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Last revised: August 2007

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.

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 checks 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). Here are resources one can use to search for prior art in previously issued patents and in scientific and engineering journals.

Patent Searching

Guides and tutorials (for general background - NOT for current legal information)

Pressman, David. Patent it yourself. Berkeley, Calif. : Nolo Press, 2002.

LOCATION: ENGIN REF

CALL NUMBER: KF3114.6.P74 2002

Hitchcock, David. Patent searching made easy. Berkeley : Nolo Press, c1999.

LOCATION: ENGIN REF

CALL NUMBER: T210.H58 1999 Noncirculating

Lechter, Michael A. (ed.) et al. Successful patents and patenting for engineers and scientists. New York : IEEE Press, c1995.

LOCATION: ENGIN STACKS, ENGIN PATENT

CALL NUMBER: KF3114.8.E54S83 1995

Wherry, Timothy Lee. Patent searching for librarians and inventors. Chicago: American Library Association, 1995.

LOCATION: ENGIN STACKS

CALL NUMBER: T210.W44 1995

Online Guides

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.

Databases

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.

Scientific and Technical Literature

Current Contents provides information on recently published research in newsletters divided by topic.

Agriculture, Biology, & Environmental Sciences

LOCATION: MCKREF STACKS

CALL NUMBER: S1.C87

Life Sciences.

LOCATION: CHEM BNDPER, MCKREF STACKS

CALL NUMBER: QH301.C85

Physical, Chemical & Earth Sciences.

LOCATION: CHEM CURPER

UM Engineering and Technology Databases
UM Physics Databases
UM Agriculture Databases
UM Medicine and Health Databases

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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.

Industry Trends and Surveys

Standard Poor's Net Advantage (http://www.netadvantage.standardpoor.com/NASApp/NetAdvantage/index.do).

CALL NUMBER: HC106.6.S74

U.S. Industrial & Trade Outlook.
Provides evaluations and projections of major industrial and commercial segments of the domestic economy.
Value Line Investment Survey. Looseleaf, weekly.
Value Line
Provides ratings and reports on industries and major companies.

Search for Articles about Industry Trends

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".
Investext
This is a database of reports from investment brokers. The focus is on public companies and is written for investors, but there is often an analyst's take on the overall market for an industry
(To accesss: Click on General BusinessFile ASAP and then on ADVANCED SEARCH and then click on the Investext option towards the bottom.)
MarketResearch.com Academic
These market research reports are written for selected industries, so only a few areas are covered. If you find one that matches your area of interest, it will usually provide a good summary of all the information that is available at the time it was written, including industry overviews and lists of market participants.
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:

Industry Associations often have information on trends and statistics.

Encyclopedia of Associations.
Annual with supplements. A guide to national and international organizations, including trade, business and commercial.
Gale Ready Reference Shelf.
Integrates 13 of Gale Publishing's most popular reference directories, including Encyclopedia of Associations.
Gateway to Associations (http://www.asaenet.org/)
Database of Associations on the Internet from the American Society of Association Executives.

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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.
General Business File ASAP and Business and Company Resource Center
Both of these databases allow for searching by industry code (NAICS) to indentify companies in a particulr area. Once at least one good company is identified, viewing a profile of that company will show links to a vbariety 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 indutry, Hoover's list their 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.
Industry Associations (http://www.lib.umd.edu/MCK/GUIDES/techtrans.html#Industry)
Almost every industry has an association that advocates for its members. Many of the associations provide membership directories or guides to services to an industry that can shed insight into the number of different players in an area.

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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 are "redacted out"(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 (http://web.lexis-nexis.com)
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 infomation. Plus, in some cases a judicial decision may describe the evidence and rationale used to arrive at the royalty rate.

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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.
Technology transfer handbook : information for NIMH scientists.
National Institute of Mental Health, Technology Transfer Office, [2000?]
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
Gross, Clifford M. The New Idea Factory : Expanding Technology Companies with University Intellectual Capital. Columbus, OH : Battelle Press, 2000.
Association of University Technology Managers (http://www.autm.net)

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Last modified: July 25, 2006

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