals available. The initial investment will be worthwhile.

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

• Realize that your technology transfer office will require adequate support for essential personnel and staffing. These professionals will be responsible for your institution’s IP management, from patenting to licensing. The technology transfer office can only be a success when qualified, motivated professionals staff the office.

For Scientists

• When you interface with your technology transfer office, be aware of whom you should be communicating with, for example which of the technology licensing associates is the appropriate contact. Then, as you continue to work with the technology transfer office, whether it concerns patenting, licensing or technology transfer, your interactions and communications with the technology licensing officer, who is assigned to your case, will be critical for achieving whatever your shared goals are.

For Technology Transfer Officers

• Know that Technology transfer officers need an unusual combination of qualifications, including an understanding of research (background in science or engineering), appreciation for what commercialization is, familiarity with IP and patent law, and sensitivity to the realities of an academic research institution.
• Therefore, when recruiting personnel to staff your office, consider these, as well as other, key qualifications. Having the best professionals staff your office is among the most important investments you will make, and staffing can have a significant impact on the success of your office.