TopTop

Shadow

Search

advanced search
search help

 

ipHandbook Blog

Your source for expert commentary on IP management issues.
Go to the blog

 

About

Editor-in-Chief,   Anatole Krattiger

Editorial Board

Concept Foundation

PIPRA

Fiocruz, Brazil

bioDevelopments-   Institute

Site Guide for Technology Transfer Managers

As a manager of technology transfer operations or licensing executive, you need a familiarity not only with general principles of IP policy and strategy but also practical matters of running a comprehensive technology transfer program.

This Site Guide for Technology Transfer Officers presents you with and executive overview of the general principles of IP and specific mechanics of IP management. It will then recommend to you selections from among the 153 chapters and over 50 case studies in the Handbook that are most likely to be informative and helpful to you as a technology transfer officer.

Key Implications and Best Practices for Technology Transfer Managers

The Innovation Landscape and Intellectual Property

  • The emerging global systems of innovation in health and agriculture open up new prospects for innovation everywhere. This has profound implications for the management of innovation, technology transfer, market competition, and economic development in every country. (more>>)
  • Innovation is complex and integral to all six components of innovation: IP management, R&D in the public and private sectors, safe and effective regulatory systems, the ability to produce new products to high standards of quality, a national distribution system in both the public and private sectors, and international distribution systems and trade in technologies. Consider this entire innovation process when making patenting and licensing decisions. (more>>)
  • The use of IP rights is not a panacea for the management of innovation, nor is the public domain. Both public and private goods have utility and limitations. The art of innovation management is in using both public and private goods and to manage the interface between them. (more>>)

The Role of the Technology Transfer Office

  • The traditional mission of technology transfer offices (to bring university-generated intellectual property to benefit the public) is broadening, reaching the global community. Technology transfer also enhances the reputation of academic institutions and facilitates their missions of education, research, and community outreach, ensuring social impact. (more << here and here >>)
  • A TTO is responsible for creating incentives to move discoveries toward product development by motivating public sector researchers, not by a promise of revenue streams, but by the satisfaction of seeing their work applied to serve the public good. (more>>)
  • The primary role of a technology transfer office should not be the generation of financial returns; they can take years to come. Be realistic when making forecasts about expected income; a positive return can take eight to ten years to achieve. (more>>)
  • Your role in communicating the use of IP tools and the benefits of good IP management is critical, thereby cultivates an IP management “culture” throughout the organization. Such communication should be directed to senior management, your institution’s board, and to scientists. (more << here and here >>)

IP Policy and IP Strategy

  • An IP policy should address, at a minimum, ownership of intellectual property, conflicts of interest and conflicts of commitment, the handling of confidential information, the principles of IP licensing approaches, the sharing of income derived from intellectual property, and any rights the institution will retain (such as for research and for humanitarian uses). (more>>)
  • An institutional IP strategy addresses how IP management will be used to achieve global access/humanitarian benefits of the inventions and products developed at an institution. It should include how the institution deals with incoming third-party intellectual property, how it deals with internally generated intellectual property, and how it will out-license its intellectual property to third parties. (more>>)

Agreements and their Uses

  • A public sector institution can use a variety of agreements to both manage and protect intellectual property, regardless of whether that intellectual property is owned by the public sector institution or by licensing partners in the private sector. The key issue is to allow for maximum flexibility whereby institutions can set, or negotiate, the terms that best fit the mission and goals of the institution and the purpose of the partnership. (more>>)
  • A template agreement should be used only as a starting point for discussions. (more>>)
  • Contracts should be tailored to fit local customs and business practices. Be sensitive to cultural and linguistic differences between parties to a contract. (more>>)
  • Your office ought to be the official repository of all agreements dealing with incoming and outgoing biological materials. (more>>)
  • Legal jargon in agreements should be avoided. Instead, use short, clear sentences that are free of vague adjectives and are written in the active voice. (more>>)
  • Confidentiality agreements rely on a culture of trust, not a culture of secrecy. Make sure that confidentiality agreements contain the necessary exceptions appropriate for the mandate of your institution. (more>>)
  • When negotiating collaborative research agreements, involve scientists. Their input will be critical at various stages of the process. (more>>)

Some IP Management Nuts and Bolts

  • Conduct occasionally comprehensive IP audits to determine where your IP assets are, when IP protection is needed, whether there are potential IP liability issues, whether there are licensing needs and/or opportunities, and whether there are inventions to be harvested. (more>>)
  • IP audits can be useful mechanisms that form the basis for an internal review and revision of an institution’s IP strategy and IP policy. (more>>)
  • Technology transfer invariably brings conflicts of interest. The challenge is to manage them in a transparent and consistent manner. Most problems arise when potential conflicts are not disclosed. (more>>)
  • All employees (and visitors in some cases) should be required to sign an invention assignment agreement on their date of arrival. (more>>)
  • Any TTO will have a wide range of legal matters to be addressed, and procedures for working with external patent and general counsel should be well established. (more>>)
  • Many technology valuation approaches exist. None is perfect. Considering that each deal is highly context specific, each technology transfer office should be able to select the best approach and adapt it to the specific circumstances. (more>>)
  • When devising a patenting strategy, you will need to make three decisions: First, should you seek patent protection? Second, what is the best patent-marketing approach? Third, what license fees and/or royalties ought to be levied? (more>>)

Modes of IP Protection

  • Trademarks are a critical, and often overlooked, option for IP protection. They can be used as stand-alone IP protection, or they can be integrated into an overall strategy for integrated IP protection. (more>>)
  • Because public-domain technologies play an important role in publicly funded research, defensive publishing can increase accessibility of technologies in the public domain. Scientists need your help to ensure that such disclosure truly places the invention into the public domain. (more>>)
  • There are advantages in filing provisional patent applications (such as controlling costs and providing additional time for weighing options as to whether it is worthwhile to pursue a full patent application) but beware of the downsides. (more>>)
  • For any invention, evaluate whether foreign patent rights are truly required. Keep in mind possible applications in developing countries; a patent may be critical to ensure access. This will require a combination of business, marketing, and legal analyses. (more>>)

Licensing Inventions and Technology

  • Both nonexclusive and exclusive licenses can be applicable to meeting socio-economic goals. Within exclusive licensing, there are many options, such as exclusivity limited to a certain field of use, or geography, or for limited periods of time. (more>>)
  • Reserving rights for humanitarian use may require additional work and will likely not generate licensing revenue; conversely, such provisions, if used in a strategic way, are unlikely to lead to loss of revenues. (more>>)
  • Though potentially useful, IP managers should be cautious of imitating open licensing procedures in the field of biotechnology. It is still unclear to what extent the software models of open source can be adapted to other technological fields. (more>>)
  • Any organization engaged in high-volume licensing will find it useful to develop its own internal template agreements that are then modified and adapted to suit each special circumstance. Checklists for different types of recurring licensing negotiations should be reviewed prior to and during negotiations. (more>>) For the licensing of plant varieties, certain software may be useful (more>>)
  • Field-of-use licensing should be adopted as the preferred method of licensing whenever possible. It allows you to gain greater control while maximizing the use and value of your licensed technology. (more>>)
  • In a license agreement, the rights (or prohibitions) to sublicense and assign a license ought to be explicitly articulated. (more>>)
  • Licensee agreements are contracts. Hence, a practical understanding of contract law will be fundamental to negotiating and drafting good license agreements. TTOs can ask counsel to ensure that agreements are compliant with national law. (more>>)

Milestones

  • Creative licensing strategies will help your institution gain the greatest benefits from the research it conducts. Such strategies include, at a minimum, the balancing of exclusive and nonexclusive rights, defining field of use, setting appropriate milestones, requiring the delivery of products to developing country markets, and exercising control over pricing. (more>>)
  • The public sector must specify in writing exactly what it wants to accomplish with a commercial partner, detailing when and how this will be achieved by articulating milestone obligations. (more>>)
  • Avoid “best effort” clauses in agreements. Instead, draft comprehensive contracts with articulated milestones. This up-front investment will pay off later if a problem arises. (more>>)
  • Developing meaningful milestones that provide the appropriate balance of incentives, rewards, and penalties requires detailed preparations, a sound understanding of the processes related to developing and marketing the product, realistic forecasting of product potential, and a mission-driven mindset. (more>>)

“Moving” Technologies to the Market

  • One of your responsibilities will be to bring together individuals with different backgrounds and experiences before negotiating agreements. Ideally, a team should include business strategy, marketing, legal, scientific, regulatory, production, and finance expertise. (more>>)
  • Marketing inventions should not simply be a push of technologies; rather, it should be an approach that allows the needs of buyers to pull inventions. (more>>)

IP Management and Entrepreneurship

  • One of the most important factors for a successful TTO is the institution’s entrepreneurial culture. This is strongly influenced by the attitude and degree of support from senior management. (more>>)
  • Spinouts carry a number of risks, but with certain factors in place they can represent the best opportunity for developing early-stage technology. (more>>)
  • Potential investors in a spinout will ask two major IP questions. Could previously existing intellectual property block the technology? Could your intellectual property dominate the market and prevent entry by others? (more>>)
  • When licensing to or creating new ventures, several key attributes are essential for attracting venture capital investment: a strong management team, a viable technology, a strong IP position, a large potential market, and location in an environment favorable for entrepreneurship. (more>>)
  • New ventures in developing countries have much to gain by attracting and building on international investor networks. They have the potential to open new markets and bring in new alliances. (more>>)
  • It is often appropriate to strike a balance between reliance on licensing-out to existing companies and investing time and resources in creating new companies. (more>>)

Risk Management and Freedom to Operate (FTO)

  • The role of the technology transfer officer, and that of attorneys who may produce legal FTO opinions, is generally to advise senior management on risks. It is a manager’s purview, based on your input, to decide how to deal with the risks identified in your FTO analysis. (more>>)
  • A freedom to operate (FTO) analysis is an interdisciplinary endeavor best executed through FTO teams. These teams, made up of legal, business, and scientific professionals, are in themselves useful for strengthening intra-institutional dialogue and communications. (more>>)
  • For an academic or public institution, legal FTO opinions are unlikely to be needed for the majority of technology transfer functions. They would be relevant only if the institution is engaged in downstream product development and commercialization. (more>>)

Monitoring and Protecting Intellectual Property

  • Potential patent infringements should be monitored continuously through sound surveillance protocols, and action taken to remedy infringement is an essential part of IP asset management. The lack of patent enforcement can lead to a loss of patent rights. (more>>)
  • Early communication with potential infringers and good license and licensee diligence, are the foundations for policing and maintaining intellectual property, irrespective of whether the intellectual property is owned by a public or a private entity. (more>>)
  • Essential to contract management is a well-organized electronic filing system. A TTO should establish such a system as early as possible and before the number of agreements and licenses becomes large. An agreement management system (donated by the Whitehead Institute for Biomedical Research) is available on the Handbook’s Web site for download. (more>>)
  • Most IP disputes should not end up in litigation, as there are many options and strategies for resolving disputes. Good contracts and good licensing practices anticipate that disputes arise with partnerships and licenses. (more>>)
  • Mediation and arbitration can be effective dispute-settlement procedures, provided they have been agreed upon and established in contract clauses at a time when a license or partnership is being negotiated—and before any problems arise. (more>>)
  • A technology transfer office must have systematic procedures to administer, monitor, and enforce its technology licenses. This includes compliance with royalty payments and reporting obligations in a non-confrontational manner. (more>>)

IP Training and Capacity Building

  • When scientists learn the basics of IP management, communications with the technology transfer office will improve. Public sector institutions should offer training to every scientist, student researcher, and technicianwhen they join an institution. (more>>)
  • Part of the aim of IP management training is team building that encourages communication between your office and the scientists in your institution. It is part of creating a culture of IP awareness and particularly useful to encourage invention disclosures. (more>>)
  • It is good practice to include senior management as participants in the training sessions. This is especially useful when the training program includes case studies. (more>>)

Intellectual Property, Bioprospecting, and Traditional Knowledge

  • The technology transfer office should work with senior management to establish policies and systems for accessing indigenous or traditional knowledge (TK), bioprospecting activities, and benefit sharing in an equitable manner. (more>>)

Recommended IP Topics for Technology Transfer Managers:

Recommended Case Studies for Technology Transfer Managers:

Application and Examples of Best Practices in IP Management: The Donald Danforth Plant Science Center

Biodiversity and Benefit-Sharing: University of Illinois at Chicago

Building Healthy Forests with Early-Stage Propagation: University of Saskatchewan

Clearfield Rice: Louisiana State University

Current IP Management Issues for Health and Agriculture in India

Cyclofem® Contraceptive: Upjohn, WHO, and the Concept Foundation

Diagnostic Tests for Cervical Cancer: PATH

DNA Hepatitis B Vaccine: International Vaccine Institute, Korea

From Science to Market: Transferring Standards Certification Know-How from ICIPE to Africert Ltd.

From University to Industry: Technology Transfer at Unicamp in Brazil

Fundación Chile: Technology Transfer for Somatic Embryogenesis of Grapes

Gastrointestinal Medicines from African Aloe: Baylabs (Pty) Ltd.

Golden Rice: A Product-Development Partnership in Agricultural Biotechnology and Humanitarian Licensing

The Groundnut Story: A Public-Private Initiative Focused on India

HIV/AIDS Vaccine: Indian Council of Medical Research

How Intellectual Property and Plant Breeding Come Together: Corn as a Case Study for Breeders and Research Managers

How Public–Private Partnerships Handle Intellectual Property: The PATH Experience

Improved Production of a Natural Product Treatment for Malaria: Oneworld Health, Amyris, and the University of California at Berkeley

Intellectual Property and Technology Transfer by the University of California Agricultural Experiment Station

IP Asset Sale Involving an Intra-Uterine Device: Population Council

IP Management at Chinese Universities

The IP Management of the PRSV-Resistant Papayas Developed by Cornell University and the University of Hawaii and Commercialized in Hawaii

IP Rights in China: Spurring Invention and Driving Innovation in Health and Agriculture

Lapdap Antimalarial Drug: GlaxoSmithKline, WHO-TDR, and the U.K. Department for International Development

Lessons from the Commercialization of the Cohen-Boyer Patents: The Stanford University Licensing Program

The Making of a Licensing Legend: Stanford University’s Office of Technology Licensing

Malaria Vaccine: Malaria Vaccine Institute and GlaxoSmithKline Biologicals

A Model for the Collaborative Development of Agricultural Biotechnology Products in Chile

The New American University and the Role of “Technology Translation”: The Approach of Arizona State University

Nicotine Patch: University of California, Los Angeles

Nontoxic Drug Therapy for Chagas’ Disease and Malaria: University of Washington and Yale University

Partnerships for Innovation and Global Health: NIH International Technology Transfer Activities

Patent Consolidation and Equitable Access: PATH’s Malaria Vaccines

Pragmatic and Principled: DNDi’s Approach to IP Management

Reduced-Duration Tuberculosis Treatment: TB Alliance and Bayer HealthCare

Saving Forests and Creating a New Cash Crop in the Middle East and Asia: University of Minnesota

Somatic Embryogenesis of Grapes: Fundación Chile

Specific IP Issues with Molecular Pharming: Case Study of Plant-Derived Vaccines

Technology Transfer at the University of California

Technology Transfer in South African Public Research Institutions

The University of California’s Strawberry Licensing Program

Weed-Control Additive (or Adjuvant): North Dakota State University