Technology Transfer

1
Technology Transfer

• New technology is commercialized to
• Ensure public benefit from research
• Provide inventor satisfaction and motivation
• Meet obligations to sponsors for compliance with
  technology transfer provision
• Generate revenue to support research and research
  infrastructure

2
Intellectual Property Policy

• Board of Regents Policy Agreement
• Bayh-Dole Act ( P.L. 98-620 and 37 CFR Part 401)
• Tax Reform Act of 1986
• Internal Revenue Service Procedure 97-14
  Regarding Guidelines for Research Agreements,
  Issued Jan. 10, 1997

3
Internal Revenue Service Procedure 97-14
Regarding Guidelines for Research Agreements,
Issued Jan. 10, 1997
Purpose To set forth conditions under which a
research agreement does not result in private
business use under 141 (b) of the Internal
Revenue Code of 1986.
Section 5.02. any license or other use of
resulting technology by the sponsor is permitted
only on the same terms as any unrelated,
non-sponsoring party (that is, the sponsor must
pay a competitive price for its use), with the
price paid for that use determined at the time
the license or resulting technology is available
for use
4
In research grants and contracts not sponsored by
the federal government

• A university will generally claim title to the
  technology.
• A university may offer the sponsor a
  non-exclusive license to technology for internal
  use
• A university may sometimes offer the sponsor a
  first option to an exclusive license to resulting
  technology on fair and reasonable terms to be
  negotiated.
• A university will usually retain the right to
  practice the technology in research and
  education.
• A university will not generally obligate
  background rights.
• Potential conflicts of interest for those
  responsible for the design, conduct, or reporting
  of research must be managed.

5
The Best for Less

• When a company sponsors research at a university
  
• it has access to buildings, facilities, and
  research resources built with public funds
• it does not pay for the full costs of the
  research since most universities have capped
  indirect costs
• there are generally no fixed fees by which
  private research labs recover IRR costs

6
Technology Transfer

• For a faculty member, a patent is the ultimate
  publication - Russ Lea, NCSU

7

• A start-up company can be the best available
  licensee and best able to bring a new technology
  to the market.

8
Issues Raised by Faculty Start-up Companies

• Conflict of interest
• Conflict of commitment
• Sponsorship of research at the university and the
  role of the principal investigator
• Use of university facilities by the company
• Use of the universitys name by the company
• The employment of current university students by
  the company
• The role of the universitys students in the
  companys research
• The relationship of research supported by the
  company to other research in the same area
  supported by other sponsors
• Consulting by the faculty member for the company
• The use of donations the company may make to
  university
• The risk that state funds will inadvertently be
  used to benefit a private company or state
  employees
• Treatment of the proceeds of the universitys
  equity in the start-up if equity was accepted as
  part of the licensing fee and if the faculty
  member also holds equity in the company