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Your source for expert commentary on IP management issues.
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About
Editor-in-Chief, Anatole Krattiger
Editorial Board
Concept Foundation
PIPRA
Fiocruz, Brazil
bioDevelopments- Institute
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Why This Topic Is Important
Setting up and running a technology transfer office is a complex undertaking that draws on a diverse set
of technical, managerial, and business skills, that are all not commonly found within research institutions.
The attendant organizational and cultural changes require clear leadership and a commitment of
resources from senior administrators and policymakers. This section discusses both overarching issues of
managing technology transfer and many of the specific functions involved, including staffing, training, and
data and file management. Perspectives are provided on setting up technology transfer offices in
numerous different countries, including the U.S., Europe, and many emerging economies.
Key Implications and Best Practices: Section 6
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.
- Your power to shape institutional policy should not be underestimated, especially in the ways that the fruits of your research can be made to increase economic development and benefit humanity.
- Know your institutional conflict of interest policy. Most conflict of interest issues arise when procedures are not properly followed.
- Work with your TTO to ensure that your institution’s disclosure of information form is simple and easy for you to use.
- Understand why you might benefit from engaging in technology transfer and what you want to get out of the relationship with the TTO.
- A national or regional consortium of universities to develop a technology transfer system could be beneficial to you and your colleagues because it would be more cost effective and would have greater latitude and leverage in exploiting commercialization opportunities than would a single campus office.
- Establishing networks among colleagues will increase your awareness of opportunities and also help you understand the broader implications of your research.
- Keep your TTO informed about your networking activities, particularly if there is a possibility of shared research endeavors. These collaborative research projects often form the foundation of networks for technology transfer and licensing opportunities.
 Abstract
How to Select and Work with Patent Counsel
by Michael L. Goldman
Abstract:
Public sector technology transfer offices (TTOs) are in the business of “moving” technology from research and development to eventual commercialization in order to advance their missions of serving the greater public good. Intellectual property (IP) management is integral to this process, and integral to IP management is patenting. Maximal captured value for public sector technologies will be greatly affected by the quality and scope of the patent coverage and this, in turn, is greatly influenced by the quality of work done by patent counsel. It is therefore essential for a TTO to select a patent attorney whose work will enhance the institution’s prospects for obtaining optimal licensing arrangements. From selection to hiring to ongoing interactions, it is important for the TTO and the patent counsel to develop and maintain a good working relationship. Central to this relationship is ensuring that patent counsel can prepare and prosecute patent applications in a manner that achieves positive results cost effectively. This is a complex process, and there are many responsibilities that both counsel and the TTO must assume. In addition, patent attorneys can provide general counseling: resolving inventorship issues, providing licensing and agreement support, and settling disputes. The TTO will be the patent attorney’s actual client and function as the interface between counsel and the institution. By selecting qualified patent counsel and then developing a good relationship, a TTO can ease its workload and facilitate its mission. Therefore, retaining a skilled patent attorney and one that is well suited to the particular needs of the TTO is an essential element for operating a viable technology transfer program. The search for such an attorney must be approached thoughtfully.
Abstract
Training Staff in IP Management
by Sibongile Pefile, Anatole Krattiger, 1,
Abstract:
This chapter provides an overview of training opportunities that developing country institutions can explore to start to address problems related to a smooth implementation and execution of all intellectual property-related aspects (policy, management, procedures, and so forth). The chapter offers to institutions guidelines for evaluating training needs and reviews different kinds of training programs, identifying the pros and cons of each. IP management training is a long-term investment, but a cost-effective one, leading to better utilization of third-party IP resources, more effective internal IP management policies and procedures, and higher efficiency in regard to out-licensing and partnership development. The chapter emphasizes the importance of strategic and practical training programs related to participants’ responsibilities within an organization. Finally, multidimensional case studies are provided to illustrate the myriad issues that may arise with respect to the management of intellectual property.
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