A BASIC CHECKLIST FOR TECHNOLOGY TRANSFER

As you may know, TÜBİTAK’s “1702 Patent-Based Technology Transfer Support Call” has been announced. We are all aware of the contributions such calls make towards improving our country’s R&D ecosystem and increasing patent awareness.

With this article, I want to make a small contribution to the ecosystem. Below, I share an entry-level checklist with you. I call it entry-level because we employ much more comprehensive sets of questions in the later stages of the process. Nevertheless, this list will be useful for a technology provider organization within the scope of 1702 to preliminarily screen their patent portfolio. By assigning a score to each question, you can score and prioritize the patents based on a metric foundation.

Is the type of protection a patent?

Is the technology provider organization one of the following: a higher education institution, a research infrastructure, a public institution, a public research center/institute, a technology transfer office, or a technopark company?

Is there any issue with the technology provider organization’s ownership rights concerning the patent?

Does the patent have a remaining protection period of 10 years or more?

Has the official domestic patent search report been issued?

Is the patent search report positive?

Is the patent examination report positive?

Has the patent been registered?

Does the invention covered by the patent involve high technology? (For detailed list, see the 1702 call)

Is the invention covered by the patent an environmentally friendly technology? (For detailed list, see the 1702 call)

Is there a foreign patent application?

Is there a foreign patent registration? (For required countries, see the 1702 call)

Are there currently any parties interested in the technology?

Is the company interested in the technology classified as an SME?

Is there a possibility of transferring multiple patents to the interested company?

Is there a working prototype?

Is there a product ready for market launch?

Will the inventors provide technical support?

Items in bold and underlined are essential criteria for applying to the 1702 call. Items that are only underlined are criteria that increase the support rate under the 1702 scope. The others are additional basic criteria that increase the chance of success.

It will be more prudent to proceed to the next stages for the patents that pass this preliminary screening and achieve the highest scores. As an experienced professional in this field, the next stages generally involve; patent evaluation (analyzing and scoring with detailed sets of questions), market research, matching with companies, conducting preliminary meetings with the matched entities, negotiating with the most interested company, patent valuation, preparing MOU and license-transfer agreements, and ultimately executing the technology transfer.

If deficiencies that reduce the value of the patent or technology are identified during this process, I see great benefit in taking corrective actions before meeting with companies. Because production companies in our country can be, to say the least, hesitant and timid regarding technology transfer, a field they are still unfamiliar with. When approached with an issue that contains a lot of uncertainties and weaknesses, it is usually not possible to obtain a positive outcome, and this can even create a prejudice that blocks subsequent processes.

I hope I have provided useful information. If you have any questions on the subject, you can always reach me at e.kaya@erdemkayapatent.com.

Wishing you healthy and peaceful days…

Erdem Kaya

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