Your innovation, intellectual property (IP) and technology transfers

“Technology transfer” describes a formal transfer of rights from scientific research to another party in order to use and commercialize new discoveries and innovations resulting from that research. The rights may be intellectual property (IP) in the form of patents, copyright, or other forms of IP, depending on the product of the research. This process includes:

  • Funded research
  • Invention disclosure
  • Patents
  • Licensing
  • New startup ventures

Upfront fees, milestone payments and licensing royalties make up most of the returns from technology transfer, but can also be in the form of sponsored research, one-off fees, and equity in the new venture.

Most academic and research institutions have formal technology transfer policies. You should understand the requirements of your institution to determine if you must disclose your invention to the institution or if you can independently commercialize your discovery. If you are related to an institution, check their specific policy.

ACCT Canada (Alliance for Commercialization of Canadian Technologies) is a useful resource on this topic.

Technology transfer offices provide an interface between industry and the institution. In order to liaise effectively with the technology transfer officer, it is important to understand what their function is, how they can help you commercialize your invention or innovation, what they will expect from you as part of the process, and what comprises their success criteria.

Commercializing your innovation: The technology transfer process

The figure below details the role of the technology transfer office at the various stages of development of an innovation as the office goes through the process of selling the raw material (your innovation) and packaging it so that it becomes commercially viable.

In general, the technology transfer process has four phases:

  1. The tech transfer office has a relationship with faculty and researchers and monitors their ongoing research. The tech transfer office may also provide some links to commercial partners to fund ongoing research.
  2. Once the researcher files an invention disclosure with the institution in accordance with the intellectual property policy, the technology transfer office evaluates the strength of the opportunity from an intellectual property and commercial perspective. If there is support for the innovation’s potential, the tech transfer office will pursue a patent application.
  3. Once a patent application is filed, the tech transfer group will begin to actively pursue commercial partners for potential license agreements or other forms of alliances.
  4. Fee, royalties or milestone payments emerging from the successful commercialization of innovations from an institution constitute financial returns for the technology transfer office.While the goal of many tech transfer offices is to become financially self-sufficient, institutions look at a number of other metrics or benefits of their work in addition to revenue generation. These include the:
    • Societal benefit of the technology
    • Enhancement of the institution’s reputation by the success of researchers
    • Success of the tech transfer office as a service for faculty (as measured by the rate of growth in invention disclosures).

    There are some institutions that make no claim to revenues from IP developed in their institutions and instead hope that successful entrepreneurs will ultimately make donations to back to the university that supported them. The approach to tech transfer is unique to institutions and is often based on their values and long-term institutional goals.

What you should know when engaging with your technology transfer office

Keep the following in mind when engaging with your technology transfer office:

  • Understand your institution’s intellectual property policy as well as your obligations.
  • Ensure that you disclose your invention at the appropriate time.
  • Make sure to protect your IP by not disclosing it publicly without a non-disclosure agreement (NDA) until provisional patents have been filed. This means no publications in journals or posters at conferences.
  • Remember that the technology transfer office is your partner in developing a commercialization plan for your innovation. They form a great resource—they can be your link to commercial partners and can help you assess, based on their contacts with industry partners, whether or not the innovation is commercially viable.

Useful links

References

Seget, Steven. (2008). Technology Transfer Strategies: Maximizing the returns from new technologies. Business Insights Ltd. Available from http://reutersbusinessinsight.com/report.asp?id=rbhc0217.
Association of University Technology Managers. Retrieved April 19, 2009 from www.autm.net.