Ireland: Current Issues: Technology Transfer Offices

Last Updated: 10 March 2011
Article by Peppe Santoro

Technology transfer encompasses a broad range of activities but, in a third level education context, most typically refers to the commercialisation (whether at the instance of the educational institution concerned or in response to industry demand) of research developed within the institution.

That commercialisation most often happens either by way of licence (where the institution licences the technology to an existing business in exchange for royalties and other payments) or a spinout (where a start-up company is established to advance the research and/or bring it to market).

All of the main Irish universities (UCD, TCD, DCU, UCC, UL, Galway, Maynooth), institutes of technology and a few others (such as the Royal College of Surgeons in Ireland) have well-established and focussed technology transfer offices (TTOs).

This article considers four current issues that are relevant to those organisations.

Managing Risk

In addition to a highly developed commercialisation skillset, most TTOs have a keen understanding of risk management. With that in mind, many have been set up as separate and autonomous limited liability companies within the overall structure of the educational institution. Even in these circumstances, the need for institutions to have control over them TTOs means the liability of the TTO and the institution can easily become intertwined.

Establishing reporting and governance procedures is important. Where institutions or TTOs perceive that particular risks may exist, an added advantage of a legal investigation is that it may be covered by legal professional privilege and therefore benefit from disclosure exemptions under FOI, data protection and other legislation. In addition we can advise on best corporate governance practice.

The importance of documentation

Time and time again the importance of clear, accurate documentation is shown. Cases such as Cyprotex Discovery v. University of Sheffield show that there are real and significant costs (in terms of management time and delayed market access) when technology transfer projects go bad.

The relatively low upfront costs of ensuring that the contractual frameworks for a TTO is well drafted, clear and complete are outweighed by the costs of a simple failure. Failing to document agreements from an early stage more often than not turns out to be a false economy.

Joint ownership of intellectual property

Our experience has shown that joint ownership of intellectual property rights is usually problematic. Most institutions are well aware of this risk and structure their arrangements (often over long periods) to make sure that IP is held solely by one party and licensed to other parties on carefully negotiated terms.

Occasionally there are transactions that demand a shared ownership of core IP rights. But, is rare that an alternative commercial solution can not be found. Such alternative solutions may involve joint ownership, but with transfer obligations under certain default scenarios, sole ownership but with one party holding a security interest over the IP or the grant of an exclusive licence to the other party within a defined field of use.

Aligning internal and external interests

The highest priority of staff and research personnel is often their research and academic progression. Aligning their priorities with commercial parties is a frequent challenge for TTOs. It requires recognition of the different motivations and interests of various personalities. We have witnessed Irish TTOs developing great skill and expertise in this area.

Conclusion

The practice of TTOs is developing in response to the demands of the private sector. It is well worth benchmarking your current practice against other TTOs in Ireland and globally to get the most from your TTO.

Relevant Links:

Cyprotex Discovery v. University of Sheffield [2003] EWHC 760 (TCC)

Disclaimer

This information is for guidance purposes only. It does not constitute legal or professional advice. Professional or legal advice should be obtained before taking or refraining from any action as a result of the contents of this publication. No liability is accepted by Eversheds O'Donnell Sweeney for any action taken in reliance on the information contained herein. Any and all information is subject to change. Eversheds O'Donnell Sweeney is not responsible for the contents of any other website or third party material which can be accessed through this website.

Eversheds O'Donnell Sweeney is an Irish partnership and a member firm of the Eversheds International network of firms affiliated with Eversheds International Limited, an English company limited by guarantee. Member firms of Eversheds International are independent firms and members of Eversheds International Limited, but have no authority to obligate or bind Eversheds International Limited or one another vis-à-vis third parties. Neither Eversheds International Limited nor any of its member firms have any liability for each other's acts or omissions.

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