If you were anything like me as a graduate student, your impression of your institution’s tech transfer office (TTO) is of a mysterious place that 1) at some point early in your graduate career insists you sign over your rights to patent inventions, and 2) suddenly sprung into action with a flurry of requests for information and data about a week before you were scheduled to present at a conference.
Likewise, if you’re an entrepreneur looking to license intellectual property (IP) from a university, the structure of a university’s TTO may not be clear; who should you talk to and when? Despite this, TTOs are incredibly important if you want an invention or IP from the university to make it into application in the real world. They decide what gets patented and who gets to commercialize a technology.
The purpose of the TTO
At the risk of generalizing, I’ll define the purpose of TTOs by their name: to transfer inventions or technology from the university to a company that can commercialize it, in exchange for royalties or payments that flow back to the university, research, and the faculty/student inventors. How TTOs do that has changed in the last 40 years1 and varies by institution; some TTOs stick strictly to patenting and licensing, while some include corporate alliances, and others incubate startups.
A TTO’s funding structure is an important element for academics and entrepreneurs to understand because this influences its risk appetite in what it chooses to patent, who it is motivated to work with, and how it prefers to transfer technology. . Some universities provide a majority or all of the TTO budget, freeing these TTOs to patent higher-risk or potentially less commercially-viable inventions without the worry of recouping patent or IP costs from companies that license the technology. Other TTOs are funded primarily through the licensing fees, payments, and royalties that are made when a technology is licensed. These TTOs must consider how likely they are to recoup the costs on a patent, leading them to not patenting higher-risk inventions but have an overall more ‘commercially viable’ IP pool in the university. Similarly, self-funded TTOs will more thoroughly weigh whether a licensee can pay for a license and how likely it will successfully commercialize the IP (leading to more funding support for the TTO).
Another major axis that TTOs will differ along is in their mission statements or existing directives, and whether they are private or public institutions. Public and state-backed institutions often have a mission of economic development within the state, providing financial backing or other incentives for the startup to remain in-state. And institutions are increasingly recognizing the value of startups as a way to move their inventions to real-world application, leading to changes in mission statement or directives to support new ventures.
Roles in TTOs
From my experience working in Yale’s TTO (the Office of Cooperative Research) and chatting with folks at other institutions, I put together the below list of who’s who in the TTO. Note that it is based on Yale’s model, with some generalizability and mix-and-match of roles across institutions. If there’s anything I’ve missed or if you want to share how your TTO is structured, share in the comments below or drop me an email. These structures aren’t secrets and the more we can compare and contrast working TTO models, the more we learn about what works!
The core team
Business Development Professionals (aka, the BDs): The BDs are usually the main contact point for most academics with an invention or entrepreneurs/companies looking to license. On the academic side, the BDs are responsible for maintaining relationships with the faculty and understanding their work, monitoring progress toward an invention that could be patented, assessing whether an invention should be patented, and managing the patenting process. On the entrepreneur/company side, the BDs maintain a portfolio of IP that can be licensed from the university, explain the value of each piece of IP and get answers to questions they don’t know by asking the inventors, and drawing up and negotiating term sheets and licenses. Depending on the university, the BDs may be organized by industry area, type of application, or ad hoc (just who reached out to the faculty member first).
Graduate/Postdoc Volunteers/Fellows: Savvy TTOs (or individual BDs) increasingly have roles for graduate students or postdocs that volunteer or are paid a stipend to assist. These folks help determine the value and patentability of a technology by conducting market research and patent searches. Motivation depends on the person, but they’re typically building experience for a future career in a TTO, patent law, corporate BD, new ventures, or consulting. They often don’t have business or professional experience and may need extensive guidance in their work. But for both academics looking to launch a new venture and entrepreneurs, they can help you get work done — just remember to be clear on your asks, provide them with feedback, and where possible help them move toward their future career goals in return.
Yale’s official programs2 for graduate students while I was there: Blavatnik Associates, Y-AID Fellows, Canaan Fellows.
Intellectual Property and Patenting: The IP and Patenting people are responsible for getting patents issued, shepherding the process from invention disclosure by a faculty member to the TTO, through provisional patenting or a PCT, to the final patent being issued. Though they may have extensive legal knowledge of patentability and the patenting process, I found that patent writing may still be outsourced to a legal firm (or firms). This legal firm drafts the patent and finalizes it with input from the BDs and the academic faculty/staff/student inventors. As a result, both academics and entrepreneurs/companies tend to have limited direct interactions with IP and Patenting folks.
Licensing and Payments: The Licensing and Payments team are what I would call ‘business end’ of the TTO: they invoice entrepreneurs/companies that are licensing the technology (for fees, royalties, etc.), receive payments, and allocate them as dictated by the technology license and university policy. By extension, they will often also handle assignment of rights for inventions and finalize agreements of royalty allocations between co-inventors. (Side note here for faculty/students/postdocs: universities often have ‘default’ policies for allocations that are available on the TTO website – some examples here, here, here).
Operations: The Operations or Ops team is responsible for the TTO’s operations, so they most frequently interact with other teams in the TTO or other parts of university administration, and rarely interact with academics or entrepreneurs. However, they’re great to know because they often plan TTO events, such as monthly updates on new discoveries or annual tech showcases. As an academic, these events are a chance to showcase your work and inventions to entrepreneurs or companies that are potential licensees. As an entrepreneur, these events are your chance to browse what the university has and talk directly with inventors.
Communications: Not every TTO has its own communications (Comms) person or team, but they should. The purpose of the Comms Team is to keep the TTO connected to the university community and the entrepreneurial and business communities, as well as raise the profile of the TTO to the outside world. They are looking for stories to highlight the success of inventions and IP from the TTO, so getting to know them is a chance to send your successes to them (either as an academic or as an entrepreneur) for a win-win situation: they get content to publish, and it raises the profile of your research or company.
Administrative assistants: The administrative assistants support the roles of other members of the TTO and while that’s self-explanatory, I wanted to highlight them here because 1) they are underappreciated and 2) knowing the right admin assist to contact can be the difference between getting a meeting the next week or getting radio silence for months. They often manage logistics, scheduling, and much of what needs to get done in the office. They field calls from both inside and outside the university and try to connect individuals with the right resources. So if you’re not sure who you should be in contact with, they’re a great starting point.
Director or VP of Tech Transfer: The Director is the person in charge of the whole TTO, including setting its strategy and facilitating relationships with other parts of the university or other institutions. Their specific responsibilities and level of interaction with academic inventors and entrepreneurs vary by TTO, but typically they are the person with final sign-off or approval on a license to a company or entrepreneur. They are also often founts of wisdom who have seen many seasons in BD and/or in TTO’s and can provide high level context on relationships between the TTO and other parts of the university or with outside entities.
New Ventures
The growing interest in entrepreneurship, startups, and new ventures over the last decade has led to a flurry of new roles in university TTOs aimed at supporting and launching startups from university inventions. The structure of the new ventures component of a TTO can vary significantly, but overall can contain:
Director of New Ventures/Entrepreneurship: Depending on the TTO, this person’s responsibilities can vary from advising startups, to networking and supporting the ecosystem as a whole, to presiding over disbursement of seed funds. If you’re a student or faculty interested in launching a new venture, I would highly recommend getting to know this person and asking their advice on how to proceed. If you’re an entrepreneur, this person is often great for learning what tech may be promising or ready to launch a company around, and for learning what talent may be interested in joining a startup or what resources are available for startups.
New Venture Managers/Program Mangers: These people are still rare in the TTO ecosystem, but they are usually the boots on the ground managing the new venture programs. This includes administering venture development programs (think I-CORPS and accelerator programs) and providing support strategic and operational support to a portfolio of new ventures. The responsibilities of their role often overlap with those of New Entrepreneurs (see below), though Venture Managers aren’t necessarily looking to launch a startup themselves. But some still do make the jump from their role into a startup!
Entrepreneurs in Residence/Mentors in Residence: EIRs and MIRs are folks volunteering their time or have part-time positions to provide advice or consulting to university startups. Some are entrepreneurs looking for their next company, and the EIR role allows them to learn about and keep updated on multiple potential leads from different labs. Others are consultants who donate their time upfront and are looking for paid contracts once the company has launched. And still others are current executives with business experience who just enjoy giving advice and feedback. For academics looking to launch new ventures, EIRs and MIRs can provide invaluable advice on the viability of your startup, what parts are promising, where there are holes in your story or data. EIRS and MIRs can make introductions to others who may be assets for your startup, possible funders, or other people who would be valuable for your network. On the flip side as an entrepreneur, EIRs may provide you with advice and a broadened network, but they may also serve as competition if they see themselves in the same role you envision for yourself. If you’re interested in tech from a particular university, I’d recommend looking into becoming an EIR as a win-win: you’ll get an early look at technologies that may be your next new venture, and you’ll be guiding academic teams to produce technologies and data packages around those technologies that are more ready for investment.
New Entrepreneurs (Blavatnik Fellows, Venture Fellows, etc.): New entrepreneurs differ from EIRs in that they are first-time entrepreneurs and are typically willing to do more legwork than an EIR, who is primarily advisory or executive. They are often coming from a professional role (e.g., operations, consulting) and are making the jump into startups, so they are similarly evaluating the technologies at a university to find one to launch a venture around. Based on their background, the new entrepreneur can help with everything from building pitch decks and honing the startup story, to networking with investors, to finding lab or office space for a new venture. They are often supported by the university for 1-2 years (at Yale, we have the Blavatnik Fellowship, which provides us a 1-year stipend). For academics, they are invaluable to jump start a venture because your time and business expertise is limited, but you don’t yet have funds to pay an employee. For entrepreneurs, they can also be invaluable resources to help launch a company — just remember that they’re looking for a startup to join or cofound, so don’t take advantage of their help and then leave them high and dry.
External Partnerships
I’ll end this post (dangerously) on the group I know the least about but has become increasingly important as government financial support for research has waned: external partnerships. External partnerships are companies or other groups that fund research at the academic institution. There are often rights or restrictions on any IP generated, ranging from an option (e.g., Pharma X has an automatic option of 6 months on any generated IP) to first right-of-refusal on a license. In one extreme case I heard of, the funding stipulated that no IP could be filed on the funded research: an unfortunate situation for the faculty member.
I’m not sure how most institutions handle external partnerships within the tech transfer office versus creating a separate office to handle them. At Yale, the Office of Cooperative Research was involved in helping arrange and execute external partnerships, but the majority of this work occurred through the Office of Sponsored Projects. This office had an entire separate set of staff built around structuring and managing these partnerships. The UNC system also has a separate office for this, known as Industry Partnerships. However, some institutions may also handle these partnerships in the TTO, either in a designated team or across the roles above.
Acknowledgements:
This post started as brain-dump synthesizing some of what I learned as a Blavatnik Fellow at Yale. Along the way, it morphed into a full-form breakdown of TTO roles. Many thanks to Jamie Testai and Kirsten Leute at Osage University Partners for their content contributions and wise editing feedback.
And a huge thank you to (in alphabetical order) Barry Schweitzer, Bill Wiesler, Bridget Martell, Colin Foster, Dave Lewin, Diane Harmon, Jim Boyle, John Puziss, Jon Soderstrom, Morag Grassie, Natasha Samuels, Rich Andersson, Tom Jasinksi, and so many more people at Yale’s Office of Cooperative Research for everything I learned as a Blavatnik Fellow.
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1 For an excellent summary of how the role of TTOs has changed over the past 40 years, see https://www.linkedin.com/pulse/evolution-technology-transfer-arundeep-s-pradhan-rttp/
2 For those of you who can’t access these programs but are looking for a role like this, know that it generally doesn’t hurt to reach out to a TTO offering to work in exchange for experience. Just please, be realistic about your time commitment for helping.
Natalie Jing Ma, PhD 