Technology Transfer Offices are sometimes mistakenly viewed as a hindrance when it comes to translating science from the lab to the community. Therefore, it is important to us at UR OTT that all of you are aware of what we do, and plan to do — now and into the future. A licensing associate’s position involves many responsibilities and demands a strong understanding of several disciplines such as business operation and acceleration, academic research, U.S. and international patent law, governmental regulations, manufacturing, engineering, and science. Licensing associates monitor numerous portfolios that contain explicit requirements, all tailored in specific ways, to meet the demands of different technologies. No two technologies demand the same things, and as new tasks arise we must adapt, causing our daily routines to change as we take on the challenges that face us. It’s our job to work closely with our research community, so it’s important we’re well versed on a wide range of scientific and commercial topics.
Our routines consist of many different tasks, with priorities changing every day:
We address and respond to correspondence from a variety of sources in an effort to maintain relationships and market University technologies.
- Examples include government agencies, individuals, companies, universities, etc.
We handle the evaluation of invention disclosures submitted to our office. It is our duty to review and assess each disclosure and ultimately make a decision on the patentability of the technology.
- We evaluate each technology based on specific criteria; we assess technologies on their scientific, legal, and business merits.
- Scientific: What stage of development are you in?
- Legal: What form of IP protection is needed?
- Business: What problem are you trying to solve? What is the addressable market? What is the product? Is it faster, better, or cheaper than existing solutions?
We partake in a number of patent application and prosecution activities.
- We must work closely with both the patent agent responsible for the case and the inventor(s) involved with the technology to ensure the process advances smoothly, efficiently, and economically. We strongly encourage this teamwork to affirm that responses to the patent office are prepared and filed before specific deadlines, as well as to monitor decisions surrounding patent renewal and the payment of maintenance fees.
- When necessary, we are responsible for making swift decisions concerning patent proceedings. These types of decisions are typically made on the spot, with or without a strong understanding of the invention’s market potential and/or commercial range.
- Situations where this approach is necessary – an application researcher is about to make a public disclosure prior to a patent filing, or when the “first-to-file” system is launched, which will, in some cases, initiate a race to the patent office to file before a competitor.
We are heavily involved in the marketing of available technologies.
- We use a wide range of resources to assure technologies reach all areas of industry.
- Traditional marketing tools used include non-confidential summaries, identifying leads (direct direct mail/email, cold calls, networking), conferences and partnering events, websites (our OTT homepage), brochures, hosting events, etc.
- Non-traditional marketing tools used include social media (Facebook, Twitter, Blog, and Linked-In), technology portals (iBridge), press releases/media, etc.
It is our job to identify potential commercial partners and address business opportunities promptly. Once we’ve identified potential licensees, we will initiate contact and provide non-confidential summaries of technologies to interested parties.
- If continued interest is expressed, we will execute a confidential disclosure agreement, which allows a company to take a closer look at an invention while protecting the privacy of the research.
- If a real interest in the technology is communicated, negotiation of a license begins.
- A number of agreements exist to meet the specific demands of individual licensees (option agreements, license agreements, start-up agreements, etc.)
- These license negotiations typically involve numerous twists and turns to accommodate the market dynamics of a certain industry sector and/or to accommodate the specific needs of the commercial partner, the university, or the inventor.
- We are accountable for negotiating agreements between academia and industry. It is our responsibility to keep our researchers involved in all on-going consults surrounding their portfolios.
- No two license negotiations are ever the same. Flexibility and creativity are required to achieve agreement between parties. In this environment broad technical knowledge and responsiveness are critical to identifying, protecting, and commercializing a host of technologies from a range of disciplines.
Once a technology is licensed it’s our job to watch over the commercialization and development of the invention to ensure the product is being advanced in accordance to the terms of the license.
All-in-all, our days prove to be very unpredictable – an inventor may call looking for advice, an email may arrive inquiring about a licensing opportunity, senior administration may come looking for an update on how the university’s licensing activities are progressing, or a faculty inventor may inquire about starting up a new business based on a technology developed at the university. Whatever the case may be, it is vital that all of us continue to work together, each role is just as important as the last and without one another we would fall apart. We rely on the active participation of individuals from all corners of the community, both internally and externally, to continue to move science and technology forward.