University technology transfer offices have greatly expanded their focus
since the adoption of the Bayh-Dole Act in 1980. In addition to filing patents and
licensing technology, technology transfer office activities now support translational
research and related activities and the reach of these offices has expanded into nontraditional
or non-STEM (Science, Technology, Engineering and Mathematics)
areas of the university.
Seven university technology transfer officers gathered with intellectual property
attorneys, private investment executives and technology innovation directors to
discuss the latest trends in current technology transfer activities and responsibilities.
The discussion focused on: 1) accelerating innovation and best practices, and 2)
protection and/or enforcement of intellectual property rights.
Discussions revealed that technology transfer offices are becoming more involved
in innovation centers to support startup formation, gap analysis, venture, private
equity, corporate funding, business development, clinical trial arrangements and
atypical industry partnerships. Focusing on customized solutions and employing
creative thinking to support various innovative activities has helped technology
transfer offices to succeed in supporting the mission of their respective universities.
Most universities file provisional patent applications to establish a priority date quickly
and inexpensively. This strategy provides inventors with additional time to collect data
and gives the technology transfer office time to discuss underlying technologies with
prospective commercialization partners to better inform decisions to file a nonprovisional
application. Technology transfer offices agreed that decisions to initiate
litigation against potential infringers should be made on a case-by-case basis, citing
costs and reputation as driving factors in the decision-making process.