Last revised: August 2008
Technology Transfer
Scope:
Cooperation between governments, universities, businesses
and individual researchers and entrepreneurs to bring new technologies
into the market all falls under the rubric of Technology Transfer.
This guide contains a selection of resources that can help with various
stages of the technology transfer process, from determining the
patentability of an invention to assessing its potential
marketability. Email the subject area specialist at jmiller2(@umd.edu) or call
301-405-9152 for more information.
Table of Contents
Deciding Whether or not an invention is patentable
Obtaining and maintaining a patent is an expensive proposition. Before applying for one, an inventor or interested party often check for what is known as prior art. Prior art can take the form of any public disclosure of an invention prior to the patent application being filed. (One exception: in the United States, an inventor can file a patent application up to one year after the initial disclosure.) Below are resources one can use to search for prior art in previously issued patents and in scientific and engineering journals.- Pressman, David. Patent it yourself. Berkeley, Calif. : Nolo Press, 2002.
- Hitchcock, David. Patent searching made easy. Berkeley : Nolo Press, c1999.
- Lechter, Michael A. (ed.) et al. Successful patents and patenting for engineers and scientists. New York : IEEE Press, c1995.
- Wherry, Timothy Lee. Patent searching for librarians and inventors. Chicago: American Library Association, 1995.
- Patent and Trademark Services at the UM Libraries (http://www.lib.umd.edu/ENGIN/patents.html)
- How
to Identify and Obtain Patents (http://scilib.ucsd.edu/howto/guides/findpatents.html)
A one page guide from UC, San Diego, explaining some of the tricks of patent searching. - Manual of Classification (http://www.uspto.gov/go/classification/) from the USPTO.
- U.S. Patent Database (http://www.uspto.gov/patft/index.html) from the U.S. Patent and Trademark Office (U.S. Patents; full-text images 1790 - present, searchable text 1976 - present) This official U.S. Patent & Trademark Office site links from its home page to a required TIFF plug-in .
- European Patent Office (http://ep.espacenet.com/. Search titles and some abstracts of over 40 million world patents.
Patent Searching
Guides and tutorials (for general background - NOT for current legal information)
- LOCATION: ENGIN REF
- CALL NUMBER: KF3114.6.P74 2002
- LOCATION: ENGIN REF
- CALL NUMBER: T210.H58 2000
- LOCATION: ENGIN STACKS, ENGIN STACKS
- CALL NUMBER: KF3114.8.E54S83 1995
- LOCATION: ENGIN STACKS
- CALL NUMBER: T210.W44 1995
Online Guides
Databases
- Current Contents provides information on recently published research in newsletters divided by topic.
- Agriculture, Biology, & Environmental Sciences
- Life Sciences.
- Physical, Chemical & Earth Sciences.
- UM Engineering and Technology Databases
- UM Physics Databases
- UM Agriculture Databases
- UM Medicine and Health Databases
Scientific and Technical Literature
Often an inventor will want to search scientific literature to determine that a new invention is in fact unique. The nature of this search will, of course, vary depending on the field of an invention, but here are a few places to start.
- LOCATION: MCKREF STACKS
- CALL NUMBER: S1.C87
- LOCATION: MCKREF STACKS
- CALL NUMBER: QH301.C85
- LOCATION: CHEM CURPER
Determining the Potential Market For a Patent
In order for technology transfer to occur successfully, there must be interest in the invention. One way to gauge potential interest is to identify potential uses of an invention and conduct a small market study on related industries.- Standard Poor's Net Advantage (http://www.netadvantage.standardpoor.com/NASApp/NetAdvantage/index.do).
- U.S. Industrial & Trade Outlook.
Provides evaluations and projections of major industrial and commercial segments of the domestic economy.- LOCATION: GOVDOCS, MCK PER STACKS
- CALL NUMBER: HC106.5.A2U5
- Value Line Investment Survey. Looseleaf, weekly.
- LOCATION: MCKREF STACKS (2006-2008), MCK PER STACKS (1965-1981), MCKPER MFICHE (1980- )
- CALL NUMBER: HG4501.V26
Industry Trends and Surveys
- LOCATION: MCK PER STACKS
- CALL NUMBER: HC106.6.S74
- RDS
Business and Industry
This database contains newspaper and journal articles about a wide variety of industries. RDS provides an easy to use interface that allows you to restrict your search to a specific industry or SIC code. If you click inside the "concept term" box, you can also narrow your search to articles that are about "industry overviews," "industry forecasts," "market size" and/or "trends." - Business News Searches
There are a number of databases that allow for full text searching of articles from business journals and newspapers. Because they are not indexed, or are not as specifically focused on business, it may be harder to pinpoint what you want. Some good databases to look at include: - Encyclopedia of Associations.
Annual with supplements. A guide to national and international organizations, including trade, business and commercial.- LOCATION: MCK FOLIO,
Latest edition in MCK PER STACKS; Latest edition at MCKREF DESK, EPSL REF (latest edition), CHEM REF (1997)
- CALL NUMBER: HS17.G32
- Gale Ready Reference Shelf.
Integrates 13 of Gale Publishing's most popular reference directories, including Encyclopedia of Associations. - Gateway to
Associations
(http://www.asaecenter.org/Directories/AssociationSearch.cfm)
Database of Associations on the Internet from the American Society of Association Executives.
Search for Articles about Industry Trends
Industry Associations often have information on trends and statistics.
Identifying Companies that may be Interested in a Patent
- RDS
Business and Industry
This database contains newspaper and journal articles about a wide variety of industries. RDS provides an easy to use interface that allows you to restrict your search to a specific industry or SIC code. If you click inside the "concept term" box, sometimes using the term "market share" will help find the largest players within an industry.
- Business and Company Resource Center
This database allows for searching by industry code (NAICS) to indentify companies in a particular area. Once at least one good company is identified, viewing a profile of that company will show links to a variety of articles and information on that company and its industry - Hoover's Online (http://www.hoovers.com)
This is a database of public companies and larger private companies. It is most easily searched by company name, but once you find a company within an industry, Hoover's list its main competitors, so it is a good source for finding additional companies. Hoover's also contains industry snapshots and provides the names of a company's officers.
- Thomas Register of
Manufacturers (http://www.thomasregister.com/)
Available online and in book form, the Thomas Register provides information on manufacturers of almost any type of product.- LOCATION: ENGIN REF (1999, 2002-2005), MCKREF STACKS (1994, 1997, 2005)
- CALL NUMBER: T12.T6
Determining Royalty Rates
Royalty rates are a tricky thing to find, as they are usually not made public. Nonetheless, if you want to spend time weeding through a lot of results, there are methods available.- SEC filings
Sometimes public companies, especially smaller ones, will make terms of licensing agreements available. Searching through SEC filings, especially 10-Ks and S-1s, for "royalty and patent" or "royalty and license" will sometimes prove fruitful. The vast majority of numerical data in these licensing agreements is redacted (not made public), so you will have to wade through a lot of false hits for the few pieces of real information. Places to search SEC filings include: - Lexis Academic / News (http://web.lexis-nexis.com/)
- SEC's Edgar site (http://www.sec.gov/)
- 10Kwizard (http://www.10kwizard.com/)
- News articles
Once again, every so often, terms of a licensing agreement will turn up in a press release or an article. In most instances, terms of the deal will not be revealed, but a persistent soul can usually turn up a few bits of information. Any of the article databases described above could be used for this. (RDS, PROMT, DowJones, etc). - Lexis Academic / Legal Research / Federal Case Law
In some legal decisions involving patent cases, a judge or jury must determine a "reasonable royalty" rate. While this royalty may differ from what parties may agree to outside of litigation, it can provide some information. Plus, in some cases a judicial decision may describe the evidence and rationale used to arrive at the royalty rate.
Technology Transfer Resources
- Office of Technology Commercialization (http://www.otl.umd.edu),
University of Maryland at College Park.
- Rood, Sally A. Government laboratory technology transfer : process and
impact. Burlington, USA : Ashgate,
2000.
- LOCATION: ENGIN STACKS
- CALL NUMBER: T174.3.R67 2000
- Technology transfer handbook : information for NIMH
scientists.
National Institute of Mental Health, Technology Transfer Office, [2000?]- LOCATION: GOVDOC SU DOC
- CALL NUMBER: HE 20.8108:T 22
- Technology Transfer
Information Center (http://www.nal.usda.gov/ttic/)
Run by the National Agricultural Library, contains a variety of resources and links to technology transfer information.
- Inzelt, Annamaria and Reinhard Coenen (ed.) Knowledge, Technology Transfer, and Foresight. Boston : Kluwer Academic Publishers, 1996
- LOCATION: ENGIN STACKS
- CALL NUMBER: T174.3.K57 1996
- Gross, Clifford M. The New Idea Factory : Expanding Technology Companies with University Intellectual Capital. Columbus, OH : Battelle Press, 2000.
- LOCATION: MCK STACKS
-
CALL NUMBER: HD53.G75 2000
- Association of University Technology Managers (http://www.autm.net)
