josé silva lopes,phd scientific officer at requimte/laqv ... · technology transfer non-linear...

José Silva Lopes,PhD

Scientific Officer at REQUIMTE/LAQV

(former)TTO at FCT Nova

The path…

• PhD in Chemical Engineering (Supercritical Fluid Technology). Output : a Thesis and a patent(co-inventor) and lots of working hours(good for experience)!

• During PhD…Industrial Engineering BSc.(good for industrial systems awareness)

• After PhD…Education, R & D with Technology Transfer (another patent!),RTN Officer

• More recently, MIT Portugal Bio-Engineering Systems : Education and Science Manager, Innovation Systems and Technological Inovation, TTO at FCTUNL

• Currently Scientific Officer at a R & D Unit (R & D Strategy,Innovation and Technology Transfer, Data Management)

R & D Outputs

Technology & Science in the Lab

InnovationCommercial and/or

Societal Value Scientific Production Career Development

Scientific Production

• Publications

• Conferences;Workshops

• Degrees(PhD,Tenure)

• Projects(National,European,With Industry)

• Collaborations and Cooperations

Career Development

• CV

• Jobs

• New ideas, new collaborations, new scientific projects

• Interaction with Industry

• Networking

Technology value from innovation

• Patents and Publications

• Knowledge Transfer

• Sponsored Research Agreements

• Licensing/Assignment of Technology

• Start-ups/ Spin-Offs

• Philantropy/ Service to Mankind

• Societal and Community Improvement

And it starts with an invention…or an innovation

What is an invention?

A technical teaching which defines a relation

between technical features and technical

effect; it is in the realm of research and

discovery, fundamental science and the

development of new ideas and knowledge

Invention has to be reproducible

How to get technology value from Innovation

What’s Innovation?

Innovation is the new and successful

application of those inventions to address issues and generate

value

Adapted from M.Cerejo 2017

And how you get the technology value? With technology transfer!

Invention

Conception (in the lab orother technology environment)

Reduction to Pratice-constructive(patent application)

-actual(working model, proof of concept,prototype)

Technology Transfer Definitions

• Technology Transfer : process of movement of technology from one entity to another

• Application of information (in the form of a technological innovation) into use. The process of technology transfer entails movement of a technological innovation from an R&D organisation (e.g University research center) to a receptor organisation (e.g. a private company).

Technology Transfer - definitions• “Involves a relationship dimension. Research and technology

transfer activities comprise an extended series of “interactive relationships that connect the functional activities of basic (disciplinary) research,applied (problem-solving) research, development, diffusion, adaptation, and dissemination into an overall technology delivery system” (Feller 1987)

• “Deliberate, goal-oriented relations between two or more persons, groups or organisations to exchange technological knowledge and/or objects and rights” (Autio & Laamanen 1995)

• “The process by which technologies developed in universities are transformed into marketable products” (McDougall 2005)

• “Ultimate objective of technology transfer is commercialisation the movement of know-how, technical knowledge or technology from one organisation to another” (Bozeman 2000)

Technology Transfer Models – The Traditional Linear Model

Linear Model : based on stages such as basic research, applied research, prototype development, market research, product development, marketing and selling

Bridging the gap between research (academic, industrial) and the

marketplace/economic value by developing a knowledge transfer

strategy (a linear perspective):

Market is more important than the technology itself (but not by

much…if the technology has no value).

research and development marketplace

What drives Technology Transfer between Organizations?

Technology Push

Market Pull

Technology Transfer-Linear Model as a Cycle

Technology Transfer At MIT – another example of a Linear Model

Technology Transfer Models

•Non-linear models : “emphasise multi-directional linkages, interdependency between “hard” technology and “softer” issues of people management and information flows, cumulative flows which involve individuals, organisations, regions and government, and the social, cultural, economic and institutional bases of innovative action” (Mitra and Formica, 1997).

•These models evidence the importance of collaborative activities occurring within an established network of formal and informal relationships.

Technology Transfer Models – Non-Linear Model

Technology Transfer Non-Linear Models

Framework of these models:

•Academic Entrepreneurship ( PhD Students and PIs involved in academic and start-ups/spin-offs);

•Open Innovation (between academia and industry , innovators who integrate their ideas, expertise, and skills with those of others outside the organization );

•Collaborative View (between academia and industry, both stakeholders fully involved and can be considered several collaborative organizations that have developed legal and technical infrastructures which allow participants to engage in knowledge and idea-sharing that is a joint effort )

Technology Transfer Models –Hybrid Models

Technology Transfer Models – Hybrid Model

Technology Transfer in Practice

• From the University Lab to the Society/Industry

• From the (University Lab collaborating with Industry) to the Society

• From the Industry to the Society

And it starts with an invention…• A new and useful process• A machine

• An article of manufacture (product)

• A composition of matter ( a substance, a material)

• Any improvement related with the above

So…what we do with it? Is it intriguing, it has potential?

University Technology Transfer Office

Should I file an Invention Disclosure??? Or should I publish?

Should I consider Intellectual Property protection??

Contact the TTO!

Intellectual Property Rights• Intellectual property : inventions and/or materials

that may be protected under the patent, trademark and/or copyright laws.

• It is not exclusive of publication!

• It is important to get the right value from your invention (very important in a technology transfer process from academia to the society)

• Can protect your rights as an inventor and the university as your host

• Eventually may lead you to start your own business or get commercial from your invention through third parties

Moving from Invention - Usual Steps in University

1-Discussion: Inventor informally discusses the invention with the TTO

2-Disclosure: Inventor reports the invention to the TTO using the standard disclosure form

3-Assessment and Evaluation: The TTO assesses the invention for patentability and commercial potential

4-Filing and commercialization decision : Back to the lab, no patent filling, patent filling with marketing strategy, trade secret with a industrial partner, licensing, assigment, waive title

Moving from Invention - Usual Steps in University

5-Marketing: The TTO will contact potential licensees or assignees

6-Licensing: The TTO will negotiate and manage licenses to companies, or assignments(selling of the patent rights)

7-Commercialization and Revenue(shared between inventors and University)

In all steps, inventor(s) input and cooperation is crucial!

Overview of intellectual property

Legal right What for? How?

Copyright Original creative or artistic forms

Trade marks Distinctive identification of products or services

Use and/orregistration

Registered designs Registration

Patents New inventions Application and examination

Exists automatically

Trade secrets

External appearance

Valuable information not known to the public

Reasonable efforts to keep secret

Adapted from D.Chaves 2010

Registered industrial property

Patents

Duration: 20 until years

Trademarks

Duration: until 10 yearsor life

Utilitymodels

Duration: until 10 years

Designs

Duration: until 5 x 5

years

IP rights with a legal certificate


Unregistred IP rights

Unregistered IP = Copyright

The right will be in force until 70

years after the death of the

creator

Literature

Pieces of music

Paintings

Drawings

Films


Trade marks:• Made by "Nokia"• Product type “7” or “6”• Software “Android", "Java"

Patents:• Data-processing methods• Semiconductor circuits• Chemical compounds• Touch Screen• Bateries

Copyrights:• Software code• Instruction manual• Ringtone

Trade secrets: ?

Designs (some of them registered):• Form of overall phone• Arrangement of buttons in specific shapes• Interior 3D space organization

Combined use of IP rights

What rights a Patent gives to the Inventor ?

You can say it is:

• An agreement between the

inventor and society

Alternative definition (legal):

• A patent is an exclusive right to commercially

exploit the invention in this country. Protection up

to 20 years

-It gives the inventor,owner or the licensee the right to exclude others from making, using or selling the patented invention for a specific period that begins with the issuance of the patent

-In return, the inventor has to publicly disclose the invention

-Protects investment in innovation(Return On Investment)

What can be Patented ?

• A new and useful process• A machine

• An article of manufacture (product)

• A composition of matter ( a substance, a material)

• Any improvement related with the above

Examples: a chip, a process to build new materials for the semiconductor industry, a robot, a new material superconductor

What cannot be patented?

.: Computer programmes

.: Medical and surgical treatments

.: Mathematical methods

.: Business methods

.: Discoveries

.: Aesthetic creations

.: New species of plant or animal

.: Inventions which are contrary to moral standards and public order (e.g. instruments of torture)

.: The human body and any non-separate part/s thereof


Legal Terms and Agreements – IP Rights(Patents)

Who owns the patent rights?- The inventors (depending on the employment status) and the

University if developed within his facilities; it could be eventually reassigned to the inventor if the institution doesn’t want to pursue patent protection and/or actively market the invention;

-A policy is always in place in the institution regulations(Patent Rights Agreement within the internal policy);

-Contact the TTO for regulations at FCT UNL


What is-and is not-patentable?

-Must be Novel/New (non public disclosure in any form before filling);

-Must be Useful ( must have industrial or agriculture application potential);

-Must be Inventive (“nonobvious to someone of ordinary skill in the art”)

Industrial Application

.: The invention must have at least one

practical purpose and must be

reproducible

.: There is no evaluation of quality or

economic factors! And no

“optimality”

.: Only the technical qualities

(features) are relevantAdapted from D.Chaves 2010

It must be New - Novelty

.: Novelty: An objective, global demand

.: New in relation to that which is known prior to

the date of filing the application

.: Known = general availability through the

written word, spoken word (lectures, etc.),

usage, etc.


The Inventive Step

To differ essentially =

Inventive step =

Not obvious to a person skilled in the art...

“As a general rule, there is an inventive step if the prior art leads theperson skilled in the art away from the procedure proposed by theinvention. This applies in particular when the skilled person would noteven consider carrying out experiments to determine whether thesewere alternatives to the known way of overcoming a real or imaginedtechnical obstacle” EPO Handbook

The Inventive Step

Problem-and-solution approach* Three main stages:(i) determining the "closest prior art",(ii) establishing the "objective technical problem" to be solved, (iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.

Always try to define the objective technical problem and how it was solved!Unexpected bonus effect!

E.g.:-It is not inventive to compose previous art in a obvious manner (mere aggregation of features)-Not inventive ”filling the gap” or “analoguous substitution”


The Patent Application

WIPO

Patent Document (it is not a paper)

• Title

• Abstract

• Figures/Drawings

• Description

– common part

– specific part

• Claims

Claims are what can be protected by law

Patent Example (it is not a publication!)DISCLOSURE OF INVENTION

(…) To accomplish the above-indicated objects, according to the first aspect of the invention, there is provided a screen comprising a structure in which particles having a size not larger than 1 [mu]m are regularly aligned.According to the second aspect of the invention, there is provided a screen configured to reflect light of specific wavelengths by using a photonic crystal.The photonic crystal is an artificial crystal made by regularly aligning transparent mediums (for example, two different kinds of transparent mediums) largely different in refractive index (dielectric constant) to cycles near the wavelength of light, e.g. to cycles of hundreds to one thousand and hundreds of nanometer(…)

Patent Example

CLAIMS

We claim:

1. A screen comprising a structure in which particles having a size not larger than 1 [mu]m are regularly aligned, a substrate, a red-reflecting particle layer, a green-reflecting particle layer and a blue-reflecting particle layer formed on said substrate via a buffer layer, said red-, green- and blue-reflecting particle layers being arrayed in the lateral direction on said substrate.2. The screen according to claim 1 wherein the array exhibits stacking cycles not less than eight cycles and not more than fifteen cycles.3. The screen according to claim 1 wherein said red-reflecting particle layer, said green-reflecting particle layer and said blue-reflecting particle layer are stripe-shaped, rectangular-shaped or square-shaped, and said particle layers are arrayed in a predetermined alignment pattern on said substrate.4. The screen according to claim 1 wherein said buffer layer is a layer of particles having a diameter not larger than 208*(1.36/n) nm(…)

…

Patent and Business

Is my invention new?

Who are my competitors,or potential partners and what do they do?

What is state of the art?

Am I free to use or do I infringe someone’s

patent?

Which solutions alreadyexist?

What’s going on in a specific technical field?


Patents databases

Allows you to assess Novelty, Technological Application,

Commercial Value, Potential Companies that might be

interested In your invention, Patent Literature for assessing

Inventive Step

.: www.inpi.pt | Portuguese Patent Office

.: www.epo.org | European Patent Office

.: www.wipo.org | World Intellectual Property Office

.: www.uspto.gov | US Patent and Trademark Office

.: www.espacenet.com | Europe’s network of patent databases

Patent Application Timeline

National Application

• Exclusivity enables investment and higher returns on investment

• Strong, enforceable legal right

• Makes invention tradable (licensing)

• Reveals invention to competitors (after 18 months)

• Can be expensive (total costs around 40 k€ during protection time)

• Patent enforceable only after official grant (this can take 4-5 years)

Advantages and disadvantages of patenting

Advantages Disadvantages


Alternatives to patenting

• Cheap• Prevents others from patenting

the same invention

• Does not offer exclusivity • Reveals the invention to

competitors

• Cheap (but there is the cost of maintaining secrecy)

• Does not reveal the invention

• No protection against reverse-engineering/duplication of invention

• Difficult to enforce• "Secrets" often leak quite fast

• No effort required• Does not offer exclusivity• Competitors will often learn details

Information disclosure (publishing)

Secrecy (creating a trade secret)

Do nothing


Patents – How to do technology transfer with them

• Assignment of your patent to companies (sell of the patent rights)

• Licensing to companies

• Spin-off / Start-up by having your invention patented and licensed to you and/or your co-inventors or start-up team members

Technology Applications

Options

New Capital Required

Personnel Requirements

Time Needed to Access Market

Accessibility to Worldwide

Markets and Broadly-Based Applications

Liability and Exposure to

Risk

Comparison Factor

Highest – 10 Lowest – 1

Most – 10 Least – 1

Longest- 10 Shortest – 1

Best – 10 Poorest – 1

Highest – 10 Lowest – 1

1. Include in Current Business 9 9 10 1 10

2. Spin-off 10 10 10 1 8

3. Joint Venture 3 4 7 6 6

4. License Technology 1 1 1 10 1

Source: Vertex Intellectual Property Strategies Inc. ©2004

Patent technology transfer possibilities


Assignment vs Licensing…

Assignment Licensing

The ownership of the patent is fully

assigned (sold) to a third party.

The owner of the patent grants a

third party the right to exploit the

patent, but retains ownership.

Typically, the assignor only gets a

single payment arising from the sale

of the patent.

The licensor receives royalties and other incomes according to the profits/sales/production of licensed products.

Assignment…

Advantages Disadvantages

Immediate gaining of the

financial compensation, by

receiving a single and pre-

determined payment

independent from future

profits/sales of the products

protected by the patent.

Loss of connection with the patented technology, its future developments, as well as with the assignee (short term relationship).

The assignee takes full responsibility on the patent maintenance, surveillance and enforcement.

Difficulty in doing the accurate market evaluation of the patent at this stage, when the technology is yet to be exploited. Usually, the assignor has a better knowledge of the market, and therefore is in a better position to dictate the value of the patent.

Licensing…

ADVANTAGES DISADVANTAGES

Participation in the market success

of the patent, by benefiting from

the results of its exploitation.

Need to keep an eye (both eyes, in fact…) on the licensee business, avoiding being misinformed in what concerns the patent commercial exploitation results.

Possibility of obtaining higher profits rather than in a assignment, considering that the profits are determined according to the sales/production of licensed products by the licensee (market success).

Difficulty to determine the licensee profits

Close relationship with the licensee, increasing the chances of new RD projects and possible sponsorships.

Need to keep watching for the patent maintenance and enforcement.

Trade Secret…

ADVANTAGES DISADVANTAGES

-Involve no registration costs;-Does not require disclosure or registration;-Protection is not limited in time;-Have immediate effect.

-The secret embodied in an innovativeTechnology/product may be discovered through “reverse engineering” and belegitimately used.-Protection is limited: only protects you against improper acquisition, use or disclosure of the confidential information.-A trade secret is difficult to enforceas the level of protection is considerably weaker than for patents.-Another person may patentsomeone’s trade secret if he haddeveloped the same invention by legitimate means.

A trade secret management program must be in place! Especially in companies or when collaborating with companies

Why licensing?...

• Institution reputation and return on innovation investment• The researcher earns reputation, recognition and a part of

the return of the investment• It gives the possibility of the customer/end-user to have

access to the technology since companies are much better that academia in putting manufactured technologies on the market

Licensing Agreements• Legal contract that allows a company to make,use and/or sell an

university’s invention; it could a established company or a start-up;

• The company agrees to pay for the use of the IP (e.g patent);

• The payment could be a lump-sum, royalties or other forms(e.g. equity);

• License can be exclusive or non-exclusive (Patent is usually exclusive while know-how is non-exclusive);

• TTO handles the licensing agreements legal terms and negotiations but inventor has a “say” in the whole decision process;

• Option agreement ( for start-ups) : rights granted to be first to negotiate a license(6-12 duration)

Licensing Agreements – More Legal Things to Consider…with the TTO

• Payment values and payment methods• Patent Fees• Grant Permission to others to use the same IP• Territorial restrictions• Assignment of the license• Others to manufacture and sell products• Incorporate all or just parts of the IP• Improvements on the invention (“license back”)• Use only on/with another specific item like a device or platform• Contract Termination (breach of conditions,change of control, sales

targets, insolvency, payment charge, early termination and consequences)

• Duration. Limited or indefinite? • Rights and obligations after termination• Law and disputes

Licensing Unpatented IP

• Know-How: non-exclusive license of techniques, experimental systems, special knowledge;

• Copyrighted work: formulas, algoritms, source code for software

Methods for Valuing Technology and to Value Patents

• Cost Approach - - look backward to the costs on developing the technology

• Market Approach - - look around to comparable market transactions in evaluating similar assets

• Income Approach - - look forward to the amount of income that the new technology will generate

• Technology Readiness Level(TRL) – feasibility, manufacture and adaptation needs

Technology Transfer Models With Industry

• Linear: technology push, market pull• Non-Linear: Coupling Model (interaction

between different elements and feedback loops between them. The coupling of knowledge within all three functions: R&D, manufacturing and marketing)

• Non-Linear: Interactive Model (combination of push and pull models, integration within the company or between University labs and company)

Technology Transfer Models – Non-Linear Model (University+ industrial

partners )

Early-stage intervention of companies in the Patent Strategy and patent technology development is also a drive for this model

Partnership and Collaborative Agreements

-Consortium projects with industrial partners (SMEs, start-ups, technologic centers);

-Funded national projects with industrial partners as co-promotors;

-Sponsored contracts funded directly by industry

-Consultation agreements

Partnership Agreements (examples)

• Consortium Agreement – several partners join a project with several work packages towards a common problem; the contract regulates the rights and obligations among the Participants of an EU Project with reference to management structures and financial distribution but also concerning confidentiality, liability and Intellectual Property Rights (IPR).

• Licensing Agreement - The transfer of certain rights from the Developer of a technology, process or know how to the Recipient, in return for a fee or share of royalties


• Technical Cooperation – Adapt/develop a technology, a product or a process for a new application or sector and/or new market (example: co-development of a new product using the expertise of the Developer and the production facilities of the Recipient). It’s between two Parties to develop a new version of an existing product to meet market needs; a feasibility study including tests customised, is indispensable for a specific application. Technology Readiness Level assessment is very important in the negotiation process


• Joint venture - strategic alliance between two or more Parties to undertake an economic activity together. The Parties agree to create a new entity together, by both contributing equally, and then share the revenues, expenses, and control of the enterprise.

• Commercial agreement with technical assistance - The provision of a number of services in support of, or essential to a transfer of technology(examples: assistance with starting up an installation, advice on the use of a new process,quality control, technical consultancy,maintenance and machine repair)

• Consultation services are under these types of agreements


• Manufacturing Agreement (Subcontracting & Co-Contracting)

-Subcontracting Capacity-Subcontracting Specialties-New way to use an existing production line-Change in the currently used technology of

the partner sought-Absolutely novel process-Consultation

Partnership Agreements - Recommendations

• IP Rights Safeguard ;• Agreements ; Disclosures and Communications• Relationships and Collaborations (strategic partnership is better)• Academic rights• Long-term relations with built-in flexibility• Shared vision and cross-fertilization of ideas• Not too much focused on “results” oriented approach• Multidisciplinary environment

Non-Disclosure Agreements (to make the relation more fruitful )

• Non-Disclosure Agreements (NDAs): often used to protect the confidentiality of an invention during evaluation by potential licensees but very important also when building a collaboration with industry and/or a partnership agreement

• NDAs also protect proprietary information of third parties that researchers need to review in order to conduct research or evaluate research opportunities.

• Sometimes they are used while or before filing a patent application during Market Assessment Outlook, in order to establish an Option Agreement with a company (not the general rule!) or to negotiate a future assignment or licensing

Non-Disclosure Agreements

Non-Disclosure Agreements – Rules of Thumb

• Assess the methods to record information• Restrict the object of the agreement to specific

purposes• Impose confidentiality to other company

members• Define if it is “Mutual” or “One-way”• Time for obligation of confidentiality• Public authorithy and institution involvement

Technology readiness level (TRL)important in establishing collaboration with

industries

Technology readiness level (TRL)• TRL 4: Component and/or breadboard validated in a

laboratory environment. Following successful “proof-of-concept” work, basic

technological elements must be integrated to establish that the “pieces” will work together to achieve concept-enabling levels of performance for a component and/or breadboard. This validation must be devised to support the concept that was formulated earlier and should also be consistent with the requirements of potential system applications. The validation is relatively “low-fidelity” compared to the eventual system; and may be composed of ad hoc discrete components in a laboratory.

PATENT usually has a TRL 3-4

Technology readiness level (TRL) – the industrial partner view

Sponsorship and Consultation Partnerships

• The work developed by a researcher might interest some industrial companies

• So… how can technology transfer situations between labs and companies can be done beyond IP transfer ?

Sponsored Research Agreements Funded by Industry

• A company funds a university lab research and a new kind of agreement is defined

• Guidelines:-Project Control(should be the PI lab)-Technical Representatives(both parties in the relationship)-Reporting methods(requirements)-Publishing rights -Invention rights (who owns the invention?)-Licensing rights (limited time to exclusive license rights)-Discussion and collaboration

Sponsored Research Agreements Best Practices

-exchange of ideas, not just conduct research on the behalf of the company;

-managing expectations is also important(very different perspectives between academia and industry)

-no use of the consultant/university in company promotional materials;

-limited and reasonable time commitment;

-provision for contract termination by each party; reserved information disclosure;

Sponsored Research Agreements Best Practices

-invention assigment when it is not developed in the university labs; conflict of interest and IP;

-noncompetition clause interference with University lab R & D;

-IP rights between academia and industry must be defined (Patent Sharing Rights Agreement or Trade Secret Plan);

-misalignment of expectations of licensing revenue versus cost ofcommercialization can kill deals

Consulting Agreements

-Professors and researchers are allowed to spend a limited time on consulting outside their institutions.

-Institutions usually have a procedure manual for this.

-Consulting agreements are also limited to the time dedicated

-Remember: industry is interested in science to increase sales and profits and to have a competitive advantage (see Partnership Agreements slides)

Material Transfer Agreements(MTAs)

• Materials transfer between labs that cooperate for an integrated purpose or in a collaboration effort

• Incoming and expending of materials requires TTO support and institutional approval terms

• Could be quite complex especially for biological or other types of materials, cell lines, hazardous products


• Between Academic Labs (use for noncommercial purposes, acknowledge all parties in publications,no sending for 3rd parties,responsability in damages during use,non-use in human subjects)

• From Academia to Industry (usually for non-commercial purposes, share manuscripts and proper acknowledgement, damages responsability, fee payment, no third parties)

• From Industry to Academia (Ownership of derivatives and modifications or of potential IP, publication review and confidentiality agreement, reporting and data sharing)


• Conflicts and Potential Issues

-Confidentiality-Delay of Publication-Loss of control of IP-Definition of material-Conflicts with existing agreements-Compliance and ethical problems

How to bring technologies to the market? How to make use of your invention?

.: Bringing an innovation, or invention, to the market

.: Commercial exploitation of scientific or technological

results achieved under university studies/research or in

R & D industry Adapted from D.Chaves 2011

Technology Transfer to Customers “New vs Old Technology”

• A new technology : -has to have considerable relative advantage and to provide significant value to the customer before it is embraced by the wider user community;

-can be more expensive than the older technology, but the value in terms of quality, flexibility, and responsiveness it provides motivates the user to take the necessary steps in adopting this technology;

The technology transfer strategy must take those above as a priority considering the customer phases of technology adoption (knowledge, persuasion, decision, implementation, confirmation)

KnowledgePersuasion

Decision Implementation

Confirmation

Technology Transfer – The Organization Framework

• Technology gatekeeper, a person who links the organization to the outside world of scientific and technical knowledge;

• Market gatekeeper also may exists in addition (but more common in services’ providers);

• Communication network needs to go beyond the research community (scientists and engineers) to include the user community, the marketing people, and the manufacturing groups. This requires boundary spanning (interdisciplinary collaborative work)

Technology Transfer to Customers Understanding the market and the company organization• The technology transfer process has to integrate

the perspectives and needs of both the R&D personnel and users.

• Creative collaboration among the various groups (researchers, marketing, manufacturing, and ultimate users) is very important to facilitate significant tech transfer

• The focus in technology transfer needs to be on “marketing” the product rather than “selling” it, with user needs and preferences given proper consideration

Marketing intellectual property, products, technologies in order to optimize the technology transfer process

.: Understand the market– Talk to potential partners and customers– Draw up confidentiality agreements where appropriate– More than 70% of licensed technologies are from

companies in areas of knowledge or R & D of the inventor

.: Market your technology widely– Publications– Websites– Scientific Conferences and Workshops– Industry events– Digital marketing

.: A prototype is very useful for explaining new technologies…proof of concept could be most of the time mandatory

Market: High Tech Uncertainty

Market Technology

What are the needs? Will it work?

How large is the market? Will it go obsolete?

How fast will it spread? Will there be side effects?

Will a standard be adopted? Will there be support?

How will needs change? Will delivery be on time?

Technology Evaluation Criteria

Relative Advantage. To what degree is the innovation more advantageous to existing technologies? Does it reduce cost, save time, or improve quality?

Compatibility. To what degree is the innovation compatible with existingvalues, experiences, capabilities, felt needs, and organizational and

cultural settings?

Complexity. To what degree is the innovation complex and difficult to adopt by the users? What degree of specialized training is required before the innovation can be adopted? What specialized equipment is needed?

Trialability. To what degree can the innovation be tried on a limited basis?

Observability. To what degree can the advantages of the innovation be easily communicated to decision-makers and users?

Technology Evaluation CriteriaTechnical Understanding. To what degree does the research personnel fullyunderstand the main technology?

Resource Requirement. What level of resources is required to implement thenew technology? Is this resource requirement compatible with previous userexperiences? Is the capital needed for the new technology available?

Advanced Development Concepts. Are the research activities going to continue to debug problems and further supplement the technology?

Growth Potential . Does the technology have a potential for growth and product applicability? Will the new technology overcome “stretching” of existing technology capabilities?

Advocate. Are there advocates at higher levels and at user level?

Market Pull. To what degree is there a market pull?

External Pressures. To what degree are there external pressures (such as regulations, competitor development, and so on)?

Technology Transfer Activities and Documents in Industrial Environment

• User involvement in research project identification• User involvement in research program execution• Sponsor at high levels• Effective information brochures, audiovisuals, and so on• User manual• Design criteria• Patents• Licensing for manufacture• Operation and maintenance document• Support center for training and the like• Hot line to respond to questions• Demonstration projects• Successful implementation for selected users

Conflicts of Commitment and Interest while PhD Students

• Is my time really my own? Am I dedicating enough time to the doctoral project?

• Should I publish or patent? Should I start a company or license ?• My research findings affect future licensing and sponsorship

funding?• Are my rights as a Graduate Student safeguarded?• My involvement in a sponsored research agreement conflicts with

my doctoral work and thesis work plan?• Do I have restrictions in presenting my research?• Should I be restricted by a confidentiality agreement? Should I sign

it?• Can I write/defend my thesis with confidential results ?• Should I get involved in a start-up company? Should I star a new

one based on my work?