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

1. 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

2. 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 Technology Transfer Overview

3. 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!” Friction Points with the Inventor

4. 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 Building Trust with Inventors

5. 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 Role of the Tech Transfer Professional

6. 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) Types of Inventors

7. 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 Goals for Interacting with Inventors

8. 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

9. 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

10. 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

11. 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

12. If that doesn’t work, there’s always the handy-dandy Voodoo Doll Techniques for Inventor Interactions