Non-Profit Technology Transfer
For over 50 years, Marshall, Gerstein & Borun has provided non-profit technology transfer services to assist institutions in their efforts to evaluate, protect, enforce, defend and commercialize research disclosures.
As former technology transfer managers at non-profit institutions, we have first-hand knowledge of the issues facing non-profits from managing inventorship disputes and inventors with external priorities, to the need for clear and timely recommendations for protecting intellectual property rights. We also understand the effect the research environment has on university agreements, from government funding requirements to prior collaborations and material transfer issues.
We know there is a need to maximize value early in the patent life-cycle and through creative license agreement structures. We are skilled at managing patent portfolios and negotiating complex intellectual property agreements with sensitivity to timelines and budgetary constraints.
Our Technology Transfer Services Include:
- Counseling and evaluating institutional intellectual property policies, including regarding socially responsible licensing
- Preparing and evaluating invention disclosures and prosecuting patent applications with a sensitivity to claim scope likely to be desired by a licensee
- Structuring agreements such as: nondisclosure, material transfer, research, clinical trial, joint development, inter-institutional, consulting and all forms of intellectual property licenses tailored to the needs of non-profits
- Devising portfolio licensing strategies
- Negotiating agreements to execution within a tone and approach reflective of being in non-profit technology transfer
- Auditing patent and intellectual property agreement portfolios to identify unused or underused intellectual property and out-licensing opportunities
- Enforcement and defense of intellectual property rights and intellectual property contracts
- Developing and presenting educational seminars on all aspects of intellectual property and the technology transfer process, including Bayh-Dole compliance
