Why and what you need to disclose about your invention to your TTO

Most academic institutions have a Technology Transfer Office (TTO), which serves as an interface between academics working on new, groundbreaking science and industry based R&D professionals who are looking for breakthrough technologies for their company to advance. Deciding on what to disclose about your invention and when in conversation with industry can be complex, as expectations often differ and navigating the legalities behind confidential information and patents can be tricky. Here, we discuss why and when you need to work with your TTO and how your TTO can help in navigating industry partnerships and deals.

The first step is disclosing your technology to your technology transfer office, telling them what it is you’ve developed. Your TTO is best placed to know where your new research fits within an industry model and how best to showcase it. Most institutes will have a Technology Disclosure Form which is straightforward to complete and can usually be found on their webpage. If you are unsure how to disclose a technology, you can contact your TTO and they will be able to run you through the process. Once a technology is disclosed the TTO can put together a technology summary which showcases the technology to industry. Technology summaries are relatively standardised with sections covering all the key information that industry partners need to make the first assessment as to whether an opportunity is right for them.

When we asked Rui Manuel Silva, a Knowledge Transfer and Intellectual Property Officer at Universidade NOVA de Lisboa highlighted what information the TTO requires to put together an effective technology summary, he told us that ‘as long as there is already a complete and comprehensive disclosure form on the technology, the filling of the IN-PART submission template is relatively straightforward‘. If you’re looking for further guidance on what information will be included in a technology summary, you can read our previous blog ‘What information do industry R&D teams look for in a project summary?’ here.

A TTO is well practiced in selecting what information is relevant to potential partners, so it’s best to leave this up to them. This means that it is important for academics to disclose all relevant information associated with a technology to allow the TTO ‘to provide the best possible information to prospective contacts’. Withholding information from the TTO, and therefore from the technology summary, could result in industry reviewers declining an opportunity. This means a poorly written summary could slip by with no interest, despite the technology potentially being a good fit. NOVA also outlined that there are legal risks associated with not disclosing all relevant information and by withholding information: ‘there is a major risk in the loss of potential revenue that can be jeopardized as well as the maximisation of impact provided by that invention, which may be harmful for the researcher’s career.’ Academics also need to consider that there are legal rules and guidelines that need to be adhered to which can vary internationally, and across institutions, for example, ‘in Portugal, there is an obligation for inventors to disclose their ventures within 3 months’.

NOVA also highlighted that, although it may not be disclosed on IN-PART, it would be beneficial to know ‘perspectives of future research leading to an improvement/evolution of the technology under assessment.’ Knowing the long or medium term aims for a technology allows the TTO to effectively market it to the most applicable target audience, both through IN-PART and other means. This is especially relevant when preparing a technology for publication on IN-PART as our industry partners are not just looking for traditional licensing deals.

Over the years IN-PART has facilitated introductions between academia and industry that have led to long term research partnerships which have secured additional funding from external bodies to progress a research project together. Universities also regularly tell us how industry feedback on a disclosure has helped identify how they should progress it before offering it up as a licensing deal, something which is only possible if all relevant information is included in the original disclosure.

In addition to marketing your technology, your TTO will also be able to lead the way in handling any Intellectual Property (IP). This can include submitting a patent application, copywriting issues, getting something Trademark registered and other associated legalities that stop others from copying your work. They will also be able to check that you haven’t accidentally infringed upon some already existing IP.

Your TTO will also assist in negotiations and contracts, ensuring that confidential information stays confidential and you don’t accidentally disclose key data. If you keep your TTO up to date on any discussions you are having they will know if an NDA, MTA or other legal agreements need to be signed and will be able to put these in place for you. Keeping the TTO in the loop on any conversations with interested parties will keep any agreements in the best interests of the inventors. Rui explained that without TTO involvement ‘Wrongful and harmful decisions may be taken […] which may jeopardize future impact and revenue. ’

Ultimately, it’s important to remember that the TTO are there to help ‘remove [academics] from this burden, saving them free time for their research.’ This all starts with the full disclosure of all information to aid a good technology summary.

It is also important to keep the TTO up to date with any changes or progress made in relation to a disclosed technology so they ‘Have a sense of what is happening’ and are ‘able to intervene when necessary’. By being kept informed, the TTO is able to update the technology summary published on IN-PART, giving prospective partners the right information and sparking renewed interest from past readers.

In summary, working closely with your TTO every step of the way is vital to give your invention the best legal protection, marketing and negotiations it can get; making sure that it’s reviewed by the right companies and that any potential partnerships lead to maximum revenue and impact from your research.

Written by Leah Nolan. Edited by Dan Judd and Frances Wilkinson.

Copyrights reserved unless otherwise agreed – IN-PART Publishing Ltd., 2023: ‘Why and what you need to disclose about your invention to your TTO’

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