Technology transfer encompasses a broad range of activities but, in a third level education context, most typically refers to the commercialisation (whether at the instance of the educational institution concerned or in response to industry demand) of research developed within the institution.
That commercialisation most often happens either by way of licence (where the institution licences the technology to an existing business in exchange for royalties and other payments) or spinout (where a start-up company is established to advance the research and/or bring it to market).
All of the main Irish universities (eg UCD, TCD, DCU, UCC, UL, Galway, Maynooth), institutes of technology (eg DIT, WIT) and a few others (such as the Royal College of Surgeons in Ireland) have well-established and focussed technology transfer offices (TTOs). This article considers four current issues that are relevant to those organisations.
In addition to a highly developed commercialisation skillset, most TTOs have a keen understanding of risk management. With that in mind, many have been set up as separate and autonomous limited liability companies within the overall structure of the educational institution of which they form part. However, even in such circumstances the need for institutions to have appropriate control over their TTOs means that the liability of the TTO and the institution can easily become intertwined.
We have extensive experience of examining and reporting on governance procedures for clients. Where institutions or TTOs perceive that particular risks may exist, an added advantage of a legal investigation is that it may be covered by legal professional privilege and therefore benefit from disclosure exemptions under FOI, data protection and other legislation. In addition we regularly advise on best practice in the area of corporate and contractual governance.
The importance of documentation
Time and time again the importance of clear, accurate documentation is shown. Cases such as Cyprotex Discovery v. University of Sheffield show that there are real and significant costs (in terms of management time and delayed market access) when technology transfer projects go bad.
Even when institutions prevail in ensuing litigation (or litigation is avoided by means of a compromise settlement), the relatively low upfront costs of failing to ensure that contractual frameworks are well drafted, clear and complete are outweighed...