Organizing a Technology Licensing Office (TLO) Jon Sandelin Senior Associate Emeritus

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Presentation transcript:

Organizing a Technology Licensing Office (TLO) Jon Sandelin Senior Associate Emeritus

Methods of Technology Transfer F Graduated Students F Publications F Conferences F Visiting Scholars/Industry Visitor Programs F Industrial Affiliates Programs F Research Sponsorship and Faculty Consulting F Licensing to Established Companies and to Start-Up Companies

Segment 1:Setting a Mission F Transfer of technology for society’s use and benefit F To generate net income F Regional economic development and job creation F To recruit, reward, and retain faculty F To create (new) relationships with Industry F To facilitate formation of Spin-out firms

Inventor’s Role in Tech Transfer F Disclose Inventions F Identify Potential Licensing Prospects F Participate in Patent Preparation and Prosecution F Host Visits by Potential Licensees F Provide input into the licensing strategy F Consultant (optional) to Licensee(s)

Segment 2: Issues for TLOs F Scope of Service Issues F Organizational Issues F Policy Issues F Empowerment Issues

Scope of Service Issues F Invention Evaluation, Patenting, Marketing, and Licensing (Basic Functions) F Advisor and Educator on Intellectual Property F Negotiate/Sign Industry Research Agreements F Negotiate/Sign Material Transfer Agreements F Actively Assist in Start-Up Company Formation

Organizational Issues F Organizational Form –Part of University? –Separate from University (e.g., Foundation)? –Reports to? F Service Model: Legal or Administrative or Marketing F Location F Funding

Policy Issues F Ownership of Intellectual Property –Patents –Copyrights & Trademarks F Incentives to Disclose Inventions –Royalty Sharing; Consulting; Research Funding F Conflict of Interest & Conflict of Commitment –Institutional –Individual

Empowerment Issues F Signature Authority for License Agreements F Review Committee; Is it needed? F Legal Review; When is it needed? F Authority of Licensing Officers/Associates –Evaluation –Patenting –Marketing –Negotiating terms of the License

Segment 3:Tips for TLOs F Simple One Page Disclosure Form F Bet on the Inventor(s) when selecting F Focus on Marketing; Seek the Company Internal Advocate; Referral Important F Think Beyond Patents F Utilize Inventors; Keep Them Informed F Use Plain Language License Agreements

Tips for TLOs (2) F Focus on the Strengths of your University F Seek Coalitions with Other University Groups Interacting with Industry F Link to a High-Level University Office to Resolve Faculty Inventor Disputes F The Relationship You create may bring many benefits to your University

Tips for TLOs (3) F Avoid Lawyers and Committees to the Extent Possible; Empower your People F Publish your Successes F Promote Yourself via Newsletter, Posters, Contests, Presentations, etc.