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Understanding Technology Transfer

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1 | What is Technology Transfer?

Research organizations such as universities and government labs spend countless hours investing in technological innovations. Many of these organizations, however, lack the expertise to commercialize their products. Research institutions can sell or license their technology to small businesses who develop these innovations into usable products. Better still, if the research is federally-funded, the government can aid in the transfer process thereby reducing the cost for businesses. Sharing ideas is essential to maintaining the momentum of revolutionary improvement; in other words, the transfer of technology is essential. Technology transfer can be defined “as the process of transferring knowledge or expertise related to some aspect of technology from one user to another” [1]. Research institutions usually lack the resources to successfully commercialize the innovations their research discovers. Transferring technology is so important that various government programs will assist in the process. Even with legislation and government support, technology transfer remains ill-defined and lacks a standard approach. Complexities arise with Intellectual Property, government oversight, finding licensing recipients, and what Kim et al. described as “the complexity of the technology, the owner’s capability of teaching, the acquirer’s capability of learning and the complex interaction between the two parties” [2,3] when considering sharing innovations.. Even still, there are eight general steps in the technology transfer process as shown in Figure 1. Among these eight steps confusion and challenges may arise. This paper will provide clarity for managing technology transfer.

2 | The State of Technology Transfer

In the 1980s, the US Congress passed two key pieces of legislation that govern the technology transfer arena: the Bayh-Dole Act of 1980 and the Stevenson-Wydler Technology Innovation Act of 1980. The Bayh-Dole Act bolstered small business innovation through the creation of funding programs. The Bayh-Dole Act also builds upon the rights laid out in Executive Order 10096 which states: “The following basic policy is established for all Government agencies with respect to inventions hereafter made by any Government employee: (a) The Government shall obtain the entire right, title and interest in and to all inventions made by any Government employee (1) during working hours, or (2) with a contribution by the Government of facilities, equipment, materials, funds, or information, or of time or services of other Government employees on official duty, or (3) which bear a direct relation to or are made in consequence of the official duties of the inventor.” Government intellectual property rights in relation to non-profit research was an explicit concern identified and as such the following limitations were put in place [5]:

● Technology must be substantially commercialized in the US

● The US Government retains government use licenses and march-in rights

● Inventors retain a right to royalties to a capped level for patents

● Federal Agencies and Government-Owned, Government Operated (GOGO) Laboratories retain authority to issue exclusive licenses for the term of the patent

● Contractors at Government-Owned, Contractor Operated (GOCO) Laboratories can retain authority to issue licenses

Whereas the Bayh-Dole act focused on the power of small business innovation, the Stevenson-Wydler Act focused more on the impact of technology. Specifically, the Stevenson-Wydler Act mandates [5]:

● Federal laboratories with 200 or more technical staff must have a dedicated technology transfer office, or TTO

● Technology transfer must be a responsibility of all science and engineering professionals consistent with their mission responsibilities

● Establish a protocol around royal sharing for federal inventors

● Lead to the creation of the Cooperative Research and Development Agreement, or CRADA to foster better public and private partnerships with other federal agencies, state and local governments, and industry and non-profit organizations

● CRADA partners receive preferential rights to IP licenses