Technology transfer

Intellectual property is is an intangible asset which is the result of a process of human thinking. Value of intellectual property depends on the rate of its subsequent usability, the benefits for both, the individual and society and the ability to induce the production of other products (material and immaterial). Intellectual property is often the result of research activities in academical or research institutions. These activities can be implemented also in the form of expert consultations, eventually common research with trading company.

Researcher (author) is obligated to announce intellectual property subject matter (IPSM) to his employer (obligation is modified by the legal regulation or internal emplyer’s regulation), who will make a decision concerning implementation and eventual form of intellectual property protection. The announcement of research results is implemeted according to methodical procedure, given by the employer. There the author can find instructions how to proceed if he wants to announce research results. Author mustn’t publish information concernig IPS till the appropriate IPS legal protection is granted.

In the process of feasibility study of IP rights protection is considered if the intellectual property subject (IPS) fulfills all required conditions for appropriate legal protection. Legal protection is usually divided into: industrial property (right to protect industrial propery subject matters) and copyright and rights related to copyright (results of artistic and scientific creations, artistic performance, etc.) Industrial property subject matters can be protected by patents, trade marks, designs etc. The invention protected by patent must fulfill following criteria: novelty, result of invention activity and industrial applicability. Novelty is confirmed by the state-of-art search (patents and utility models). Generally state of art presents all knowledge in a particular technical area, publicly available before the day of IPS application is sent.

Evaluation of technology benefits (intellectual property subject matter) is a comprehensive role. Researcher should not implement it alone. He should contact (through TTC) specialised consulting agency, economic experts, etc., to access relevant benefits of the existing technology. Namely feasibility of the intellectual property subject matters alone doesn’t guarantee its commercial success, and thus return of finaces invested into its legal protection. Applying /non applying for an intellectual property subject matter is a commercial decision based especially on all financial (applicability in practice, effectiveness, investment return) as well as non-financial benefits (all-society or regional benefit, improvement of institutional position, etc.) directly bound with its perspective utility value.

Intellectual property (IP) protection can be realised at national, regional or international level. In the process of selecting IP protectiom it is necessary to consider legal protection costs and commercial product utility, as IP subject is protected only in the country or region in which the appropriate legal protection was granted (patent, utility model, design, trade mark, etc.).

After feasibility rewiew and selection of intellectual property protection strategy follows the fulfillment of IP subject matter application and its submission to the national (regional) intellectual property office. Application includes complete IP subject matter description, definition of required protection scope, drawings and annotation. Patent application are usually prepared by patent attorney who represents author during the whole proccess. After submission of patent application to the patent office following steps must be complied: the search for the patent application (fulfillment of formal requirements), publication of patent application (usually 18 months after the priority date of the application), full search (fulfillement of all relevant criteria for given IP subject matter) and legal protection granting/non granting for IP subject matter. If the author of IP subject matter is a researcher, the protection is ensured by specialized workplace in his institution – technology transfer office.

Selection of commercialization strategy belongs to the key steps in the process of technology transfer. As it is highly specialized role, researcher shouldn’t implement it alone. He should contact technology transfer ofice staff – TTO (or other competent persons in his institution), who can help him to identify the most acceptable commercialization strategy for a given IP subject matter. In the process of IP subject matter commercialization it is often useful to collaborate with a partner from commercial area, who knows the market and instruments to implement existing IP subject matter to the market in required quality and extend. Claims put on eventual partners depend on selection of particular commercialization strategy (grant of license, selling-off the IP subject matter rights, creating a spin-off company etc.). Final commercialization strategy should be most profitable for a given technology transfer subject.

One of the most perspective activities in the area of research results commercialization are consultations offered by university/research institution to trading company/other client. For identifying of the thematic area, terms and charges is usually an Agreement for Expert Consulting Services concluded. Rights to the eventual intellectual property subject matter are performed exclusively by consulting customer.

Marketing plays key role in the process of partner search for IP subject matters commercialization. Marketing instruments are various, from advertisement and sale support till public relations. All instruments need to develop and use according to actual needs and situation at the market. In public relations there are used techniques and instruments, applicable for creating and holding of neighbourhood relations. Institution feels public attitudes and tries to influence them. It is a long-lasting activity, part of which includes information providing and feedback from the environment and the public. Such instruments, used in practice, include especially press releases, articles, press conferences etc.