2. What Are Strong Ties?
How do we forge strong ties
between research and licensing offices?
3. Forging Strong Ties
Opening Questions
• How do we forge strong ties between
research and licensing offices?
• What varying perspectives do we bring?
• How do our offices relate optimally?
How do our officers relate optimally?
• What are good models for offices large
and small?
4. Which Ties?
• Tech Licensing Office Contracts and Grants Office
• C&G dominated by federal perspective
• Some C&G offices have dedicated industry person / team
• Tech Licensing Office Industry Contracts Office
• Multiple backgrounds – C&G, TT, Contracting
• Tech Licensing Office Dedicated Industry person
• Embedded in C&G or TT office, orientation depends on context
5. When Do We Need Each Other?
Licensing Needs Research
• Grant terms in the SRA
• What did we promise to the
sponsor?
• History of negotiation, intent
• Contacts at companies
• Who did you work with there?
• SRA + IP license
• Teaming on joint pitches
Research Needs Licensing
• IP terms in SRAs
• What can we offer to the sponsor?
• Negotiating together
• Major research agreements
• IP centric agreements
• Potential IP and BIP analysis
• BIP reporting
• SRA + IP license
• Teaming on joint pitches
6. Multiple Perspectives
Licensing
• Object: Inventions, IP,
marketing & biz dev
• People: Inventors
• Company: Small to Medium
• Sometimes corporate, start ups
• Money: Up front Fees,
Royalties, Patent cost
reimbursement
• Reporting: University to Fed,
Company to University
Research
• Object: Proposal / SOW
• People: Researchers
• Company: Medium to Large
• Sometimes small, rarely start ups
• Money: Research costs
• Reporting: PI to Company
7. Multiple Perspectives
Licensing
• Values: Lab to market, fair
consideration, diligence /
stewardship, leverage research,
economic development
• Drivers:
• Companies filling IP pipeline
• Inventors creating start ups
• Metrics:
• No. of inventions, patents, licenses
• No. of start ups
• Licensing revenue
• Patent reimbursement
Research
• Values: Research integrity,
faculty service, fair
consideration
• Drivers:
• Companies need new IP
• Companies need trained talent
• Faculty need research funding.
• Metrics:
• No. of research agreements
• Research funding
8. One Face or Multiple?
• How do we position ourselves to companies?
• What is the face of the university?
• Are we one office or two?
• Portal to the university. One stop shop.
• Who is the lead?
9. Some Best Practices
• Joint case discussion
• Joint staff development
• Joint negotiation on some cases
• Get people involved early
• Teaming by Assignments
• Assignments by department or field
• Discuss academic departments, faculty, and companies
• Attend meetings together
10. Regional Variety
“Well, that’s fine if you’re
Stanford, Berkeley or Case.
But we’re a little office.”
Options for Small Offices
• Dedicated Industry Contract person in C&G office
• Dedicated Industry Contract person in TT office
• No matter the size, you can meet and share notes
11. Discussion
• What are examples of strong ties?
• How can research and licensing work together better?
Hinweis der Redaktion
10-15 min per presentation.
Speak to a broad array of office types and sizes, negotiating SRAs while anticipating licensing deals, trends.
Audience will be licensing officers, and geared more toward licensing officers.
A few key open-ended questions in advance for the audience.
10-15 min per presentation.
Speak to a broad array of office types and sizes, negotiating SRAs while anticipating licensing deals, trends.
Audience will be licensing officers, and geared more toward licensing officers.
A few key open-ended questions in advance for the audience.
-Collect examples of how strong relationships have been forged
-Collect examples of success stories
Stanford uses info on commercial NERFs.
ICO goes to OTL for advice, not permission. Decision is made within ICO.