Establishing and Operating Technology Transfer Offices
Topic Guide for Technology Transfer Managers

Abstract: 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 (OTL). It consists of a director, seven licensing associates, eight licensing liaisons, one copyright licensing specialist, and an administration staff. The administrative staff comprises an assistant to the director, an administrative services manager, a manager of information systems, receptionist(s), a manager of compliance and assistant, and an accountant and assistant. The industrial contracts office is part of OTL and consists of a manager and three associates.

Abstract: Developing and implementing best practices in intellectual property (IP) management requires several critical inputs, and building networks is among the most important. The experience of the Association of University Technology Managers (AUTM) serves as an excellent example of how to build and maintain such networks. The important lessons learned as AUTM grew and expanded its networks are broadly applicable to building dynamic, productive, and sustainable networks anywhere in the world. Furthermore, since AUTM is an association of individual, rather than institutional or organizational members, it functions all the more as a catalyst for networking. Networking provides two important benefits. First, it facilitates relationships between individuals with varied experience, expertise, and skill sets, encouraging individuals to contribute to each other’s professional expertise. Second, the network itself contributes to the overall quality of group performance. Working through networks, practitioners exchange ideas and experiences to form best practices that become performance standards for individuals and their institutions. Networks thereby contribute to building IP management capacity at both the individual and institutional levels, and this capacity building then feeds back to further support and expand the network. This chapter considers the networking practices established by AUTM. It charts the organization’s growth over a period of 30 years from a small group of U.S. and Canadian patent managers to an association of more than 3,400 members from countries on every continent.¹ As the story of AUTM demonstrates, networks can begin locally and gradually expand to operate on a national, regional, and even international scale. However, as AUTM has shown, the organization itself must begin with—and steadfastly maintain—a clear and focused central mission.

Abstract: Technology transfer does not just happen. Transferring knowledge and innovation from a public research organization to the private sector for commercial application and public benefit requires a formal mechanism—a technology transfer office (TTO)—to protect and license intellectual property. Establishing a new TTO is no trivial matter, and the decision to create one should be made within the context of a long-term plan that takes into consideration the following questions: (1) Does “research commercialization” align with the institution’s mission? (2) Do the quality and quantity of research within the institution warrant the establishment of a TTO? (3) Is the institution willing to make a long-term commitment to required institutional changes and to adequately invest in resources and people? If the answer to all of these questions is yes, then it is time to develop a clear TTO business plan. In this effort, a strong dose of patience will help. An often-quoted rule of thumb in professional circles suggests that even under the very best circumstances, TTOs do not become successful for seven to ten years after they are established. This chapter provides practical advice for creating a proactive TTO and also offers historical examples from around the globe of TTO launches.

Abstract: As a result of the growth in intellectual property (IP) protection, more and more institutions are establishing technology transfer offices (TTOs) to spearhead or support the effective transfer of technology. These offices serve a variety of functions, all of which must be integrated in order to transfer the technology cost effectively and to benefit the institution. One responsibility of a TTO is to provide services: from strategy development to contracts and agreements; from patenting to trademark protection; and from conflict-of-interest analysis to negotiation support. In all of these areas, legal inputs are important, and few offices will have the necessary range of in-house expertise. Gaining access to and developing relationships with attorneys are important elements in any strategy to set up effective TTOs. This chapter provides important information for deciding how to select and work with an attorney (or attorneys) who will provide IP backstopping to the TTO.

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: Technology transfer has an important role to play in the today’s world, where access to know-how and knowledge are valuable economic commodities. A technology transfer office (TTO) can be set up in many different ways. The TTO should be tightly aligned with its supporting institution’s missions and goals. Available external resources will affect the TTO’s strategy and its operational structures, so it is important to consider the TTO’s external environment. Income generation is typically one of the main objectives for the TTO, but technology transfer is valuable also because of its capacity to facilitate innovation and broker the exchange of knowledge for society’s benefit. This chapter discusses the key elements involved in building a TTO—from structure and staffing to external engagement—and how to lay the foundations for success. A number of European models and trends are described to provide greater context.

1. Introduction

There is no “right” way to set up a technology transfer office (TTO), but success does require considering some key issues. This chapter discusses how to establish and run a TTO, and, drawing on experiences from a number of such offices, the chapter provides case studies to illuminate these issues. Emerging trends in funding TTOs are also discussed.

2. Foundations

Any technology transfer office should be aligned with and supported by the institution it serves. The TTO’s mission should be consistent with the institutional mission, and the TTO’s approach and activities should support and add value to the institution. The TTO and the institution should agree upon what adds value, because financial returns alone are an insufficient measure of value for universities viewing their commercial activities strategically and contextually. Long-term returns, such as sustained partnerships, cultural change, job creation, and societal well-being should be part of the value provided by TTOs. These long-term returns supplement shorter-term, more tangible returns such as income, access to resources and expertise, and program delivery. This point has been emphasized by the U.S. technology transfer association, the Association of University Technology Managers (AUTM) and the U.K. association for technology transfer (UNICO¹), which have disseminated data and case studies of how technology and knowledge transfer can benefit society.²

Deciding whether the TTO should undertake pure commercialization or broader knowledge transfer is important for developing an operational strategy. In a knowledge-based economy, access to know-how and use of knowledge (outside of the environment in which the knowledge was gained) is a valuable commodity.³ The U.K. Research Councils define such knowledge transfer as:

Abstract: This chapter reports the results of a recent study of the current state of technology transfer in Chile, including recommendations for the development of a new technology transfer system. Currently in Chile, few commercially viable technologies are transferred from research institutions to the private sector. This means that many universities should review their role and implement innovative ways of contributing to society.

Abstract: Much has been written about the socio-economic benefits and competitive advantage achieved by developed countries as a result of investing in scientific research and technological innovation. For developing and emerging economies, sustainable development is dependent on establishing and supporting R&D institutions that not only perform good science, but also effectively share their knowledge and technology outputs. Both the extent to which a return on an investment is realized from R&D activities and the magnitude of the resulting impact on intended beneficiaries are important to funders, policy-makers, taxpayers, government officials, development agencies, and the research institutions themselves. This chapter provides guidance on building organizational capacity to plan, monitor, evaluate, and assess the impact of R&D investments. It should be noted that the chapter does not address measuring the performance of a Technology Transfer Office to manage intellectual property, but rather focuses on determining the socio-economic impact of transferred knowledge and technology.

Abstract: Agreements and contracts are not just pieces of paper to be signed before money changes hands; they are vitally important documents. If an organization hopes to properly fulfill the terms of its contracts, to say nothing of negotiating future contracts, it must have a system for organizing and managing its contracts. Such a system must make data accessible as well as keep it secure. Resources and tools should be incorporated wherever possible to design and implement a system within the available budget. After it is implemented, the effectiveness of the contract management system should be continuously monitored and evaluated.

Abstract: The establishment of a technology transfer office (TTO) is a complex undertaking, so it is important to decide—before the office is established—about its operational scope, how the office will be funded, how it will be managed, and for what kind of issues the office should develop a policy. This chapter provides basic information that is indispensable for running effective TTOs. The chapter explains what physical and human infrastructures are needed, outlines the responsibilities and powers of TTOs, emphasizes the importance of technology evaluation, and stresses the centrality of good communication and negotiation skills.

Abstract: A technology transfer office must be able to manage enormous amounts of dynamic data. This chapter examines how electronic file systems can meet this need, focusing on the importance of shared communication links and the benefits of using advanced spreadsheet applications developed by the private sector. It considers the relative merits of spreadsheets, flat file databases, and relational databases, and highlights the numerous benefits of a network solution. The chapter explains how to ensure data integrity and manage “analysis paralysis” in such systems, and it offers a self-questionnaire to guide decisions about adopting a software management solution.

Abstract: Technology transfer is a rewarding process for the university, researchers, students, the business community, the public, and the professionals who make it all happen. Technology transfer brings new products, services, and jobs. But it is a complex process, one that requires sustained dedication at every level. This chapter offers advice about some of the most important policy and strategy issues: five are economic issues and five relate to implementation. The chapter concludes with a discussion of technology transfer pitfalls caused by unrealistic expectations. The chapter emphasizes the role of senior management in changing the IP (intellectual property) culture, the need for transparent conflict-of-interest policies, and the importance of sufficient autonomy and infrastructure support for technology transfer officers.

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.

Abstract: