The key to success: Technology transfer tips for university and research IP managers

8 minute read
15 November 2022

This article was originally published on IAM Media.

For an invention fresh out of the research lab, the technology transfer office (TTO) is the gatekeeper to the market. You hold the key for that technology to enter the market and generate a benefit for the organisation, the community and the general public.

Despite having such an integral role, many TTOs struggle to demonstrate the value of their function and why solid IP management is so important for their organisation. However, implementing some essential practices may help to change that position.

Design an IP policy

IP policies are essentially institutional policies that govern how intellectual property is managed to avoid issues typically encountered during third-party collaborations and commercialisation of research. They are becoming increasingly more important because of the collaborative nature of innovation today.

At a basic level, an IP policy sets out the organisation's goals and position with respect to ownership, protection and commercialisation of intellectual property. It is a public document that provides third parties with an opportunity to review the organisation's IP terms before entering into any agreements. Since IP ownership can be contentious, it is crucial that any collaborative R&D that your organisation funds or participates in is governed by agreements clearly setting out the IP position in line with the policy. Making potential partners aware of your position at the outset can help to reduce difficult ownership conversations later.

An IP policy also serves as an IP guide for employees and can help attract researchers to your organisation. It sets out the IP management process and the incentives for researchers to participate in tech transfer (eg, royalties). Additionally, the policy should help to ensure that intellectual property remains confidential and employees do not enter into any third-party IP discussions without seeking approval from the TTO.

Develop solid IP management practices

To ensure that intellectual property is managed properly, you should consider instituting particular procedures that ensure any new inventions (including improvements) are confidentially disclosed to the TTO early on for evaluation. Generally speaking, an invention needs to have clear ownership rights, be controllable (eg, through IP rights or contracts), be commercially viable, and be strategically important to the organisation to incentivise investment in IP protection and commercialisation. Make sure to run all inventions through the same analysis to maintain objectivity and give each invention a fair chance. This should help to determine which inventions have the greatest likelihood for successful commercialisation.

Intellectual property is transacted through legal agreements so without solid provisions in place, valuable IP rights can be lost. Ensure that all agreements involving intellectual property are reviewed for consistency with the IP policy. This includes employment agreements, non-disclosure agreements, collaboration or funding agreements, consulting agreements and commercial agreements.

Technologies with a software component are likely to involve some open-source software. Investigate any rights or restrictions imposed by the underlying open-source licences early, as these can affect your ability to patent or commercialise those inventions.

And finally, do not overlook other types of IP protection (eg, trade secrets or designs), especially where patenting is not a viable option or where you do not wish to make the technology public.

Invest in IP analytics

A great technology with no market will have low chance of commercial success. Investing in IP analytics can enable you to identify those technologies early. It can be expensive and impractical for every invention disclosure but consider instituting a quick and low-cost technology market screening process. This can help to filter out technologies with low commercial potential. Some TTOs offer internships or connect with MBA programmes to offer student placements to work on IP analytics and business plans.

Consider investing in a competitive IP landscape for key tech areas. This can help identify patent holders in that space and map the potential areas for new intellectual property. It can also reveal proprietary intellectual property you might need to licence or invent around to avoid the risk of patent litigation. Analysing technology market reports can also reveal early on any regulatory or other barriers that may impede commercialisation.

Patent portfolio management is an active process

Prosecuting and maintaining a patent portfolio can be a lengthy and expensive process. Strategic portfolio management is crucial for minimising patent expenses and maximising your return on investment. Regular portfolio reviews help to identify low-value intellectual property (weak, non-strategic, non-commercial) and enable IP managers to reallocate their resources to intellectual property with the greatest potential for successful commercialisation.

Speak to your patent attorney on how to take advantage of procedures at the patent offices, which allow you to delay filing costs or decisions (useful for early-stage inventions with an unclear market opportunity) or speed up examination for inventions in rapidly evolving tech areas.

Use KPIs as communication tools

Most IP managers have difficulty justifying their budgets or communicating the value of their portfolio and their function to management. Bringing a technology to market can take years and cost hundreds of thousands of dollars. In the interim, you must show positive steps towards those commercialisation milestones and key performance indicators (KPIs) are a useful way to do this.

KPIs can be used to measure the quality and volume of patent filings, map your organisation's intellectual property to competitors, measure the ratio of IP filings to licensing revenue, or patented products versus non-patented products, or other data points. Consider developing a set of KPIs that your management will consider important as these can help you get the support you need to deliver on your mission.

Connect with your researchers

It is critical that you engage regularly with researchers at your organisation. Researchers hold all the technical knowledge and without them, the likelihood of successfully commercialising a technology drops significantly. They may also have views on the commercial applications of the technology and key industry contacts. Regular meetings can help you find out what they are working on and be an opportunity for you to support them (eg, through IP analytics) and familiarise them with the process.

To increase their participation in tech transfer, consider designing an incentives programme that rewards creativity and innovation, for example, presenting awards for patent applications granted or IP licenced.

Engage your local innovation ecosystem

Market-pull technologies are more likely to have interest from industry. Since industry are your customers, you will want to ensure your product is a good fit for your customer. Make sure to stay connected by attending industry conferences and events and reviewing industry reports for trends.

Most inventions require development and testing before a potential licensee will be interested. Setting up a technology maturation fund is crucial to advance these technologies to a licensable state. Alternatively, if internal funding is limited, consider linking with your local innovation ecosystem (ie, incubators, accelerator programmes or industry) for investment.

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