Technology transfer is much more than processing invention disclosures and filing patents; it involves development of prototypes all the way to ferrying them along to the marketplace. Inventions do not become successful by mere accident or luck. Technology transfer is a game of knowledge and skill that, quite often, involves risk at each step. Part of our role as technology transfer professionals is to develop strategies to manage that risk, which comes from different sources:
To be adopted, technologies must meet market needs. But they must also fit with the current state of a given industry in terms of manufacturing and production. Technologies that address a problem but are leaps and bounds beyond the state of an industry are often prohibitively expensive to produce. Being “too advanced” can prevent even a great invention from being adopted.
Inventors and technology transfer offices must find a balance between innovation and cost. They must also assess a market’s readiness for technology disruption.
Secrecy vs. Disclosure
Sometimes, academics considering technology transfer face a conflict. When they invent a promising new technology, do they immediately share results with their academic peers, or do they keep findings to themselves as they pursue a patent? In technology transfer, we don’t prevent academics from publishing their work, but we do recommend that they wait until a patent application has at least been filed before they share research results.
Publications and patents must be strategized to ensure a work’s novelty isn’t compromised. This still represents a major risk from a technology transfer perspective.
Nature of IP Protection
The type of protection to pursue depends in part on the type of invention at hand. Is it a nearly market-ready product with a single, clear application? Or is it a new substance with many potential uses, some of which may still be undiscovered? Some patents cover only one application of a product, while others protect a material in all its forms. Technology transfer offices (TTOs) should determine the patent strategy that fits best with each invention.
TTOs should also keep in mind that IP is jurisdictional. Technologies should be protected where the market and means of production are. But pursuing protection in one region can mean vulnerability in others. For this reason, TTOs should seek patents in areas where competition is most likely to arise. This will also require an invention-specific assessment.
Handling risk in technology transfer requires in-depth understanding of the invented technology from all angles, from technological to IP matters. This understanding helps guide decisions and manage risks while navigating the process of technology commercialization.
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