The Technology Transfer Office (TTO) is the gatekeeper to the market for inventions fresh from the research labs. You hold the key to bringing this technology to market and benefiting organizations, communities, and the public.
Despite playing such an integral role, many TTOs struggle to demonstrate the value of their function and why sound IP management is so important to their organizations. However, implementing some basic practices may help change that stance.
Design Intellectual Property Policy
Intellectual property policy is essentially an institutional policy that governs the way intellectual property is managed to avoid problems commonly encountered in third-party collaboration and research commercialization. They are becoming increasingly important due to the collaborative nature of today’s innovations.
At a basic level, an IP policy sets out an organization’s goals and positions with regard to IP ownership, protection, and commercialization. This is a public document that provides third parties with the opportunity to review the organization’s intellectual property terms before entering into any agreement. Since intellectual property ownership can be disputed, any collaborative R&D your organization sponsors or participates in must be governed by an agreement that clearly defines the status of intellectual property in compliance with the policy. Letting potential partners know where you stand from the start can help reduce difficult ownership conversations later on.
An IP policy can also serve as an IP guide for employees, helping to attract researchers to your organization. It sets out IP management processes and incentives for researchers to participate in technology transfer (eg, royalties). In addition, this policy should help ensure that intellectual property is kept confidential and that employees are not allowed to engage in any third-party intellectual property discussions without TTO approval.
Develop solid IP management practices
To ensure that intellectual property is properly managed, you should consider establishing procedures to ensure that any new inventions (including improvements) are confidentially disclosed to the TTO for evaluation at an early stage. In general, an invention needs to have clear ownership, be controllable (e.g., through intellectual property or contract), be commercially viable, and be strategically important for the organization to incentivize investment in intellectual property protection and commercialization. Make sure to run all inventions through the same analysis to maintain objectivity and give each invention a fair chance. This should help determine which inventions are most likely to be successfully commercialized.
Intellectual property is traded through legal agreements, so without solid regulations, valuable intellectual property can be lost. Ensure that all agreements involving intellectual property are reviewed to ensure they are consistent with intellectual property policy. This includes employment agreements, nondisclosure agreements, collaboration or funding agreements, consulting agreements and commercial agreements.
Technologies with software components may involve some open source software. Investigate early on any rights or restrictions imposed by the underlying open source license, as these may affect your ability to patent or commercialize these inventions.
Finally, don’t ignore other types of intellectual property protection (for example, trade secrets or designs), especially if patents are not a viable option or you don’t want to disclose the technology.
Invest in IP Analysis
A great technology without a market has little chance of commercial success. Investing in IP analysis allows you to identify these technologies early. This may be expensive and impractical for each invention disclosure, but consider establishing a quick and low-cost technology market screening process. This helps filter out technologies with low commercial potential. Some TTOs offer internships or are linked to MBA programs, offering students internships to work in intellectual property analysis and business planning.
Consider investing in a competitive IP environment in key technology areas. This can help identify patent holders in the field and map potential areas for new intellectual property. It can also reveal proprietary intellectual property that you may need to license or invent to avoid the risk of patent litigation. Analytical technology market reports can also reveal at an early stage any regulatory or other hurdles that may hinder commercialization.
Patent portfolio management is an active process
Prosecuting and maintaining a patent portfolio can be a long and expensive process. Strategic portfolio management is critical to minimizing patent fees and maximizing your return on investment. Regular portfolio reviews help identify low-value IP (weak, non-strategic, non-commercial) and enable IP managers to reallocate their resources to IP with the greatest potential for successful commercialization.
Discuss with your patent attorney how to use the patent office process to delay filing costs or decisions (useful for early-stage inventions with unclear market opportunities) or to expedite the examination of inventions in fast-moving fields of technology.
Use KPIs as communication tools
Most IP managers have difficulty justifying their budgets or communicating the value of their portfolios and their functions to management. Bringing a technology to market can take years and cost hundreds of thousands of dollars. During this time, you must demonstrate positive steps to these commercialization milestones, and key performance indicators (KPIs) are a useful way to achieve this.
KPIs can be used to measure the quality and quantity of patent filings, map your organization’s intellectual property to competitors, measure the ratio of intellectual property filings to licensing revenue, or patent versus generic products, or other data points. Consider developing a set of KPIs that your management considers important, as these can help you get the support you need to carry out your mission.
Connect with your researchers
Regular interaction with researchers in your organization is critical. The researchers have all the technical knowledge, and without them, the chances of successfully commercializing the technology are greatly reduced. They may also have views on the technology’s commercial applications and key industry contacts. Regular meetings can help you understand their work and give you the opportunity to support them (for example, through IP analysis) and familiarize them with the process.
To increase their participation in technology transfer, consider designing an incentive program that rewards creativity and innovation, for example, by awarding awards for granted patent applications or intellectual property licenses.
Participate in your local innovation ecosystem
Market-pull technologies are more likely to attract industry interest. Since the industry is your customer, you need to make sure your product is a good fit for your customer. Make sure to stay connected by attending industry conferences and events and viewing trends reported by the industry.
Most inventions need to be developed and tested before potential licensees are interested. The establishment of technology maturation funds is critical to advancing these technologies to licensable status. Alternatively, if internal funding is limited, consider reaching out to your local innovation ecosystem (i.e. incubator, accelerator program or industry) to invest.