Running A TT Office – Best Practices
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Transcript of Running A TT Office – Best Practices
Policies and practices Education of researchers and
management The 4 steps:› Identify› Protect› Improve› Move out:
Licence; Spin-off; Additional sponsored research
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
Lab Notebooks TTO providing a guide to lab
notebooks:› http://www.parteqinnovations.com/pdf-doc/LabNotes_Poster_000.pdf
› Also makes a good
advertisement for office
Academic publication imperative› Runs contrary to patent rules
Need to patent before publishing Create paradigm:› Patent, Publish and Profit
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
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
Invention Disclosure› Disclosure Form
Assessment › Prior Art Search
Protection› Patent, trademark, copyright
http://www.techtransfer.umich.edu/resources/inventors/index.php
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
Patent – most applicable Copyright Trademark Trade Secret› Most likely inapplicable in
academic environment
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
Protection of Confidentiality› Non-disclosure agreements (NDAs)› Employment agreements
Protection of Technology› Licenses› Technology transfer agreements› Material Transfer Agreements
Research Agreements with Industry
Education:› MSc or PhD
AND
› MBA or JD Training:› AUTM or LES course› Some additional providers (TTT)
Patent law changes› Patent Agents on TTO staff?
Improvements in office practice AUTM Annual Meeting is useful LES provides good contacts Regional activity› ASTNET?
• 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
• 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’