Office of Technology Transfer

The Office of Technology Transfer was created in 1993 in response to a growing need to provide assistance and advice to University of Montana faculty, staff, and students on matters relating to:

• copyright and patent protection;
• appropriate relationships between UM and businesses;
• exploitation of discoveries and innovations made at UM for the public good;
• uncovering and managing the University's entrepreneurial assets; and,
• avoiding "conflict of interest" situations in these processes.

The function of technology transfer is to aid clients in managing their innovative processes. Clients are the inventors/developers/creators, The University of Montana, and the shareholders or the taxpayers of the State of Montana. The innovation process covers everything from basic discovery or creativity and tracking inventions available for licensing to transferring the technology to private industry and tracking revenues received from the innovation.

Goals for Technology Transfer at The University of Montana

1. Protect academic freedom: The role of the University, its faculty, staff and students is not to run a business, but to create and disseminate knowledge. Any conflict in the process that impinges on Academic Freedom is always resolved in its favor.
2. Transfer technology to the commercial sector for public benefit: The public (the tax payers) support the University and the creative activities housed therein. It is the Director of Technology Transfer's responsibility to put into general use any discovery or innovation that could provide public benefit.
3. Generate sources of unrestricted income for institutional purposes, including grants, overhead, and royalty income;
4. Induce industry to fund direct cost of research and training;
5. Limit the institution's legal liability and minimize financial risks;
6. Protect sponsor-university relations;
7. Create consulting and advisory opportunities for faculty;
8. Generate license income for professional and personal use;
9. Develop local and regional enterprises: Attempts should be made to use the new technologies to develop and support local businesses and industries.

The Director of Technology Transfer serves as an advocate on behalf of the faculty and as an advisor to the Administration. This statement reflects the very liberal policy toward the innovators at this University. Clearly defining the role of the office prevents internal misunderstandings and conflicts. The Director of Technology Transfer reports directly through the Office of the Vice President for Research and Development.

Steps in Technology Transfer

• Identifying innovations: This is a process shared between the innovator and the technology transfer office. The "rule of thumb" on this step is "the earlier the better." An understanding of how a proprietary position can be created or destroyed will allow for logical and informed decisions about, for example, publications.
• Filing an Invention Disclosure (PDF form): Blank forms can be obtained from the research administration office. The Invention Disclosure from is self-explanatory; it should be filled out as completely as possible, attaching other documents as necessary, and filed with the research administration office. The filing of this form initiates a series of "official" steps by the University.
• Sending a response memo to the inventor(s): This contains a determination of whether the disclosure described copyrightable or patentable material, and acknowledgment of the date of receipt of the disclosure by the research office, and other information and/or statements applicable to the given case. The date of receipt of the disclosure by the research office starts a "clock," more fully described in section 14.000 of the Collective Bargaining Agreement, but in essence says that unless the inventors grant the University an extension the University has to commit to and initiate early stages of the patent process within 60 days or the rights to the invention revert to the inventor.

The Director of Technology Transfer has the responsibility to inform faculty of situations wherein establishing a proprietary position and technology transfer might be appropriate. The office provides a central point for receiving queries about developing innovations and ideas with entrepreneurial potential. However, beyond being a passive recipient of queries, the Director must take an active role in "ferreting" out ideas and innovations that may have passed unrecognized. When an innovation is uncovered, the Director meets with the principals involved to learn details about the nature of the innovation or creation and to provide advice on possibilities/procedures for establishing a proprietary position and/or commercialization. During this process continual advice is offered on how to avoid conflict of interest, situations. If appropriate, the Director recommends to the innovator and to the University Administration a plan for further exploration/exploitation, which may involve resource allocations. If commercialization is possible, recommendations on and assistance in locating an appropriate entity to cooperate in further development are provided. This may involve drafting and negotiating license agreements.

Outline of a Typical Technology Transfer Sequence

• 1. Discover opportunities for technology transfer
• a. "Ferreting
• b. Get out information on technology transfer service
• c. Accept disclosures c. Accept disclosures "over the transom
• 2. Advise on maintaining a proprietary position
• a. File invention disclosure
• b. Explain patents and copyrights
• c. Explain impact of publications and other disclosures
• d. Describe use of d. Describe use of "Secrecy Agreement
• e. Advise about e. Advise about "conflicts of interest
• 3. Evaluate technology
• a. Maturity
• b. Utility
• c. Uniqueness
• d. Champion
• 4. Value technology
• a. Risk
• b. Market
• 5. Establish an understanding of innovator's goals
• a. Research funding
• b. Start a company
• c. Personal income
• 6. Plan a strategy to exploit the innovation that is acceptable both to the inventor and the administration; reduce it to writing and obtain commitments
• 7. Proceed with the plan, continually updating key players

Summary and Conclusions
The Office of Technology Transfer was created at the University of Montana to serve and benefit the employees of the Institution, in addition to helping the Administration. Although the Director will attempt to be proactive in providing assistance and guidance, the ultimate responsibility for notifying the Office of situations requiring its attention rests with the individual entrepreneurs. If requested, the inquires can be made privately and in confidence so that sensitive questions will not prejudice or jeopardize an individual or his/her program.