Technology Transfer - 8th February 2017

Faculty Development Program by Dr Anand Kumar, University of California  

Department of Engineering and Sciences in association with Dr. A.P.J. Abdul Kalam Centre of Excellence for Innovation and Entrepreneurship (AKCIE) on 8th February 2017 between 2 pm to 4pm conducted the Faculty Development Program at the conference Hall, Arumugam Block, First year, second floor at Adayalampatu Campus. The event was facilitated by Dr. Rama Vaidyanathan, Director, AKCIE and the program was jointly headed by Dr. Jebaraj, Dean, Engineering and Science (E&S). The guest for the day Dr. Anand Kumar Research Scientist from University of California was formally invited by Dr. Jebaraj and Dr. Vaidyanathan introduced the guest to audience. The faculties from first year E&S, AKCIE, ARC and Animal tissue culture lab actively attended the program.      

Guest of Honour - Dr. Anand Kumar Research Scientist from University of California

Dr. Anand Kumar gave a detailed talk on Technology Transfer at United States in reference to UC. The University of California (UC) technology transfer program is the largest public program in the world. The University of California (UC), based on its mission as a land grant university, has a long history of seeking intellectual property protection for its research discoveries and managing those technologies for the public benefit. The intellectual property protection program has been administered through six functional departments: Information Technology and Communications, General Counsel (legal), Licensing, Patent Prosecution, Financial Management, and Policy Analysis and Development. Perhaps the most distinctive feature of the UC technology transfer system is the development of a distributed institutional network of ten university campuses, which operate under a common policy framework and share resources. At the same time, each office functions relatively independently of the others. This is emulated and implemented at different scales, from a relatively small-scale research consortium made up of a network of institutions, to a larger-scale national network of universities, to a global-scale international network of research institutions linked by common policies and objectives.


The UC technology transfer program: Elements and organization

The UC technology transfer program has been relatively successful in transferring technology to the private sector. The UC technology transfer program has been administered through six functional departments that support all aspects of invention reporting, licensing, and administration. These departments are: Information Technology and Communications, the Office of General Counsel (legal), Licensing, Patent Prosecution, Financial Management, and Policy Analysis and Development.

1.      Information Technology and Communications

The Information Technology and Communications department has focused on the development and maintenance of an intellectual property management database called the Patent Tracking System (PTS). This system is critical to all aspects of intellectual property management. A single system that integrates invention disclosure, patent prosecution, licensing, and financial information is invaluable for effective IP management—but rarely available. Early attention to developing such a system was of particular importance for the UC system, since all IP, originating from multiple campus locations, is the property of a single legal entity, the Regents of the UC. As a consequence, a single, integrated database provide the basis for integrated reporting and improved handling of the risks associated with management of IP at multiple locations within the system. The department is also responsible for communications and reporting, which involves, for example, the publishing of an annual report and submission of survey information to the Association of University Technology Managers (AUTM).

2.      Office of General Counsel (legal)

Legal support for the technology transfer program is critical since it routinely enters into contracts (licenses) on behalf of the university. The Office of General Counsel (OGC) reports directly to the Regents and is charged with oversight of all legal issues and legal risks to the university. This structural arrangement assures that the business opportunity associated with a license agreement is not a consideration in the assessment of legal risk or exposure that the agreement carries with it. Because universities, in general, have a lower tolerance for legal risks than does industry, this arrangement is one feature that often makes negotiations with the UC difficult.

3.      Patent Prosecution

This department is responsible for managing the outside counsel who draft and prosecute patent applications on behalf of the university. Primarily, the department performs a “docketing” function to ensure that external counsel meets critical filing or response dates and that fees are paid on time. The department works closely with licensing officers, inventors, and counsel during patent prosecution to ensure that UC maximizes its IP rights and that it does not inadvertently lose rights due to failure to meet bar dates in the United States or foreign patent jurisdictions.

4.      Policy Analysis and Development

Because the UC is a large, risk-averse institution, it operates in a policy-rich environment. The Policy Analysis and Development department is responsible for interpreting existing policy and providing consultation to licensing officers and researchers in order to assist them in their efforts to comply with university policy, as well as with state and national law. The department also analysis the national and state legislation, this analysis is important in developing positions for the UC with regard to new legislation that will impact the university’s capability to effectively transfer technology to industry.

5.      Financial Management

Depending on the scale of a technology transfer program, there can be significant infrastructure required simply to manage the program’s finances. This is an area where inconsistencies in financial management can lead to substantial losses in revenue, loss of IP rights, and exposure to lawsuits by licensees as well as the university’s own inventors. The Financial Management department provides a dedicated financial management infrastructure for uniform and consistent financial management for the technology transfer program. The department needs to understand the legal processes surrounding IP management and also balance the differences in culture and demands arising from private industry, law firms, the university community, and individual inventors, all of whom have significant interests in the financial outcomes of the technology transfer process.

6.      Licensing

 The largest department within the UC technology transfer program is licensing. It is particularly helpful to have technical expertise in each group as well as to have knowledge of licensing norms in the various industry sectors, which differ significantly. Licensing officers is primary responsible for a case—defined as an invention disclosure—from its inception, through to licensing, and on to expiration. This practice has been referred to as “cradle to grave” management and differs markedly from the practice, typical of many institutions, of segregating invention disclosure and patenting processes from licensing negotiations and post agreement management.

Technology transfer in a distributed institutional network

Perhaps the most distinctive features of the UC technology transfer system are its size and the development of a distributed institutional network of campuses that operate under a common policy framework and share certain resources, but function relatively independently. The decentralized technology transfer program must be in close geographic proximity to major research centers can lend itself to success. Decentralization and proximity are particularly important because active engagement by researchers in the technology transfer process typically requires a cultural shift that can only be made through continuous and systematic contact between technology managers and researchers.


Followed by the interactive discussion on technology transfer, Dr.Anand Kumar visited the AKCIE Lab. Dr. Kumar suggested a Technology Transfer unit is essential for the University to offer guidance and process patent related matters.