Home > Topics > Establishing and Operating Technology Transfer Offices > WIIPS^™: Whitehead Institute Intellectual Property System (A Relational Database for IP Management and Technology Transfer) > Editor's Summary, Implications and Best Practices

Agreements and contracts are the lifeblood of any organization involved in R&D, particularly organizations for which technology transfer—whether incoming or outgoing—is a critical factor in their operations. The collaborations and partnerships that underlie such technology transfer are increasingly essential for maximizing resources and accelerating research programs. However, regardless of how close or how friendly the organization is with its collaborators, it is absolutely necessary that agreements and contracts be reduced to executed writings. By formalizing the details of any “deal” between two or more parties, it is ensured that all the parties understand their rights and obligations. Indeed, contracts are not just pieces of paper to be signed before activities begin and money changes hands, but vital documents that have to be considered throughout the life of the relationship between the parties.

In order to practically implement the organization, management, and protection of written contracts and agreements, a carefully planned system of contract management is very important. This will enable the organization to properly fulfill the terms of contracts, keep track of the obligations of the other parties to the contract, and more broadly to manage the contract portfolio (for example, negotiating new contracts with the same or other parties). As an early investment that an organization can make in its institutional and human capacity, it is well worth the time, effort, and expense.

The primary goal of a solid contract management system is to enable the organization to quickly find out just where it stands with existing contractual obligations related to the technology being developed. In other words, it enables ready access and analysis of contracts to determine who the parties are, what the terms, provisions, and obligations are, and when they are due. In other words, it highlights the who, what, and when of contracts.

Chapter 6.13 discusses the design and implementation of a contract management system. Depending on the particular needs, resources, and expertise of an organization, a system can be set up ranging from the simple filing of paper copies of signed documents, to full-blown electronic database applications with multiple levels of access and review. The different options are considered from the viewpoint of both security and access—two topics often seen to be in conflict with each other. Some options for proprietary contract management databases are listed for reference. The chapter 6.13 also stresses that the needs of the organization should drive the development of the contract management system, and not the other way round.

Chapter 6.13 specifies many useful approaches for actually implementing a contract management system, including:

• Accessibility
  • Hard-copy filing
  • Electronic filing
  • Database systems
• Security
  • Data loss prevention
  • Unauthorized access prevention
  • Computer support
  • Adequate data backup
• Resources for Implementation
  • Low-technology solutions
  • Simple databases
  • Formalized databases
  • Commercially available tools
  • “Off-the-shelf” tools
  • Customized tools
• Personnel time, training and management.

As chapter 6.13 clearly demonstrates, although managing contacts and agreements is not particularly glamorous, it is a vital job in any organization—even more so when the goal of the organization is to transfer technology in or out. Such deals are often complicated with many rights and obligations. So, the sooner a functional contract management system is implemented, the easier it will be to keep track of contracts and make the most of them, both for the organization and for its collaborators.

The value of the proper management of contracts and agreements is usually only seen in its absence—lost deals, a poor reputation and, in the worst case, lawsuits. Early investments to prevent these sorts of problems are like any prophylactic measure: one will never know what types of disasters have been averted and how much has really been saved, but it will certainly be substantial.

The WIIPS™ Database, a practical tool for facilitating the principles discussed in chapter 6.13, is outlined in chapter 6.12. The Whitehead Institute for Biomedical Research (Cambridge, Massachusetts, U.S.A.) has agreed to allow MIHR and PIPRA to distribute its proprietary WIIPS™ Database. WIIPS™, a relational database designed to automate essential intellectual property management and technology transfer functions. It simplifies recordkeeping and generates useful reports for technology disclosures, patent applications, joint invention agreements, licenses, and material transfer agreements. In addition, the system stores essential information on every inventor, owner, and licensee who has interacted with a given TTO. Thus, the system effectively automates all recordkeeping, and offers immediate and accurate information on the status of every case, including documentation, patenting and licensing information. Not only will it allow TTOs to better manage volumes of IP data, it will also increase productivity and accuracy, since WIIPS™ allows for easy communication among staff members. Beginning in August 2007, WIIPS™ can be downloaded for free, subject to the terms of a license, from the online version of the Handbook at www.ipHandbook.org. In order to run the database, users must have access to Microsoft® Access® and a Windows XP (or higher) operating system. Users are authorized to copy and/or modify both the software and its user guide, as long as they acknowledge that the resulting product is based on WIIPS™.

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

• For the universities and research institutions in your nation, IP management and technology transfer are increasingly affecting the productivity and success of research programs. In order to fully capture the value of investments in research programs, systems should be implemented to coherently and effectively manage the various legal documents that are essential components of IP management and technology transfer. Contracts are extremely important in this regard. Support for the establishment of appropriate contract management systems should come from, and certainly be consistent with, government policy.

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

• Developing and implementing contract management systems should be prioritized at the higher levels of an organization. This will ensure that there are contract management systems implemented with the full involvement of the rest of the organization. Otherwise, these systems will not be useful tools, but may even be viewed as just another administrative burden imposed from above.
• As a senior manager of a university it will be up to you to identify the need, provide support, and foster the overall professional culture to effectively implement a contract management system.

For Scientists

• The technology transfer office (TTO) for your institution should be the sole repository for any agreements and/or contracts made with other parties. Any collaborations, partnerships, or transfers of materials or information should be made, therefore, according to the guidelines of the TTO.
• The TTO will store, organize, and manage agreements and contracts. You will therefore need to stay in touch with them so that you can understand what obligations you, or your research program/staff, might have pursuant to an agreement or contract. With an organized and effectively managed contract management system in place, your TTO can keep you informed.

For Technology Transfer Officers

• It will be your responsibility to initiate, organize, and manage a contract management system that is appropriate and compatible with the needs and resources of your institution.
• You should identify what type of system should be implemented. This will also involve determining the level of personnel training and sophistication of technology required. It might be an all paper file system or a state-of-the-art computerized network database, but the choices made should reflect the needs and budget of your institution and not, for example, the availability of attractively complex (and expensive) computer systems.
• Once the contract management system is established, your office will need to continuously maintain it for maximal and sustained performance. By preventing any number of potential problems related to contract mismanagement, this may be of immeasurable value to your institution.
• Institute a system for regularly backing up all electronic files, preferably in a remote location.