Innovate & Win Together: Unlocking the Power of Intellectual Property in Technology Transfer

8 minutes

Table of Contents

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Andrew Rapacke is a registered patent attorney and serves as Managing Partner at The Rapacke Law Group, a full service intellectual property law firm.
Technology Transfer

What is technology transfer?

Technology transfer is the shifting of skills, capital, knowledge, and value of innovation from the point of conception to actual reduction and implementation. Tech transfer provides utility in the context of intellectual exchange and innovation, empowering those on the receiving end to advance or use the newly acquired knowledge.

Technology transfer is essential for supporting the tech life cycle, starting at the initial point of creation to bringing the product to market. Technology transfer is when technology or tech processes are transferred from a government, a creator, or a business to a separate entity during technology transfer. In some cases, nations may transfer technology between each other. Tech can also be transferred from the public to private realms or between two private parties. The tech in question consists of intellectual property (IP) that holds value.

Technology transfer is a collaborative process in which IP transitions from innovators to the public and private realms. The transfer process ensures that the IP, supporting knowledge, and scientific findings reach their intended destinations for the greater good. Technology transfer aims to turn scientific advances and creative endeavors into value offerings for collective benefit.

Successful tech transfer requires collaboration and reciprocity between innovators, creators, scientists, and academicians to make significant advancements within a network of institutions. The phases of technology transfer are preparation, implementation, and use. The progression of technology transfers through each phase is shaped by a litany of factors, including the surrounding environment, organizational components, and additional technology.

The role of intellectual property (IP) in technology transfer

Often, the purpose of technology transfer between companies is to sell or license processes or products to one another. The tech is created by one business yet marketed to a separate entity. As discussed, technology transfer usually takes place between large, sophisticated entities such as corporations and universities.

When considering technology transfers, it is important to understand what is being sold, licensed, or transferred. Without IP protection, opulent entities such as Google can create the technology themselves. However, with protections in place, Google must obtain the rights to use the desired technology through a proper technology transfer from the rightful owner. The most notable forms of IP protection are patents, trademarks, and copyrights. Obtaining legal protection for innovations will afford the owner the exclusive right to create, transfer, and profit from the innovations. Thus, technology transfer can also be described as an IP transfer, as the receiving party obtains a right to create, use, or sell the shared technology.

The benefits of technology transfer

The technology transfer process mutually benefits both groups to the exchange. The creator benefits from the sale of the tech and its utilization in the public or private realms. Nations enjoy the benefits of such tech advancements, ultimately advancing the collective interest of taxpayers. In private markets, businesses benefit from tech transfers as they obtain intellectual property without investing the time, money, and effort to develop such tech on their own.

Technology transfer has served as a significant boon for developing nations. Africa, the poorest continent, has achieved the highest growth rate of any continent by capitalizing on technology transfer opportunities. The transfer and utilization of tech enhances local economies, public infrastructure, and ultimately advances the human condition.

The importance of technology transfer

There is a common misconception that publishing research ensures others in academia, the private sector, or governments will take note of the discovery and implement or advance it through financing. Though such a scenario is possible, it is not guaranteed.

Often, technology transfer is necessary to ensure the concept in question is properly developed and converted into a tangible product for practical use by consumers, governments, or other businesses. The development of technology occurs through collaboration. In this context, “collaboration” is characterized by initial research, development, trials, and eventual implementation in the market.

The aim of technology transfer is to develop intellectual property at the early stage into:

  • Tools that the research community can use in a practical manner
  • Tools that serve as the basis for additional product creation
  • Platforms or services that lead to product generation for the greater good

Collaboration typically results in mutually beneficial sponsored research or licensing opportunities. Tech transfers also guarantee that the university’s rights and interests are protected. Universities retain IP rights of the tech for which they can issue licenses to collect on its economic value and use it to supplement and advance their research.

The types of technology transfer (methods of technology transfer)

Technology can be transferred vertically or horizontally. Vertical technology transfer is moving technology through stages of conception to commercialization, with research and development in between. Horizontal technology transfer is when the technology, or IP, is transferred between entities, such as through assignment or licensing.

The World Intellectual Property Organization (WIPO) outlines the most common types of technology transfer agreements. These include licensing agreements, assignment of intellectual property rights, confidentiality agreements, and other work-for-hire type agreements where the entity who wishes to own the rights to the technology will commission a consultant or researcher to construct the desired innovation.

“Licensing agreements are legally binding contracts where the owner of IP in a valuable technology (the licensor), gives someone else (the licensee) permission to use that IP in ways (terms) that are spelled out in the agreement.” Two notable ways a licensee can benefit from the licensed technology is by commercializing the technology themselves or by using it to bolster their own technological research and development needs. Licensing agreements can be either exclusive or non-exclusive. In a non-exclusive licensing agreement, the licensee may be able to license the technology themselves to other parties. In exclusive licensing agreements, however, the licensee is not permitted to grant access to the IP to another party and is also usually bound by confidentiality terms.

IP assignments, as discussed above, are the complete and permanent transfer of intellectual property rights. “The assignment contract must accurately identify the subject matter of what is assigned. In the case of patented inventions for instance, this may include granted patents but also provisional patent applications, including PCT applications, or trade secrets that are intended to remain as such.”

The difference between licensing and assigning IP rights is that under a negotiated licensing agreement, the contract is terminable at agreed-upon times at which all rights revert to the licensor. Again, an assignment is a permanent divestment of the assignor’s ownership and rights to create, sell, and otherwise gain from the assigned technology.

A confidentiality agreement, or a nondisclosure agreement (NDA), is most useful for knowledge transfers. The agreement will legally bind a party from disclosing confidential information concerning the discussed proprietary technology. These agreements are most useful for parties contemplating a licensing agreement or assignment as this will allow the owner to present their product to another party safely. The party interested in receiving the technology will benefit by having the opportunity to perform their due diligence before committing to the transfer.

Replicating a piece of technology already brought to the market is also possible. Copying tech requires reverse engineering the item in question or breaking it apart in another manner to study how the tech functions and reproduce it. However, it is important to be mindful of any existing patents you could infringe on, as a patent infringement suit is costly. Consult with an experienced patent attorney to help conduct a prior art or freedom-to-operate search before spending time and money developing a product that could land you on the wrong side of an infringement lawsuit.

Technology Transfer Organizations

Technology Transfer Organizations are “academic or commercial entities that facilitate intellectual property rights management and technology transfer by bridging the gap between research and practice.” One prominent example of such an organization is a Technology Transfer Offices (TTOs). TTOs are created by universities to maintain their extensive IP portfolios and regulate technology transfers to and from the university. Due to the collaborative nature of university research and employment agreements, universities are generally assigned IP rights to all inventions and research. Professors, researchers, and students use university funding and resources to complete their research and innovation, leading to joint ownership considerations. However, expressed language in employment agreements will usurp IP rights from the individual(s) responsible for the innovation to the university.

The TTOs are further responsible for deriving financial benefits for the university by commercializing or transferring technology through other means, as discussed above. Again, before approaching another party interested in obtaining your technology, it is imperative that your IP is legally protected. For instance, a patent provides the owner the right to “exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent.” Patents are most suitable for protecting the unique functionality provided by your technology, whether the technology be a physical, pharmaceutical, or software product.

Having a patent, or even patent pending status, can be a sufficient safeguard for presenting your technology to interested parties. The United States Patent and Trademark Office (USPTO) operates on a first-to-file basis for patent applications. So, if you have already filed a patent application, any third party attempting to patent the idea behind your back will be precluded. Consult an experienced patent attorney to help determine which path is best for protecting your IP.

Understanding the technology transfer process

The purpose of the process is to advance the understanding of technology and utilize it in a manner that advances the collective interest of humanity. The initial innovation phase begins with brainstorming and communication to solve problems or enhance technology and knowledge within a research niche. Diagrams, schematics, and dialogue ensue, setting the stage for research proposals and the technology confirmation phase. Through research, data is generated to support the technological theory and promote a constructive dialogue with peers.

The next phase is the targeting of technology consumers. Targeting the proper consumer can require the collaborative efforts of scientists and marketing experts. Such parties require information about the project’s budget and social factors that may impact how the tech is accepted.

Close behind is the marketing stage, centered on disseminating the technology after research. Scientists, private industry personnel, and marketers collaborate to communicate the merits of the value offering.

Evaluating the technology is the final phase of the tech transfer process. This process analyzes the tech’s success in its implementation and adoption by target customers. The data is then reported to the financiers of the project.

Does transferring tech mean you lose ownership of your product?

It depends. Ownership is retained if the technology is transferred through a licensing agreement. However, many licensing agreements allow a licensee the conditional right to develop and further use the technology. Inventors must define and disclose the details of the value proposition before transferring their technology.

However, IP assignment to another entity will usually require the original owner or inventor to transfer all rights to the assignee. This means the original owner will retain no right to control or profit from the technology. Universities and companies commonly use IP assignments by requiring, through language in employment contracts, that employees transfer all intellectual property rights of any IP developed with company resources or during the term of their employment or involvement with the university. Individuals may earn a profit by outright selling their innovation via IP assignment.

Real-world technology transfer examples

There are numerous instances in which IP has played an important role in tech transfer. The AUTM “Better World Project” showcases 500+ innovations for their utility and value in technology transfers to advance product utility, continued research, and the common good. The organization has helped facilitate technology transfer that brings research to life with the advancement of the tech creations such as:

  • Google
  • Allegra
  • Taxol’s cancer drug
  • Vaccine for rotavirus
  • V-chip for preventing youth exposure to harmful entertainment content
  • Firefighting drones

AUTM puts research dollars to work, expediting technology transfers that ultimately support society through commercialization, education, development, innovation, and ongoing support for academia and private industry.

Technology transfer in the pharmaceutical industry

The pharmaceutical industry heavily relies on the transfer of technology. Tech transfers of drug products, and corresponding manufacturing processes, are highly unique and complicated. As such, licensing the pharmaceutical technology from the original developer can be more cost-effective than creating a competing and non-infringing product. The World Health Organization (WHO) has established guiding principles for technology transfer in the pharmaceutical industry. The guidelines include process transfer to a specific site within the life-cycle process, documentation, and additional systematic procedures to advance the knowledge.

The following documents, referred to as the package of technology transfer, must be considered:

  • Raw materials used to create the value offering
  • Methods of analysis
  • Relevant regulatory requirements
  • Equipment requirements
  • Parameters for processing
  • Procedures for manufacturing

The Future of Intellectual Property and Technology Transfer

The technology transfer and overarching IP landscape will become more complex as technology advances in unforeseen ways. The industry’s underlying structures, contributors, and tools will also continue to change as time progresses.

However, what is likely to stay the same, is what is required to transfer technology safely and effectively. Protecting your intellectual property is the most tried-and-true way to capitalize off your new technology and innovations. The United States has afforded intellectual property rights to creators since the Copyright Act of 1790 to encourage its citizens to advance society through technological improvements without fear of being taken advantage of. Without legal barriers around your IP, competitors can freely emulate your innovation for their own commercial benefit.

Take Action and Unlock the Potential of Your Intellectual Property

The Rapacke Law Group provides essential intellectual property protection for inventions and other creations, elevating businesses and safeguarding their valuable tech advances. Our team can assist you with every step in transferring your technology, from patent filings to licensing agreements.

If you’d like to learn how to protect your intellectual property, schedule a no-cost IP strategy call.

Schedule a Free Strategy Call
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