Have you ever wondered what truly goes into the commercialization of a patented invention? Today we're exploring an often misunderstood aspect of tech transfer: the strategic licensing of know-how.

Know-how encompasses the vital information necessary or beneficial for the commercialization of a patented invention. While a patent license combines aspects of both federal and state law, a know-how license is governed solely by state law, as it lacks federal statutory protection.

To guide us through this intricate subject, we have Wes Blakeslee with us. Wes holds an Engineering Degree from Penn State University and a Law Degree from the University of Maryland School of Law. With over 15 years of experience at The Johns Hopkins University as an Associate General Counsel and later as Executive Director of Technology Transfer, Wes is a seasoned expert in intellectual property and business law. A Certified Licensing Professional, he is a frequent speaker at conferences and a consultant on intellectual property and business matters.

Join us as we dive deep into the complexities and strategic importance of know-how licensing with Wes Blakeslee.

In This Episode:

[01:45] Wes was an engineer with NASA before he became a lawyer. In 1982, he acquired a client that does research and development for the government. There are no patents for classified technology, so that's how he was introduced to "know-how" licensing.

[03:34] It means something you know that others don't. Know-how must be protected like a trade secret with steps taken to protect it.

[04:52] You don't want to patent a trade secret, because the records are public. Patented licenses can include "know-how".

[07:31] Describing "know-how" can include specifications. There's no specific protection for "know-how", so you have to describe the "know-how" and what it can and can't be used for. There are confidentiality provisions.

[09:24] Drafting a non-exclusive license for "know-how" is more simple than a non-exclusive license. It's critical in an exclusive license to make sure that you still have the right to use the information yourself. You have to be careful to define the field.

[12:19] The "know-how" license looks a lot like a patent license, except for the extra terms you have to know, and that there's no general legal protection.

[13:50] Describing the nature of the deal without releasing specifics. Process and product know-how licensing agreement.

[16:24] A lot of "know-how" is process-oriented and gets licensed on an annual basis.

[18:31] The goal of the negotiation is to give the other side everything they need, while preserving for your client everything that they need.

[22:00] Common obstacles include teaching them what they need without teaching them everything you know.

[26:49] Wes talks about the licensing for non-profits and hospitals.

[29:28] Almost every academic license will have a patent and "know-how" in the license.

[35:17] There should be discussion of "know-how" in the advanced licensing course. AUTM is a great resource! Licensing Executives Society is also a good resource.

Resources:

Wes Blakeslee Website

Wes Blakeslee LinkedIn

Licensing Executives Society

Have you ever wondered what really powers the success of tech transfer offices at universities? It’s not just the groundbreaking research or innovative technologies—it’s the relationships behind the scenes.

In today’s episode, we’re highlighting the importance of cultivating strong relationships with faculty members. These connections not only facilitate technology disclosures but also significantly boost the marketing reach and appeal of research to industry partners.

Joining us to shed light on this topic is David McClure, the Managing Director of Licensing at the Office of Research Commercialization, Texas Tech University System. David brings a wealth of experience and insight into why fostering strong faculty relationships is essential for the success of a tech transfer office.

We’ll be discussing effective strategies for initiating and maintaining engagement with faculty, the challenges and nuances of making tough decisions about researchers' inventions, and the best communication practices for managing expectations. Plus, we’ll explore how relationship-building can be seamlessly integrated into these efforts.

In This Episode:

[01:21] The importance of strong relationships with faculty for tech transfer success. We have to create a system of mutual trust where each of us will do our respective jobs.

[02:27] No invention has ever been licensed without the full support of the researcher. The feedback is very important for success.

[04:03] The key is communication. When an invention disclosure comes in it gets assigned to a licensee manager and they carry it through until a license is negotiated. Making the process transparent and showing every step to a faculty member along the way.

[05:21] They make decisions on new inventions in 60 days, but they try to do it in 30 days.

[06:48] Outsourcing assessments to a third party makes the researchers feel like everyone's on the same team.

[08:45] Maintaining engagement is important. They get a list of new faculty hires. They give them a visit and ask what they are interested in and establish a relationship from day one.

[13:42] Communicating every step along the way is an effective communication strategy. Showing your work and letting the researchers know what you're doing on their behalf is very helpful.

[15:02] They also use LinkedIn as a success story communication tool.

[19:48] They make it easy and affordable for faculty members to license their technology. The industry appreciates customer validation.

[21:03] It takes years to get a patent issued and to take a technology to market. It's a long process where you should take as many shots as possible. David and his team preach patience to new faculty members. They also use colleague examples to demonstrate the process.

[22:52] The role of training and professional development in preparing TTO staff and faculty for successful collaboration and commercialization. David tries to get them plugged into the ecosystem as quickly as possible.

[27:21] How strong faculty relationships impact the overall success and growth of a tech transfer office in the long term.

[28:12] Advice for tech transfer professionals includes critical management and building a portfolio over time. Start small and build over time. Show your work. Be patient.

Resources:

David McClure Texas Tech University

David McClure LinkedIn