Your source for expert commentary on IP management issues.
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Editor-in-Chief, Anatole Krattiger
Why This Topic Is Important
This section addresses the crucial step of determining what, if anything, the commercial use and value of
a piece of IP-protected technology or genetics might be. The primary lessons of this section are that such
value is highly uncertain and difficult to assess. Yet, an understanding of the issues and methods involved
provides central insight into the nature of the problem of transferring technology from a scientific
laboratory to the market.
Key Implications and Best Practices: Section 9
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.
- The best approach by your TTO is usually to disclose inventions early and disclose often.
- You should even consider disclosing what you think might not yet be a full invention. Experience shows that scientists are, in fact, not very good at determining when they have an invention. In many cases, they have a dozen when they themselves think they have none!
- If your TTO officers decide not to file for patents, you shouldn’t be discouraged. This is not a critique on your research, its importance, or its relevance. the TTO has many priorities to balance, including financial.
- It can be challenging to negotiate licensing agreements that are fair to everyone and conducive to “moving” inventions to innovations. it is generally far better to make an imperfect deal than no deal at all. People do not benefit until technology is developed and distributed.
- Some of the key questions TTOs address early on when an invention has been made is whether a patent application should be filed at all, how the invention would be marketed, and what value the invention might add to existing processes or products or what value might come out of a new product or process. Determining how to translate an invention into an innovation that makes a difference in people’s lives (economically or socially or both) is one of the principal reasons technology transfer offices exist.
- Scientists must insist that the TTO have transparent procedures for reviewing invention disclosures and making decisions. You should not only be informed of the basis and rationale for a decision, but also, in most cases, be fully involved in the process.
- It is important to keep a detailed record of your research procedures. Your records may help determine inventorship and may provide clues as to the value of your inventions.
- Once your TTO patents your invention, don’t expect a big revenue flow. For a TTO, quite often the best approach is to get as many licenses as possible completed in a short period of time, even if an individual license does not provide the maximum possible income. The more licenses, the higher the probability that one, or a few, will generate returns. Both you and senior management should be supportive of the overall deal making of the TTO rather than criticizing individual deals. Naturally, TTO officers need to follow procedures, apply policies, and be well trained in deal making.
- Additional research by yourself or your group often increases both the likelihood of finding a licensee and the economic value of the license. But this is only true if the research is specifically aimed at reducing the risks of commercializing the technology. Basic research may do little to reduce these risks. Discuss this issue with your TTO officer. Especially in an academic environment, he or she will be reluctant to provide unsolicited advice regarding this issue.
- Remember that licensing incomes reward the commercial value, and not the scientific value, of your invention. technology licenses may provide you with follow-on grants and other intangible incentives to conduct further research.
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