Technology transfer is the process of transferring scientific findings from one organization to another (typically industry) for the purpose of further development and/or commercialization. The process typically includes:
- Identifying new technologies
- Protecting technologies through intellectual property rights (e.g. patents and copyrights)
- Forming development and commercialization strategies such as marketing and licensing to existing private sector companies, or creating new start-up companies based on the technology.
As a rule in Spain, as in many other countries, the results of the research done at universities, public bodies and other research institutions belong by Law to such entities (owners). However, researchers retain the moral right to be acknowledged as authors or inventors of the works and inventions made by them in the course of their research activities, and to be financially rewarded if such works and inventions generate revenues ("Art. 20 de la Ley 11/1986, de 20 de marzo, de patentes de invención y modelos de utilidad" modified by "Ley 14/2011, de 1 de junio, de la Ciencia, la Tecnología y la Innovación"). In the countries (e.g. US) where this is not so by Law, assignments are usually in place between the researcher and the university or research institute so that this becomes in practice so.
Should CRG not be interested for any reason whatsoever in protecting and/or exploiting the results of your research at CRG, it could waive the rights it owns on such results in your favour as author or inventor in the way described in our corporate Intellectual Property and Technology Transfer Policy.
Since 2005, the Technology and Business Development Office at CRG (TBDO - former Technology Transfer Office or TTO) is responsible for materializing CRG's-based efforts at capturing the value emanating from CRG's research activities. To achieve this goal, TBDO helps researchers by:
- Identifying and assessing the market potential of innovations, discoveries and inventions made at CRG.
- Securing the necessary property rights.
- Managing CRG´s proof of concept fund and related initiatives.
- Acting as a liaison between CRG's innovations and researchers, and industry.
- Marketing and licensing CRG's expertise and technologies through the negotiation and execution of licensing agreements, and the creation of spin-off companies.
- Creating additional value through other intellectual property-related transactions, including but not limited to consultancy, sponsored research and services.
- Stimulating innovation and entrepreneurship within the CRG community through different types of activities.
It is the mission of CRG "to discover and advance knowledge for the benefit of society, public health and economic prosperity". This includes ensuring that the results of our scientific activity are as far as possible translated into useful products and services that improve people's lives and contribute to job creation, and therefore to the economic development and welfare of our region. This is best done by getting the ideas, inventions and technologies developed with public funds into the hands of the private sector as quickly as possible so that they are further developed into a form that is useful to the community.
Returning to taxpayers part of the investment made into research is a strong motivation for technology transfer at CRG, but successful technology transfer can bring other rewards, such as: recognition for discoveries made at the institution (both for the social and economic impact), helping attract and retain talented faculty and corporate research support, and generating revenues to support further research and education.
There are many reasons why researchers in general, and CRG researchers in particular should engage in technology transfer activities. Below are just a few, although you might have others:
- Finding applications for your outgoing research
- Making a positive impact on society
- Achieving personal recognition and/or financial rewards
- Securing further funding from private and public sources
- Creating educational and job opportunities for students
- Feeling a sense of personal fulfilment
CRG shares the returns of all its technology transfer activities with the researchers involved, and it does so in different ways depending on the type of activity, level of involvement, etc. For example, if patents and software are licensed out, the resulting revenues will be distributed as follows:
|
Accumulated Net Income received by the CRG |
Percentage to be allocated to Authors and Inventors |
Percentage allocated to CRG Valorization Fund |
Percentage allocated to TBDO operational account |
|
Up to or equal to € 10,000 |
95% |
0% |
5% |
|
Above € 10,000 and up to or equal to € 125,000 |
50% |
45% |
5% |
|
Above € 125,000 and up to or equal to € 500,000 |
40% |
55% |
5% |
|
Above € 500,000 |
30% |
65% |
5% |
Further details, and other ways in which CRG shares the income from its technology transfer activities with its researchers (e.g. from consultancy work, sponsored research and services) are further specified in our corporate Intellectual Property and Technology Transfer Policy.
Researchers often exchange proprietary information and materials, and establish collaborations with other researchers in industry and academia that may lead to relevant improvements, developments, discoveries and inventions. While you should report to us any relevant result by means of the appropriate invention disclosure, you should also formalize the transfer of CRG's proprietary materials and information, and the establishment of relevant collaborations to ensure that:
| (i) | such proprietary information and materials are used by all the parties involved for the purpose for which they were provided and no other, and |
| (ii) | any relevant results arising from collaborations, or from the use of CRG proprietary materials and information are duly managed, protected, disclosed and commercialized taking into account all the parties' interests and contributions. |
This is best done through the establishment of MTAs, NDAs and RCAs.
Importantly, agreements related to your work at CRG can only be negotiated and signed by the persons at CRG duly authorized to do so. It is not advised to initiate certain collaborations, transfer proprietary materials, or disclose confidential information of your laboratory to third parties without the establishment of the corresponding formal agreements.
Material Transfer Agreements, also known as MTAs, are contracts that govern the transfer of tangible research materials (e.g. plasmids, antibodies, cells and mouse strains, chemical compounds, etc.) between two organizations.
Confidential Disclosure Agreements (CDAs), also known as Non-Disclosure Agreements (NDAs), are contracts that govern the exchange of confidential information between two or more organizations. Usually exchanges are reciprocal, but it can also be that one party discloses confidential information unilaterally to the other party for a given purpose.
Research Collaboration Agreements (RCAs), also known as Collaborative Research Agreements (CRAs), are contracts that govern the collaboration between two or more organizations, facilitating the exchange of materials and information between the collaborating groups, and setting the rules regarding ownership, contributions, publication, protection and exploitation of relevant research results arising from the collaboration.
What if there is more than one institution or researcher involved in Technology transfer activities?
If researchers from more than one institution are involved in a certain work or invention that can potentially generate revenues from related technology transfer activities, the institutions will have to agree amongst themselves in advance on the percentage of that work or invention that shall be allocated to each of them, mostly depending on the contributions of their respective authors or inventors. This will determine the overall contribution of each institution, and the way they manage and share expenses and returns from such technology transfer activities, which will have to be reflected in a so-called Joint-Ownership Agreement.
Similarly, the percentage belonging to each institution that corresponds to each of their individual researchers will depend on the respective contribution of such researchers to the particular work or invention, as reported by them in advance in the form disclosing such work or invention.
CRG has three different forms for disclosing inventions, software and research tools, all known globally as Invention Disclosure Forms.
Briefly, an Invention Disclosure is a formal document that captures the essence of a work or invention, the people having contributed to it (the authors or inventors), and their degree of contribution, as well as the involvement of third parties in case that this would imply obligations towards them (e.g. collaborators, other researchers or institutions that provided information or materials, entities that financed the project or its personnel, etc.). The Invention Disclosure is a confidential document, and can be complemented if wished with other, available information (e.g. draft manusript, etc.).
CRG has three different forms for disclosing inventions, software and research tools. Please use the most suitable one to communicate any possible development arising from your own or collaborative work to your TBDO, if you feel that it could be potentially suitable for commercialization.
Many times, one cannot be completely sure; however, you do know when your work is yielding exciting results that could have a potential useful application. We encourage you to contact your TBDO during your early research activities to be aware of the options that will best leverage the commercial potential of your research projects. TBDO staff are trained to assist you with questions related to patenting, marketability, funding sources, commercial partners, new business spin-off considerations, CRG policies and procedures, and much more.
TBDO will also help you evaluate if your results are set for Technology Transfer by asking (and trying itself to respond to) questions such as:
- What is the invention about? What would be the final product?
- Is the product/invention patentable? Are there other forms of protection?
- Is there a market for the invention? How big?
- Are there alternatives/competitors? What are the advantages of our technology?
- Can we find a business interested in licensing, developing and commercializing this technology? Can we start a new company?
- How much development is needed? Are there available funds?
- What is the involvement or third parties?
- Are you researcher motivated to move forward? How much?
- Etc.
To facilitate the assessment, the best way to report any possible work or invention arising from your own or collaborative activities that might have a potential for technology transfer is through an Invention Disclosure Form.
Having an innovative product reach the market – in particular in the life sciences sector – is often a long process that requires a high level of investment, and has a high failure rate. For example, putting a drug in the market can take more than 10-12 years of development, and cost millions of dollars or euros. The only way that companies will therefore take the risk is ensuring that their intellectual property (i.e. the basis for their products) is duly covered by patents and other forms of protection that give them the monopoly to commercialize their inventions (or exclude others from doing so) in the absence of competition till benefits are made, and their investment is recovered.
Intellectual Property Rights (IPR) is an umbrella term for various legal, exclusive rights that protect 'products of the mind', including:
- Industrial Property Rights:
- Patents and utility models → for technical innovations
- Plant variety rights → for new plant varieties
- Industrial design rights → for innovations in design
- Trademarks → for corporate identity
- Intellectual Property
- Copyrights → for literary, artistic and scientific creations (e.g. software)
- Others
- Know how/trade secrets → for confidential information.
IPR (in particular patents) are essential to protect life science innovations so that they eventually reach the market. Indeed, IPR are often the guarantee that a party (the owner), and no other without its permission, will be able to commercialize a particular technology or exclude others from doing so. This is fundamental for technologies that require high levels of investment to be developed into marketable products (e.g. biomedical), as no company or investor will perform such high level of investment without first ensuring that others won't be able to compete or use without compensation the outcome of it, and this for a period of time that is long enough to allow the owner of the technology to recover its investment and make a benefit out of it.
Patents are a major form of protection of results arising from the research done at CRG.
A patent is an exclusive right given by law to owners of inventions to make use of, and exploit, their inventions in a given territory, and for a limited period (usually 20 years from the date of first filing). By granting the inventor a temporary monopoly in exchange for a full description of how to perform the invention, patents play a key role in developing industry around the world.
Once the owner of an invention has been granted a patent in any particular country, they then have the legal authority to exclude others from making, using, or selling the claimed invention in that country without their consent, for a fixed period of time. In this way, owners of inventions can prevent others from benefiting from their inventions and, ultimately, sharing in profits from the invention, without their permission. In return for these ownership rights, the applicant must make public the complete details of the patented invention, including background information (the 'state of the art'), the nature of any technical problems solved by the invention, a detailed description of the invention and how it works, and illustrations of the invention where appropriate.
Patent protection in a given country does not extend to other countries – owners of inventions must file an application in each territory where they want their patent to be effective. To maintain the validity of a patent, the owner needs to pay fees to each appropriate patent authority; failure to do so causes the patent rights to lapse. Most countries also require that the patent is "worked". This means that the protected invention is put to commercial use, within a specified period.
A patentable invention can be a product or a process that gives a new technical solution to a problem. It can also be a new method of doing things, the composition of a new product, or a technical improvement on how certain objects work.
For an invention to be patentable, it must satisfy three key criteria:
- It must be NOVEL, i.e. the invention should not be publicly known in any way, anywhere in the world. Inventors and owners of inventions should therefore be careful to keep the invention secret until a patent application has been successfully made. If the idea has already been talked about, commercially exploited, advertised or demonstrated, then the novelty of the invention can be seriously compromised. If the invention needs to be disclosed to a third party before a patent application has been made, a non-disclosure (confidentiality) agreement should be drawn up. Once a Date of Filing has been obtained for the patent application, the invention can claim a "Patent Pending" status and the applicant can proceed to disclose the invention as indicated in the patent application to interested parties. However, as part of the application process, the patent application will be published after 18 months and if the statutory requirements are met. Once published, details of the invention will be made available for public inspection. Until then, it is advisable to keep the information secret as far as possible.
- It must be INVENTIVE, i.e. the invention must be something that represents an improvement over any existing product or process that is already available, and the improvement must not be obvious to someone with technical skills or knowledge in the invention's particular field. If an invention is new, yet obvious to a person skilled in the art, the invention will not fulfil the inventive step requirement and therefore will not be patentable.
- It must be CAPABLE OF INDUSTRIAL APPLICATION, i.e. the invention must be useful and have some form of practical application. It should be capable of being made or used in some form of industry.
Of note, there are exceptions to patentability, such as discoveries, scientific theories, mathematical models and computer software. Nevertheless, both discoveries and computer software may have a commercial value, so is worth contacting your TBDO and disclose them.
Patenting will not prevent you from publishing or communicating your work. A patent application can be prepared and filed very quickly (in days if necessary, although ideally it takes several weeks), and the more scientists get involved with the process, the faster the drafting and filing will be done. However, serious thought will have to be given to the implications of communicating or publishing an invention too early (even if covered by a patent), as time and costs are important issues that need to be balanced with the need for further development and commercialization.
It is important to remember that the opportunity for obtaining a patent for an invention can be lost if the object of such invention has been made already public in whatever means and form. In other words, no information on an invention should be made available to the public in any way, anywhere in the world, prior to a patent application being filed. In the context of a research institute such CRG, this refers very much in particular to publication in grant applications, journals either as articles or as letters, oral presentation at seminars, or information posted on notice boards on the internet, abstracts, theses, e-mails, poster displays, exhibitions, open days, or confidential disclosures to many people. Any "enabling" information about an invention that is published in any way will constitute a disclosure and weaken or destroy its patentability.
Of note, the review process during submission for a grant or publication of a manuscript are usually considered confidential and not affecting patentability, although, again, care should be taken for very relevant inventions as reviewers as humans and in many cases potential competitors.
Very often, technologies are not mature enough for commercialization despite their inherent potential, and further development is needed to build a case that is attractive enough to engage the interest of industry or investors.
Although not always as many as desired, there are different sources of private and public funding that can help inventors prove the real application of their invention, or build a prototype of a their product or service that could then be used to solicit investment for a new company, or license the new product or invention.
The technology transfer/commercialization process is thus often associated with raising funds as a means to support the development process. While different sources of competitive, public and private funding may be available, CRG has established a Proof of Concept: Commercialization Gap Fund (CGF) in an effort to bridge the gap from research to commercialization in what is sometimes called "the valley of death".
The process for commercially exploiting research can vary widely. For example, it can involve licensing a given technology to an already established company, or setting up joint ventures and partnerships to share both the risks and rewards of bringing new technologies to market. Other vehicles, e.g. spin-offs (also known as spin-outs), are used where the host organization does not have the necessary will, resources or skills to develop a new technology.
Licensing is the process by which CRG (as any other university or research institute) grants rights in a certain product or technology to a third party (typically an industrial partner) in a certain field of activity, and for a certain period. License agreements require the licensee (who can be an already established company or a start-up one) to meet certain milestones and compensate the research institute, who then shares this compensation with the inventors. The way CRG shares the return from products and inventions with the inventors is best described in our corporate Intellectual Property and Technology Transfer Policy.
The TBDO will use all resources and strategies available to market inventions, and identify potential licensees. Sometimes, existing relationships of the inventors, the TBDO staff, and other researchers are useful in marketing an invention and making the right contacts. Other times, professional market searches can assist in identifying prospective licensees. TBDO will also use the information from competing or complementary technologies and agreements to assist our efforts. We will use our Website to post technologies, attend conferences and industry events, and make direct contacts in industry as far as possible. Faculty publications and presentations are often excellent marketing tools as well.
A license is a permission that the owner or controller of intellectual property grants to another party, usually under a license agreement. Licensing enables CRG to maintain ownership, and therefore control, of its Intellectual Property (IP) whilst generating royalty income from the use of its IP. A license deal may include an upfront payment for the right to exploit the invention (either exclusively or non-exclusively), usually in a particular market or for a particular purpose (referred to as the "field"), plus a royalty on the licensee's sales.
A spin-off company is a new business entity, i.e. a new company formed to commercialize one or more related inventions generated from the research work from a parent institution (in our case, CRG). It usually implies a technology and at least one researcher moving from the institute to the new company. Forming a spin-off company may sometimes be an alternative to licensing the intellectual property to an established business.
There can be many different reasons for creating a spin-off company, but usually this is what happens when very innovative technologies do not find their way through the classical licensing to well-established organizations scheme, and the host organization does not have the necessary will, resources or skills to develop internally the new technology. Motivated researchers willing to engage in an entrepreneurial adventure are also critical, ideally combined with the support of business professionals that guide the initial steps, and can take the reins where necessary.
Yes, there are many other ways in which CRG can transfer the knowledge and technology generated by its researchers, and get revenues in return. For example through services and sponsored research. Services can take different shapes, but usually involve using (technical) resources of the institute, or performing some type of specialized activity upon demand by a third party, who in exchange keeps the rights to the results, and compensates the institution (who then compensates the group or researcher) for it. A particular type of service is consulting, in which an individual researcher may be requested to assess the third party –based exclusively on his/her knowledge, and without the use of CRG proprietary rights, results or resources– on matters of interest to such third party, again in exchange for compensation. Services differ from collaborations in the fact that rights and results arising from the performance of technical or research activities belong to the service requester/recipient, in exchange for proper compensation to CRG. As before, the way CRG shares such compensation with groups or researchers is described in our corporate Intellectual Property and Technology Transfer Policy.
Sponsored research is particular form or research, intermediary between the services and a standard collaboration, in which a third party may request –and pay CRG for– the execution of a research project of interest to that third party, that fits into the interests and expertise of a particular research group. In this modality of collaboration, the rights and results of the research will continue belonging to CRG, or be shared with (but not waived in favor of) the third party.
Overall, all these and other activities contribute to the advancement of science and the transfer of knowledge and results to other researchers and stakeholders in academia and industry, fueling their pipelines with innovative products and services, and helping them (and in turn us) improve the people's quality of life and social welfare.
Finding new technological solutions to respond to new challenges requires many different actors from many different disciplines. The CRG is a key player on this new scenario, and we invite you to be a part of it too!!