1. Dr. Ashley J. Stevens President, Focus IP Group, LLC
WIPO’s Enabling Intellectual Property Environment Project Topic 4: Key Functions of a Tech Transfer Office Tehran, Iran December 9-10, 2017
Dr. Ashley J. Stevens
President, Focus IP Group, LLC

2. The Functions of a Tech Transfer Office
WIPO EIE Project -- Tehran
The Functions of a Tech Transfer Office
External
In the community
Internal
Within the Institution
Inside the TTO

3. WIPO EIE Project -- Tehran
External Role
The TTO is the university’s bridge to the commercial world
A connection between two very different cultures
Will need to interpret each to the other
Should spend some time outside the institution
Industry forums
Policy forums
Buidling networks

4. External / Internal Role
WIPO EIE Project -- Tehran
External / Internal Role
Should have a travel budget
Attend tech transfer meetings to establish connections and understand what others are doing
AUTM Annual Meeting
AUTM Asia
ASTP
Attend industry forums
E.g., BIO

5. WIPO EIE Project -- Tehran
Internal Role
Tech transfer must become the “go to” place for all IP matters
Source for all types of IP agreements
The educational resource for IP
Expert on Iranian IP laws and regulations
Familiarity with global IP laws and policies
WIPO
National IP offices
Familiar with global tech transfer practices
Developed economies
Emerging economies

6. WIPO EIE Project -- Tehran
Internal Role
Tech transfer must seek every opportunity to educate and proselytize the benefits of Tech Transfer
Senior management
VC / President
Trustees?
Colleges
Deans
Faculty
Important to capture and publicize every success
Early successes will be relatively minor
Patent issuances
Collaborative research agreements with companies
Start-up company formation

7. Tech Transfer Office Operations
WIPO EIE Project -- Tehran
Tech Transfer Office Operations
Broadly distinguish:
Management / Licensing
Support
In U.S., roughly 1:1
Reality is likely to be that initial TTO is one person plus psrt time support!

8. Licensing Role of licensing personnel is to complement faculty
WIPO EIE Project -- Tehran
Licensing
Role of licensing personnel is to complement faculty
Not to compete
Defer to faculty on technical issues
Help faculty think through the applications of the technology
Licensing people must be an inch deep and a mile wide
Have to deal with a vast range of technologies
Broad areas of division:
Life sciences
Physical sciences IT

9. Licensing Two philosophies
WIPO EIE Project -- Tehran
Licensing
Two philosophies
Cradle-to-grave
Same individual manages from disclosure through licensing
Sometimes including post license administration
Specialization
Evaluation group
Marketing group
Transaction group
Post-agreement management group
Reality is that in early days, likely to be a single person with part time support person

10. Support Records Management Financial Management
WIPO EIE Project -- Tehran
Support
Records Management
Financial Management

11. Napoleon Bonaparte and / or Frederick the Great
WIPO EIE Project -- Tehran
Databases
“An army marches on its stomach”
Napoleon Bonaparte and / or Frederick the Great

12. Databases “A technology transfer office marches on its paperwork”
WIPO EIE Project -- Tehran
Databases
“A technology transfer office marches on its paperwork”
Ashley Stevens

13. Technology Transfer Operations
WIPO EIE Project -- Tehran
Technology Transfer Operations
Technology transfer is a business of many, many details
Invention disclosures
Interactions with faculty
Interactions with co-owners
Evaluations
Patent applications
Patent prosecutions
Foreign patent applications and prosecutions
Marketing
License negotiations
License administration
We drown in paper
Good record keeping is key
There are systems to help

14. Deadlines There are important deadlines all the time
WIPO EIE Project -- Tehran
Deadlines
There are important deadlines all the time
Patent filing deadlines
Some are irreversible
E.g., One year deadline to convert U.S. provisional application to utiity
One year deadline to file foreign counterparts
30 month deadline to enter National Phase
Some trigger cost increases
Responses to office actions
Paying maintenance fees

15. Deadlines There are important deadlines all the time Option deadlines
WIPO EIE Project -- Tehran
Deadlines
There are important deadlines all the time
Option deadlines
Exercise of Option
License deadlines
Payment due dates
Licensees must stay current on payments
I never failed to collect money that was owed DFCI or BU
Knew when it was due
Continuously pursued
Due diligence deadlines
May need to start process to terminate license

16. Record Keeping Good management of paper records is important
WIPO EIE Project -- Tehran
Record Keeping
Good management of paper records is important
Negotiating histories
Signature originals of agreements
Originals of issued patents
Fireproof safes for signature originals
Two/three-hole punch files for negotiating histories and prosecution histories
Preserve chronological order

17. WIPO EIE Project -- Tehran
Record Keeping
Good management of electronic records is equally important
Develop a systematic numbering scheme so that records sort in the right order automatically
Label versions by date and author
U of XXX
Commercial database systems available show “at a glance” status
Use one
Don’t try to develop your own!

18. WIPO EIE Project -- Tehran
Financial Management
Technology Transfer is a business of many, many financial transactions
Patent expenses
Need to be tracked by case
So that licensees can reimburse
To budget accurately
License Income
Also need to be tracked by case
Distribution will be specific to each case
Recovery of unreimbursed expenses
Inventors
Other institutions
Departments within the institution

19. Commercial Systems Inteum Knowledge Sharing Systems Wellspring
WIPO EIE Project -- Tehran
Commercial Systems
Inteum
Knowledge Sharing Systems
Wellspring

20. Oldest OTL database system
WIPO EIE Project -- Tehran
Oldest OTL database system
Originally developed by the Washington Research Foundation
Spun off in 1993
Market leader

21. TechTracS Developed for NASA www.knowledgesharing.com/
WIPO EIE Project -- Tehran
TechTracS
Developed for NASA

22. Wellspring New kid on the block Sophia www.wellspring.com/
WIPO EIE Project -- Tehran
Wellspring
New kid on the block
Sophia
Bought Flintbox
Developed by U. of British Columbia OTL
Technology marketing service
“Shrink wrap” software license transactions
Manages the AUTM GTP

23. Other Tools and Resources
WIPO EIE Project -- Tehran
Other Tools and Resources
Market research
Frost & Sullivan
World’s leading multi-client study market research firm
Offer good deals for universities
$10,000/year minimum
$5,000/year for each additional module
BU’s OTD bought healthcare plus chemicals/materials
School of Management bought a comprehensive package

24. WIPO EIE Project -- Tehran

25. Other Tools and Resources
WIPO EIE Project -- Tehran
Other Tools and Resources
Market research
Thompson-Reuters
World’s biggest business “raw” data provider
Thomson One is a great market research resource
Collects analysts reports
BU’s School of Management has a subscription
Foresight Science and Technology T2+2
Summaries of studies done by Foresight
$5,000
Schools of Management and Economics have many valuable business resources

26. Other Tools and Resources
WIPO EIE Project -- Tehran
Other Tools and Resources
Deal Terms
Covered in Valuation talk
Databases are expensive
ReCap $7,500/year
LES Surveys very helpful
$300 annual membership

27. Other Tools and Resources
WIPO EIE Project -- Tehran
Other Tools and Resources
Customer Relationship Management
Many institutions use Salesforce.com
Inteum includes a CRM module

28. Questions? astevens@bu.edu
WIPO EIE Project -- Tehran
Questions?