A Typical Day at the University of Waterloo Technology Transfer and Licensing Office


The University of Waterloo Technology Transfer and Licensing Office (TTLO) is part of the University Office of Research and commenced operations in its present form in 1992. The office is relatively small in comparison to similar offices in Canadian universities and operates with three people--G.G.H. (Jerry) Gray as director, Scott Inwood as the commercialization associate, and Audrey Babensee, who performs the role of administrative assistant. The University of Waterloo TTLO is also organized somewhat differently, with the "technology transfer" function operating separately from the "contracts" function. This is not particularly important in itself, but it can and often does add an element of uncertainty to the daily operations of the TTLO.

Each day starts at 8:00 a.m. and concludes around 5:00 p.m. The first "certainty" of each day is that one never really knows precisely what the day will bring. This represents not only a challenge but also ensures that the work of the TTLO is dynamic and virtually always interesting. Little did I know on August 20, 1999 when I answered the telephone at 11:00 a.m. that I would be asked to write this article for Science's Next Wave or that I would actually agree to do so.

In the most basic terms, the TTLO mandate includes protecting and commercializing technologies brought to it by university researchers, and determining which technologies are suitable candidates for transfer (licensing or equity) to receptor companies. Additional functions include: providing advice and direction to researchers with respect to the university's intellectual property policy; organizing and offering seminars and forums on intellectual property matters to students, researchers, faculty associations, and new faculty; and providing direction, advice, and support with respect to general intellectual property issues to the university's senior management. Time must also be set aside every day to deal with letters, faxes, and e-mail from a variety of sources (government agencies, individuals, companies, universities, and others) interested in the University of Waterloo technology.

Some of the other tasks and activities that come up include dealing with active patent applications, as well as making decisions regarding payment of patent renewal/maintenance fees. We also are available to discuss ongoing licensing issues with researchers and meet with the researchers as well as with industry representatives (jointly and separately) in support of industry-sponsored research agreements in the process of negotiation by the "contracts" group.

Due to the high cost of patent protection (typically $10,000 to $20,000 per patent), significant effort must be devoted to issues arising out of patent prosecution activities associated with patent applications. Patent prosecution issues are often associated with deadlines which, if missed, can result in the need to pay a penalty fee or even worse, the abandonment of the patent application itself. Making decisions in this area involves working in close association with both the patent agent who has prepared the patent application and the inventors, while ensuring that the response to the patent office is prepared and filed before the deadline date. Such activities can be trying as researchers are busy and often don't respond to inquiries or other requirements in as timely a manner as one might like. A flurry of last minute activity is often the rule rather than the exception. In the time remaining in the day, there is a need to prepare drafts and final versions of a variety of documents and agreements including technology disclosures, researcher agreements, option agreements, licenses, royalty agreements, assignments, nondisclosure agreements, etc.

While all this is going on, attention must be paid to TTLO deals with operating businesses that require near real-time responses and, as a result, time is always of the essence. Demands from the businesses that work with the University of Waterloo must often be accommodated by doing the work in the evening or on weekends.

Because the ultimate goal of any technology transfer office is to successfully transfer university technologies to the commercial marketplace, as director I work daily in close association with the TTLO commercialization associate. A large part of the commercialization associate's job is to balance the publication pressures faced by most university researchers against the need for absolute confidentiality to preserve the broadest possible patent protection opportunity. As a result every TTLO must make quick patent investment decisions based on very limited assessment of an invention's potential market value and range of applicability. Skills in the area of licensing and business and corporate operations are necessary because most transfers of technology occur through licensing arrangements and, in the case of platform-type technologies (those upon which you can construct a viable business operation), the creation of a spin-off company. A key job of the commercialization associate is to identify potential business opportunities as soon as possible after the TTLO has taken on the technology in order to limit exposure to the escalating costs associated with filing and prosecuting patents in multiple jurisdictions.

Typically, after identifying potential partners, purchasers, or other "receptors" of our technology, the commercialization associate will forward a nonconfidential technology data sheet to each receptor and, if real interest is expressed, this is followed by negotiation of both a confidentiality agreement between the parties and, often, a licensing of the technology. These license negotiations usually involve many twists and turns to either accommodate the market dynamics of a certain industry sector or to accommodate the specific needs of the commercial receptor, the university, or the inventor. No two license negotiations are ever the same, and flexibility and creativity are required to advance a negotiation to the signing of an actual license agreement. In this environment, broad technical knowledge and responsiveness are critical to identifying, protecting, and commercializing a host of technologies ranging over such divergent areas as ballet shoes to microelectronic circuits, software, and groundwater remediation techniques.

In the end it may be something of an understatement to say, "It is almost a certainty that each succeeding day will be full of new, often unusual, and certainly challenging demands." I have been in this position for over 3 years and I can say, without fear of contradiction, that no two days have ever been the same and there has not been a single day when the job has not been interesting and challenging. The activities associated with technology transfer exposes one to a variety of disciplines--business, academe, law, science/engineering--and of course involves working closely with people from all of these areas. With all of the work to be done each day incorporating tasks involving such a variety of fields and so many interesting and talented people, every day can be expected to be even more interesting and eventful than the preceding one.

Technology transfer is an exciting and dynamic activity and is a field that has promising growth potential. This growth will demand people with multidiscipline technical backgrounds along with business or legal backgrounds or several years of equivalent workplace experience.

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