Running an institutional (usually university) technology transfer office. Presentation given in Bangkok, Thailand as part of an ASEAN-USPTO Program on Technology Transfer - July 1, 2009

2.  Policies and practices
 Education of researchers and
management
 The 4 steps:
› Identify
› Protect
› Improve
› Move out:
 Licence; Spin-off; Additional
sponsored research

3. Source: Berneman, Start UP Business Development, AUTM Annual Meeting 2008 ED9

4.  Ensure basic understanding of trademarks,
copyrights, patents, and trade secrets
 Train scientists/inventors in record keeping,
patent application filing process
 Likely to be first lesson on IP
 Challenges with researchers doing it wrong
› Especially patent searching
4

5.  Lab Notebooks
 TTO providing a guide to lab
notebooks:
› http://www.parteqinnovations.com/pdf-doc/Lab
› Also makes a good
advertisement for office

6.  Academic publication imperative
› Runs contrary to patent rules
 Need to patent before publishing
 Create paradigm:
› Patent, Publish and Profit

7.  Societal good
› Will research results get adopted
without protection?
› How to benefit local and
international populations?
 Recognition
› Career advancement for
researchers
 Money
› Further research money
› Personal rewards

8.  Who owns and manages resulting IP?
 IP from research agreements
 Disclosures
 Initial valuation
 Managing commercialization process
 End-points:
› Licence; Spin-off; or Additional Research
 After end-point administration

9.  Invention Disclosure
› Disclosure Form
 Assessment
› Prior Art Search
 Protection
› Patent, trademark, copyright
http://www.techtransfer.umich.edu/resources/inventors/index.php

10.  Market
› Start-up
› Existing Business
 Licensing
› Contract to use (without relinquishing ownership) for
financial and other benefits
› Inventor’s involvement is critical
 Commercialization
 Revenue
› Incentives to creators/inventors (royalties/distribution,
recognition program)
http://www.techtransfer.umich.edu/resources/inventors/index.php

11.  Patent – most applicable
 Copyright
 Trademark
 Trade Secret
› Most likely inapplicable in
academic environment

12.  Patent Protection
› Conduct cost/benefit analysis
› Determine Patentability
› Choose right patent agent/attorney
› Choose countries to file applications (U.S., PCT
applications, Foreign countries)
› Manage expense-attorney’s fees,
government fees
› Manage patent family
› Pay maintenance fees

13. Protection of Confidentiality
› Non-disclosure agreements (NDAs)
› Employment agreements
Protection of Technology
› Licenses
› Technology transfer agreements
› Material Transfer Agreements
Research Agreements with Industry

14. SCIENCE
IP LAW
BUSINESS & INDUSTRY
EXPERIENCE

15.  Education:
› MSc or PhD
AND
› MBA or JD
 Training:
› AUTM or LES course
› Some additional providers (TTT)

16.  Patent law changes
› Patent Agents on TTO staff?
 Improvements in office practice
 AUTM Annual Meeting is useful
 LES provides good contacts
 Regional activity
› ASTNET?

17. • Direct correlation between TT personnel
and research income
• ~ 2,000 FTE for $50 B
–  $25 Million Research per TT FTE
• Compare your own research size
– 2004 HERD Data for Thailand  $150 M
• Challenge for smaller countries:
– How to obtain ‘critical mass’ of TT expertise
– Solution in S Africa: Central facility

18. • 1G:
– Lots of patent applications
– Not many licensees
– Financial hardship
• 2G:
– Much more analysis before deciding to file
– Applications are highly targeted
– Start-up Company creation attempted
• 3G:
– Science portfolios explored with patent back-up
– Creation of industry-directed research groups
– Use of IP for ‘public good’

19. Marcel D. Mongeon
+1 (905) 481 0133
marcel@mongeonconsulting.com