Technology 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.
Patent GC provides a range of services for technology transfer offices tailored specifically to meet the needs of each TTO client. Drawing on our experience representing many of the top research institutions in the country, as well as our work serving as senior in-house patent counsel for leading life sciences and technology companies, we help TTOs more efficiently manage their IP assets.
Services for TTOs include:
Part-Time In-House Counsel
Patent GC can act as your in-house IP counsel, on a part- or full-time basis, helping to manage the docket, supervise outside counsel, work with researchers/ investigators, research prior art, analyze budgets and make key application-related decisions. This service frees up the TTO team to work with researchers and licensees, and, if agreed to in advance with a licensee, our work can be budget neutral to the University.
Reviews of Disclosures, Applications & Patents
Using a proprietary methodology for evaluating, scoring and reporting on invention disclosures, pending applications, and issued patents, Patent GC can help TTOs make strategic decisions about new filings, continuing prosecution, or maintenance. Individual reviews can be completed for less than $1000.
Portfolio Review & Prioritization
Patent GC’s methodology can be applied to patent portfolios of any size or defining criteria. The scope of the review is tailored to a specific objective: substantive summary, prosecution process quality, identifying abandonment candidates, and identifying monetization candidates. Portfolio reviews are priced as a fixed fee, based on the size of the portfolio, scope of review, and deliverable.
Patent GC can also assist your office in preparing and analyzing budgets for ongoing prosecution and maintenance of an existing patent portfolio. We can help create a budgeting model and process based on the state of the portfolio, and identify key cost drivers and decisions to be made for a given budget cycle.
Portfolio Management Best Practices
Patent GC attorneys can leverage their experience working within corporations and universities to help develop and implement processes for best practices that will work within your organization and with your outside counsel. In conjunction with a Portfolio Review project, we can help identify key problem areas, set and prioritize goals, and establish a plan to address them.
Contact us to learn more about our on-demand, IP counsel services and technology transfer experience.
Patent GC’s TTO Team includes:
Additional Resources for TTOs:
Blog posts from PGC’s, On-Demand Insights:
- Why On-Demand IP Counsel Makes Sense for the University Technology Transfer Office
- When Obtaining a Patent Assignment Just Isn’t Enough
- Controlling Costs of a Patent Portfolio: The Little Things Do Matter
- Patents on Artificial Intelligence and Machine Learning
- Technology Transfer Office Disclosure Guide: How to Help University Researchers Understand What Constitutes a Public Disclosure
Webinars and related articles:
October, 2020 – Peter Gordon presented a webinar for Tech Transfer Central on managing a patent portfolio under severe budget constraints.