Current Issues: Technology Transfer Offices

Author:Mr Peppe Santoro
Profession:Eversheds O'Donnell Sweeney
 
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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 a spinout (where a start-up company is established to advance the research and/or bring it to market).

All of the main Irish universities (UCD, TCD, DCU, UCC, UL, Galway, Maynooth), institutes of technology 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.

Managing Risk

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. Even in these circumstances, the need for institutions to have control over them TTOs means the liability of the TTO and the institution can easily become intertwined.

Establishing reporting and governance procedures is important. 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 can advise on best corporate governance practice.

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.

The relatively low upfront costs of ensuring that the contractual frameworks for a TTO is well drafted, clear and complete are outweighed by the costs of a simple failure. Failing to document agreements from an early stage more often than not turns out to be a false economy.

Joint ownership of intellectual property

Our experience has shown that joint ownership of intellectual property rights is usually problematic....

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