Chapter 8: Discussions
8.2 The Announcement of Licensing Opportunities and Licensee Selection
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During the following section, this study will discuss the practice of both institutes during the technology license process. The whole discussion process will be based on Figure 13.
8.1 Role of TTO in Technology Transfer
There are no major differences between the role and strategy of both TTO in technology transfer. The general policy of OTT technology protection is to seek the broadest possible patent protection for commercially valuable inventions by initiating the process through filing an application in the United States Patent and Trademark Office174. Besides business decision, NIH will also file patent applications for public health needs where royalties are not necessarily the main objective175. While according to the description of NHRI TTO, the aim of NHRI technology transfer is to efficiently apply NHRI research outcome and increase the value of invention application. It aims to turn research outcome into products or services that are valuable to the market. By such initiatives, it could speed up the improvement of Taiwanese industry techniques to increase the nation’s competitiveness, to create mutual benefit relationship between academia and industry, and to improve Taiwanese living quality176,177.
8.2 The Announcement of Licensing Opportunities and Licensee Selection
Both agencies announce their technologies on the Internet, NIH announces its available technologies on its own and independent Office of Technology Transfer
174 Licensing (n.d.), NIH Office for Technology Transfer, Retrieved from http://www.ott.nih.gov/licensing
175 Richard Rodriguez (Director, Division of Technology Development & Transfer), [email protected], personal communication, Jan 3, 2014.
176 隨著本院研發成果的不斷累積，為了能有效的應用本院的研發成果及提高運用價值，將其發明化為
具有市場價值的商品和服務，希望藉由技術移轉案之產生，加速國內相關產業技術提昇以增加國家競爭 力，創造與業界互利共勝的結果，並能提昇國人的生活品質。
177 單位簡介(n.d.), 國家衛生研究院技術移轉中心，Retrieved from
http://www.nhri.org.tw/NHRI_WEB/nhriw2001Action.do?status=Show_UnitDtl&uid=20090211384611210000
&nid=20090212327520580000
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Office website178 while NHRI announces its available technologies under NHRI website179.
It is not easy to navigate through NIH website searching for unit responsible for technology transfer but NIH TTO could be easily found if one were to search on Google to do keyword search. Once a user is being directed to NIH TTO website, user could easily navigate the NIH TTO websites because it has clear tabs indicating
“Licensing”, “Royalty”, “Policy”, “Resources”, “Outreach”, “Media Room”, “FAQS”
and “About”. Under “Licensing Opportunities” tab, and NIH TTO listed every available licensing opportunity on the webpage. Every opportunity was marked with reference number, updated date and was organized in a chronological order. The website listed 1926 technologies on its website to date (December 9, 2013).
178 NIH OTT Licensing Opportunities (n.d.), NIH Office of Technology Transfer, Retrieved from http://www.ott.nih.gov/opportunities
179 技轉及育成中心 (n.d.) ，國家衛生研究院，Retrieved from
http://www.nhri.org.tw/NHRI_WEB/nhriw2001Action.do?status=Show_UnitDtl&uid=20090211384611210000
&nid=20090212940366180000#start
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Figure 14 Snapshot of NIH's Available For-Licensing Technology Website Interface180
A click on the invention title will link technology acquirer to the desired technology. New invention will be opened on a separate page with a single paragraph to explain the invention and expected effect of the invention. Two boxes beneath the introductory paragraph indicate the “Potential Commercial Application” and
“Competitive Advantages” in point form for easy reading. It will also show the inventor’s name, patent numbers, NIH TTO licensing contact and NIH TTO reference number. A clear view of the individual technology page could be seen on Figure 14.
180 Peptide Inhibitor of p38 MAPK Signaling for the Treatment of Inflammatory Autoimmune Diseases and Inflammatory Cancers (October 2013), NIH Office of Technology Transfer, Retrieved from
http://www.ott.nih.gov/technology/e-281-20120
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NIH OTT Licensing and Patenting Managers181 on each field of expertise will review the submitted application for licensing and negotiate with potential licensor182.
Compared to NIH, NHRI website has very clear tab indicating “Technology Transfer” which will lead user to the NHRI TTO website. NHRI TTO did not dedicate an independent webpage for available technologies; this arrangement might cause some confusion in the future when technology and information become abundant.
Technologies seeking for licensing acquirers are listed on the entry page under
“What’s New” section. Of all 38 items listed on the “What’s New” section, which could date back to November 2009, only 17 technology licensing cases and 6 industry-academia collaboration cases available. Most licensing cases were written in Chinese, only one has an English translated version. This indicates that TTO intended licensees are mainly Chinese companies and shows NHRI’s intention in localization preference during licensing process despite it applies for patents in other countries.
Clicking on the title of the technology will link technology acquirer to an independent webpage of which is an announcement or notice seeking for potential licensing candidates. The independent page has very general, brief and not informative description of the technology. NHRI will disclose the invention name, in some notices disclosing patent being applied and in some notices disclosing a sentence describing the general function of the invention. The page further clarifies the criteria a potential candidates should have, evaluation criteria & standard and other housekeeping issues.
The notice usually comes with an application deadline, usually 4-14 days after the initial publication of the notice. The Taiwan Government Procurement Act requires a public tender notice when seeking for licensing partner.
An example announcement is shown on Figure 15. NHRI usually decides the direction of preferred application of announced invention (e.g.: to finish pre-clinical or clinical research, develop into a ready-to-market product, non-exclusive licensing,
181 A list of Licensing and Patenting Managers could be found on TTO’s website, http://ott.cit.nih.gov/staff-directory/lpms
182 Licensing FAQs (n.d.), NIH Office for Technology Transfer, Retrieved from http://www.ott.nih.gov/licensing-faqs
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exclusive licensing and etc.) in the notice, limiting the scope of application for the licensee. No competitive advantages or potential commercial application is listed on the notice. Although the notice comes with a contact in NHRI for communication, the notice does not include patents associated with the technology and technology reference number, it would cause burden to the TTO personnel in the future when the technology available for licensing is abundant. After filling up the application form, the IP Management Committee will decide if the application is approved or not approved.
Figure 15 NHRI TTO's Announcement Seeking for Licensor Website Screenshot183
Besides the abovementioned announcement on new technologies, NHRI TTO has a “Research Result” webpage. Under “Research Result”, NHRI TTO displays
183技轉及育成中心公告：徵選「無血清細胞培養H7N9 人用疫苗開發計畫」技術移轉廠商(20131125)，
國家衛生研究院， Retrieved from
http://www.nhri.org.tw/NHRI_WEB/nhriw001Action.do?status=Show_Dtl&nid=20131125621061130000&uid
=20081203749159640000
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NHRI research results under 12 categories: Anti-Viral, Anti-Cancer, Metabolism Disorder Syndrome, Anti-Inflammation, Stem Cell, Anti-Neurogenerative, Medical Device, Gene Detection, Protein Expression System, Nanomedicine, Vaccine and Others. Each category has an independent webpage, of which listing The Name of Invention, inventor(s)’ name and NHRI reference number under that category. Some invention has more detailed information on an independent webpage displaying patent number, competitive advantages and etc.; while some does not (only technology name is being displayed). Some inventions have TTO personnel’s contact while some do not.
Most inventions’ result was written in Chinese. It was not clear why NHRI displayed these information online whilst it does not clearly state that those research results are available for licensing. It is rather confusing to technology acquirer to see both
“Licensing notice” and “Research Result” listed on the TTO website (See Figure 16
"Research Result" Webpage of NHRI).
Figure 16 "Research Result" Webpage of NHRI
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Table 16 are some comparisons drawn from the institution’s website:
Table 16 Comparison of Licensing Friendliness between NIH and NHRI
National Institute of
Health Subject for Comparison National Health
Research Institute Very friendly interface Platform Friendliness Not-so-friendly
interface
English Written Language Chinese
184 Richard Rodriguez (Director, Division of Technology Development & Transfer), [email protected], personal communication, Jan 3, 2014.
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