Technology Transfer 101 An Overview of the Process

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Presentation transcript:

Technology Transfer 101 An Overview of the Process Heidjer Staecker, J.D., LLM TreMonti Consulting LLC Tel: 703-352-1827 www.tremonticonsulting.com

What is Technology Transfer? Technology transfer is a term used to describe a formal transfer of rights to use and commercialize new discoveries and innovations resulting from scientific research to another party. Universities typically transfer technology through protecting (using patents and copyrights), then licensing new innovations. Bayh-Dole Act – encourages technology transfer Benefits: Leads to new products and services that improve our quality of life. Adds billions of dollars to the U.S. economy Supports hundreds of thousands of jobs. Creates new businesses, industries and markets.

How Do Universities Commercialize Their Technologies? Ways to transfer License Sell Spin Out Give it away Identify potential commercial partners Research Sponsor Contact by Licensee Marketing Attending Industry Events

What are the Stages of Tech Transfer? Research Funding Invention Protection Licensing/ Venturing Evaluation Marketing Monitoring Technology Transfer

What are the Stages of Tech Transfer? Research Funding Invention Protection Licensing/ Venturing Evaluation Marketing Monitoring Technology Transfer

Evaluation Technologies that are disclosed need to be evaluated for commercial potential What is the commercial potential? What problem does the technology solve? How is the technology an improvement over the state of the art? What are the economic issues? Cost of commercialization vs. Economic benefit Economic vs. social benefit Not every disclosure has commercial potential

What are the Stages of Tech Transfer? Research Funding Invention Protection Licensing/ Venturing Evaluation Marketing Monitoring Technology Transfer

Marketing Means of marketing Information provided Existing relationships Direct Marketing Websites Industry Meetings Information provided Confidential v. Non-confidential Why do you need a CDA/NDA?

What are the Stages of Tech Transfer? Research Funding Invention Protection Licensing/ Venturing Evaluation Marketing Monitoring Technology Transfer

Forms of Technology Transfer How can rights be transferred? Sale of IP rights License of IP Rights License of Know-How License agreements are the most common way to transfer rights “Spin Out” Start up company’s still need a license

Overview of Licensing Agreements Contract transferring IP rights to third party Important sections: Grant – What is being transferred? Territory Royalties & Milestones Return of Rights Research Rights Publishing Rights Sponsored Research

What are the Stages of Tech Transfer? Research Funding Invention Protection Licensing/ Venturing Evaluation Marketing Monitoring Technology Transfer

Monitoring Make sure that licensee is complying terms of agreement Make sure that third parties are complying with IP Need strong audit clause