Building Trust between Inventors and the Tech Transfer Office at the NIH

Dave Lambertson, Ph.D.

Senior Licensing and Patenting Manager

NIH Office of Technology Transfer

E-mail: lambertsond@mail.nih.gov

Telephone: (301) 435-4632

FLC Mid-Atlantic Regional Meeting

September 2009- Gettysburg, PA

Technology Transfer Overview

• An invention with potential is generated in a lab

• The inventor presents their invention to the Technology Transfer Office (TTO)

• The TTO evaluates the invention and decides whether to pursue a patent or license for the invention

• The TTO monitors the invention and updates the inventor regarding the patent and licensing status of their invention

Friction Points with the Inventor

• Identify where tension between the TTO and inventor can arise, and be prepared to respond appropriately

• Responses to a Negative Initial Evaluation– “The TTO doesn’t understand the invention or its potential!”

• Responses to a Negative Decision During Prosecution– “The patent office doesn’t understand the invention!”

– “The patent office doesn’t realize the difference between the invention and the prior art!”

• Responses to a Negative Decision During Marketing– “The TTO failed to contact the right companies!”

Building Trust with Inventors

• Know your role as a Technology Transfer Manager– It is not just patents and licenses– Understand how to reach inventors on a level they can understand– Determine what type of information you need to provide to inventor

• Know the different types of inventors you may encounter– Determine the tone of your interactions– Determine the complexity of your responses

• Know how the different types of inventors react at each friction point– Determine what approach you take to reaching the inventor

Role of the Tech Transfer Professional• Manage Intellectual Property

• Market and License Inventions

• Facilitate the Technology Transfer Process for Inventors– Assist them in learning the patenting process

• How is patenting different from publishing

• What factors are necessary to reject a patent claim

– Assist them in learning the decision process for continuing and discontinuing patent prosecution

• Factors that increase the chance that prosecution should pursue

• Factors that decrease the chance that prosecution should cease

• This is not a random or personal decision; there are metrics involved

Types of Inventors• Skeptical

– Believes the TTO is ineffective, intrusive and a blemish on the good name of scientific research

– May actively seek to avoid interaction with the TTO or undermine the technology transfer process

• Ambivalent– Doesn’t mind working with the TTO, but would rather be left alone

to do their work

• Involved– Entrepreneurial and enthusiastic about working with the TTO– Interested in learning the patent and licensing process

– Can also be over-involved (e.g., calling everyday for an update on the status of their provisional patent application)

Goals for Interacting with Inventors• Skeptical or Ambivalent

– Convince the inventor that a partnership with the TTO can be productive and beneficial

– Get them to see you as a person, not as a bureaucrat or impediment to their research

– Establish confidence with them that you are capable and have their best interests in mind

• Involved– Maintain their involvement and interest in tech transfer by

encouraging their participation and answering their questions

– Strategically get them to “dial it back” when they are being overbearing

Techniques for Inventor Interactions • Make the effort to know your inventor

– Contact the inventor directly• Try to meet face-to-face at least once, if not every so often

• If you can’t have a face to face meeting, talk via telephone

• Chance to understand each other’s personalities

– Find a common bond• Similar interests or backgrounds; this can even be your interest in

the invention

• Potential to diffuse a tough decision

Techniques for Inventor Interactions • Make the effort to know your inventor’s “baby”

– Learn the science behind their invention• Opportunity to learn more about the invention

• Ask questions- it shows that you have an interest in their work

– Give them a chance to speak to you about the invention• Opportunity to discuss what they are passionate about

• Attend a lab meeting or local talk given by the inventor

• There’s no substitute for caring

Techniques for Inventor Interactions • Good “customer service”

– Respond quickly to inquiries• 2 hour rule- every e-mail or voicemail gets some kind of response • Response may answer the question, or it may set forth the steps

necessary to answer the question and a completion time

– Explain things in an appropriate amount of detail• If the inventor is inquisitive, spend time explaining in great detail• If the inventor is less interested, give them the necessary facts• If the inventor is dismissive, implore them that you have their best

interests in mind

– Shoot straight and speak the truth• Right and wrong matters• This will build an inventor’s confidence in you

Techniques for Inventor Interactions • Be clear and have two-way communication

– Get an inventor’s input prior to an adverse decision– No one wants to feel like they have no say in the fate of

their invention– Have a strong and reasoned explanation for any adverse

decision

• Respond appropriately to inventors – Be understanding of the time and effort the inventor has put

into their invention– Let them make their arguments and consider it– Be firm and put things in perspective

Techniques for Inventor Interactions • If that doesn’t work, there’s always the handy-

dandy Voodoo Doll