Running A TT Office – Best Practices
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The document outlines strategies for managing intellectual property (IP) in research environments, emphasizing education for researchers on trademarks, patents, and commercialization processes. It stresses the importance of patenting before publication to protect research results and encourages the creation of a supportive framework for researchers, including training and resources for IP management. Additionally, it highlights the need for commercialization tactics such as licensing and the significance of recognizing inventors' contributions for career advancement and funding opportunities.
Running A TT Office – Best Practices
- 2. Policies and practices Education of researchers and management The 4 steps: › Identify › Protect › Improve › Move out: Licence; Spin-off; Additional sponsored research
- 3. Source: Berneman, Start UP Business Development, AUTM Annual Meeting 2008 ED9
- 4. 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
- 5. Lab Notebooks TTO providing a guide to lab notebooks: › http://www.parteqinnovations.com/pdf-doc/Lab › Also makes a good advertisement for office
- 6. Academic publication imperative › Runs contrary to patent rules Need to patent before publishing Create paradigm: › Patent, Publish and Profit
- 7. 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
- 8. 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
- 9. Invention Disclosure › Disclosure Form Assessment › Prior Art Search Protection › Patent, trademark, copyright http://www.techtransfer.umich.edu/resources/inventors/index.php
- 10. 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
- 11. Patent – most applicable Copyright Trademark Trade Secret › Most likely inapplicable in academic environment
- 12. 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
- 13. Protection of Confidentiality › Non-disclosure agreements (NDAs) › Employment agreements Protection of Technology › Licenses › Technology transfer agreements › Material Transfer Agreements Research Agreements with Industry
- 14. SCIENCE IP LAW BUSINESS & INDUSTRY EXPERIENCE
- 15. Education: › MSc or PhD AND › MBA or JD Training: › AUTM or LES course › Some additional providers (TTT)
- 16. Patent law changes › Patent Agents on TTO staff? Improvements in office practice AUTM Annual Meeting is useful LES provides good contacts Regional activity › ASTNET?
- 17. • 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
- 18. • 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’
- 19. Marcel D. Mongeon +1 (905) 481 0133 marcel@mongeonconsulting.com