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

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

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

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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

SCIENCE

IP LAW

BUSINESS & INDUSTRYEXPERIENCE

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’

Marcel D. Mongeon+1 (905) 481 0133

[email protected]