Pathway Map
TECHNOLOGY TRANSFER OFFICER
Preparation overview.
The Technology Transfer (TT) team/ Technology Transfer Office (TTO) supports a spin-out project by helping the founders navigate the spin-out process.
They also facilitate the exchange of relevant materials and information with other stakeholders as appropriate. It’s critical the TT team are proactive in planning for key negotiation and deal completion phases of the spin-out which includes, but is not limited to gathering of background information, establishing any internal and external approvals or consents, requirements for licencing of IP, and/or any other obligation to form the spin-out company.
Third party agreements
The intellectual property (IP) licensed to a spin-out company may have been developed over several years, often across multiple university projects involving various collaborators and funders. Each project may be governed by separate contractual agreements, making it essential to identify and document how each contributed to the overall IP package.
Where confidentiality terms allow, or with the necessary consent from third parties, related funding, sponsorship, or collaboration agreements should be included in the information provided to investors. These agreements help clarify the University’s rights to licence the IP to the spin-out and whether any third parties hold existing licensing or option rights.
Intellectual property register
The IP register lists all intellectual property licensed to the spin-out company. This register will eventually form a schedule at the end of the IP licence agreement, so it must clearly and accurately identify each IP asset.
Typically, the register includes patent families, with details such as application or publication numbers and the current prosecution status (e.g. filed or granted). It may also list design rights, trademarks, confidential know-how, and relevant research or clinical data.
Intellectual property due diligence
IP due diligence is the process carried out by the TT team, in collaboration with the founders and originators, to establish the IP’s origins and ownership. This process involves reviewing any associated rights and how the IP was created, funded, contributed to its development, and held.
The primary goal is to confirm that the university has the legal right to license the IP to the spin-out. The process also assesses the IP’s commercial potential, identifying the problem it solves, the size and nature of the market, and the target customer base.
This evaluation helps the university decide whether to continue investing its financial resources, time, and support into the opportunity and its founders.
Identify
Identifying the types of intellectual property (IP) within an innovation is the first step toward commercialisation. Universities typically use invention disclosure forms submitted by the innovators to determine the nature and scope of the IP created.
Different types of IP require different forms of protection for example, logos and brand names can be protected through trademarks, while novel ideas, methods, or technologies may be protected by filing patents.
The TT team plays a key role in advising founders on the most effective strategies to protect their IP, ensuring it supports future commercial opportunities. Protected IP is often central to the value of a spin-out or licensing deal, so securing strong and broad protection in relevant territories is essential.
Investors and potential licensees will expect a clear record of the IP and its protection status, which is maintained in the IP register.
Ownership
IP ownership usually belongs to the employer, typically the university, under employment law. However, exceptions exist. For example, students are not employees, and ownership can become more complex in cases of collaborative research, where IP may be jointly owned with another institution.
The TT team must work closely with the originators to understand the IP’s development history, determine who owns it, and establish the legal basis for that ownership.
If the University does not own the IP, it cannot automatically licence it to a spin-out. In such cases, additional agreements such as assignments or licence rights may need to be put in place to enable the university to proceed with licensing the IP into the spin-out.
Barriers
During the due diligence process, potential barriers to licensing, also known as encumbrances, must be identified and resolved before a spin-out deal can proceed.
Common barriers include conditions imposed by research funders or sponsors, such as requirements for written consent to commercialise or obligations to share revenues. Another frequent issue is joint ownership of intellectual property, which, depending on the legal jurisdiction, may require the co-owner’s written permission before commercialisation.
If such restrictions are found, the TT team must work to identify them early, negotiate appropriate terms, and put in place any necessary agreements (eg IP management agreements or revenue sharing arrangements) before proceeding with licensing the IP to the spin-out.