Insights
Universities and research institutions are epicenters of innovation, producing discoveries across science, engineering, and medicine. Yet moving those breakthroughs from the lab to the marketplace is rarely simple. Each stage of the technology transfer process from invention disclosure to licensing introduces scientific, financial, and legal complexity.
Drawing on our experience advising research institutions, this article outlines best practices that can help tech transfer offices (TTOs) streamline commercialization, mitigate risk, and strengthen their innovation pipelines.
For large research universities, the volume of invention disclosures can be overwhelming. Resource allocation decisions should rely on a structured, data-driven process.
Effective TTOs use:
A transparent, well-documented process helps build faculty trust and improves institutional accountability.
Many TTOs bring in outside patent counsel only after a disclosure is approved. However, early collaboration can add significant value.
Integrating patent attorneys into the assessment stage enables:
Market-informed prioritization of disclosures
Identification of platform technologies for broader protection
Guidance on the regulatory and competitive context affecting patent scope
By adding technical and strategic capacity early, universities can make stronger filing decisions and avoid downstream inefficiencies.
The quality of university patents depends heavily on the team prosecuting them. Aligning with a firm that combines subject-matter knowledge and strategic persistence ensures that core innovations receive the strongest protection possible.
Look for counsel that:
Has experience in the relevant scientific field
Pursues broad, defensible claims that anticipate future applications
Demonstrates tenacity before the USPTO, advocating beyond minimal allowance
This partnership helps institutions protect discoveries that fuel future research and licensing revenue.
A successful TTO is both technically competent and user-friendly. Simplifying administrative processes, such as enabling electronic signatures or online disclosure forms, removes friction for busy staff.
Building stronger relationships also requires:
Regular faculty education about disclosure timing and IP value
Clear communication of next steps once a disclosure is submitted
Reinforcing the TTO as a collaborative partner, not a compliance office
This cultural shift encourages timely invention submissions and deeper collaboration.
Licensing often marks the most complex and time-consuming stage. Some universities rely on rigid templates that slow progress; others adopt more flexible frameworks that protect institutional interests while fostering deal flow.
Best practices include:
Using modular agreement templates that can be tailored by technology type
Defining realistic diligence milestones and reporting requirements
Encouraging transparent communication with licensees and counsel
A clear, balanced process supports faster commercialization and stronger relationships with industry partners.
Once an agreement is signed, risk management continues. Universities must monitor licensees’ conduct to ensure long-term protection of IP assets.
Key watchpoints include:
Claim redirection by licensees to avoid milestone payments
Bankruptcy scenarios, where co-owned patents may be sold at auction
Double patenting across related families with differing ownership
Proactive measures, such as self-executing assignment clauses or escrowed IP rights, can prevent loss of ownership or control.
When inventors also serve as company founders or scientific officers, ownership questions can become blurred. Clear policies and agreements should define:
Which inventions are owned by the university
Boundaries of consulting or advisory work
Obligations to disclose overlapping research
Ongoing compliance training and monitoring help prevent disputes and preserve institutional integrity.
Technologies developed with federal grants fall under the Bayh–Dole Act, which requires institutions to disclose government support and retain certain obligations.
Failing to comply can lead to loss of ownership rights or government claims on IP. TTOs should implement internal audits to confirm that support clauses are properly recorded and reported during patent prosecution.
Continuous education is essential to the success of any tech transfer program. Universities that invest in training faculty and staff on disclosure protocols, IP strategy, and commercialization pathways build a more informed and proactive research culture.
Outside counsel can play a key role through:
Faculty workshops and seminars
In-office training for tech transfer professionals
Joint programs with industry partners to share best practices
Technology transfer is not just about securing patents—it’s about connecting innovation with impact. By applying objective evaluation methods, empowering faculty, and collaborating with specialized IP partners, universities can accelerate commercialization while protecting their most valuable discoveries.
PPG partners with leading universities and research institutions to navigate every stage of this process—from disclosure and patenting to licensing and beyond.