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Why On-Demand IP Counsel Makes Sense for the University Technology Transfer Office

By Peter Gordon, January 30, 2019

IP Counsel for Technology Transfer OfficesTechnology transfer is big business, and much of the work supporting this industry falls on the shoulders of the university technology transfer office (“TTO”).  A typical TTO handles the development, transfer and commercialization of new technology, requiring considerable business, technical, scientific, legal and venture capital experience on the part of its staff.

TTOs are often expected to handle the full range of requirements for the portfolios they manage, including performing many tasks that would often be handled by in-house IP counsel. This can result in a work backlog, making it difficult to stay on top of filing deadlines and preserve the university’s IP rights. When TTOs are faced with this situation, on-demand intellectual property counsel services can often provide the solution. Patent GC is a pioneer of this practice model, having served as part-time, in-house IP counsel to TTOs at several large, top-tier universities, as well as for smaller institutions with a single tech transfer officer. Drawing on this wealth of experience, Patent GC’s on-demand IP attorneys can offer TTOs the following benefits:

  1. TTO-specific experience

    Patent GC attorneys have worked with numerous TTOs in this capacity, and can draw on this direct experience for the benefit of your TTO. They bring a working knowledge of day-to-day TTO functions, such as reviewing invention disclosures, researching prior art, analyzing budgets, developing and implementing best practices, and making important application-related decisions. Whereas most patent lawyers have not worked alongside TTO officers in this capacity, the practical experience of Patent GC’s team enables them to jump in and provide support with minimal oversight.

  2. Objective asset analysis

    While outside counsel typically handles the TTO’s patent prosecution work, it is often useful to have an independent review of an invention disclosure before filing or of a pending application at a key stage in patent prosecution. Patent GC can independently review a patent portfolio of any size, from hundreds of assets to just one, providing deliverables tailored to the TTO’s specific goals with objective recommendations.

  3. Greater Efficiency for the TTO

    Part-time IP lawyers can help solve time-management problems within the office. Specifically, many TTO officers have PhDs, MBAs, JDs and other advanced degrees, and are therefore, well-versed in the complexities of both the technology and the legal/ business issues surrounding patents, licensing and IP monetization. Notwithstanding this skill-set, managing day-to-day IP issues is not always the best use of their time. With a part-time IP attorney handling such tasks as supervising outside counsel and managing the dockets, the TTO officer is freed up to work with researchers and licensees, identifying valuable technology for licensing, establishing and negotiating licensing relationships and research alliances, and ultimately, driving more licensing revenue for the university. Patent GC has partnered with TTOs from the country’s leading research institutions to help optimize efficiency in the office.

  4. Flexible, customized offerings
    The reasons why the TTO may need additional support will vary – perhaps there is an unexpected absence within the office or simply a spike in workload. Patent GC’ services and fee arrangements are flexible and can be customized to suit the needs of the TTO. For instance, the PGC attorney can dedicate several days a week to the TTO, if necessary to fill a short-term opening, or services can be provided on a purely on-demand (hourly) or project-based basis.
  1. Budget-neutral services
    Normal patent prosecution and maintenance expenses typically are passed on to a licensee in a license agreement, such that the licensee is responsible for all legal fees, including those of external counsel. Due to this common industry practice, it is often more cost effective for the TTO to use Patent GC for oversight of its licensed portfolio rather than asking the university’s general counsel office to step in, as Patent GC’s fees will be covered by the licensee, making our services budget-neutral for the university.

With these substantial benefits available to your TTO, it is worth considering part-time IP counsel services to help with your office’s patent-related work. For more information, please contact our Managing Member, Peter Gordon, at pgordon@patentgc.com or 617-737-5010, or contact us via the website.