Tech Transfer
Table of Contents
Tech Transfer - Productizing your pilot innovation
Scott Camholtz, a physician, PhD, and former U.S. Patent and Trademark Office (USPTO) patent judge, provides insights in this video on counseling early inventors at universities or academic institutions. He describes some of the issues involved in the process of protecting intellectual property (IP) generated by university researchers and the role of technology transfer offices in this process.
Inventors have the most leverage in negotiating with the university during the early phase when out-licensing the initial technology. At this stage, the direction of the technology is not yet defined, and the university’s costs are relatively low. As the technology progresses and patent costs increase, especially when filing in multiple countries, the negotiations become more complex and involve larger price tags. Inventors need good patent counsel to help them think through the process and match their goals to their resources, particularly in highly active and noisy environments like AI and machine learning.
To protect their IP, university researchers should follow their institution’s invention disclosure policy and fill out the required forms to notify the intellectual property community at their institution. The technology transfer office will then evaluate the invention’s market potential and decide whether to pursue the technology. While the tech transfer office is primarily interested in recovering their initial outlay for patent applications and preserving the investigator’s right to publish their work, they may grant exclusive access to a company for a specific field of use in exchange for higher fees. Inventors should coordinate with the tech transfer office to ensure proper timing of publications and patent filings to preserve the rights in the IP.