Building an In-House Practice Technology Transfer Office

By Hamid R. Piroozi

©2017. Published in Landslide, Vol. 10, No. 2, November/December 2017, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Tech transfer offices that operate in the black are more of an exception than the rule. In fact, according to a report from the Brookings Institution, as much as 84 percent of the tech transfer offices were in the red in 2012, which was an improvement from a 20-year average of 87 percent.1 With these numbers, it can be argued that but for the requirement placed on universities vis-à-vis the Bayh-Dole Act, most tech transfer offices would have shut down or at least seriously decreased in size. The single largest ticket item in costs associated with a typical technology transfer office is legal fees for outside counsel (except for those with a large in-house practice). Consequently, for most offices the usual response to submissions of invention disclosures (RoIs) from university inventors, especially those who are not yet well regarded by the university, is that without a sponsor to pay for the patent costs, the office is unable to help. Additionally, in any university the number of inventors who submit invention disclosures as compared to the overall number of faculty is very small. Consequently, this lack of interest in processing invention disclosures beyond a few token provisional patent applications will result in a futile disinterest by those few inventive individuals, and soon the office will become the processing center for a few well-connected inventors with big sponsorship.

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