Article written by Charlsye Smith Diaz, Ph.D. She is a former paralegal who is now an assistant professor of technical and professional writing at the University of Maine, Orono, ME. She also works with the Foster Center for Student Innovation to help students with business plans, grant proposals, and pitches for funding.

—— Paralegals and Innovation ——

Beneath the buzz surrounding the word “innovation,” laboratories and research units have test labs open and are exploring new ideas, creating new methods, and building new devices. The process of moving something created by one entity to another, usually for business purposes, is called “technology transfer.” The work that happens at every stage of technology transfer needs capable people to move ideas forward.

Many paralegals have the skills needed in this innovative field. Those with IP specialty experience are usually skilled in business creation and compliance, and are accustomed to working with highly confidential information. Paralegals know when to answer questions and when to refer inventors and entrepreneurs to an attorney or accountant.

Working in technology transfer or business incubation enables paralegals to be proactive in helping inventors and entrepreneurs avoid missteps that can lead to legal disputes.

—— About Technology Transfer ——

Technology transfer happens when an idea, method, or concept is licensed to another entity. A pharmaceutical lab might license its formula to a drug manufacturer, an inventor might sell his idea to a major manufacturer, or a kitchen table jam company might partner with a large food manufacturer.

Technology Transfer Offices—Universities, governments, and private companies are opening offices that help inventors and entrepreneurs. Most research-oriented organizations have a technology transfer office. This office takes patentable or patented ideas and markets these ideas to other companies, labs, or research organizations.

Employees in technology transfer offices perform many tasks, including marketing, making connections between research projects and industry contacts, translating patent language to plain English, and working out the details of licensing agreements and other contracts.

These offices need people who can read patents, understand rules of disclosure, write well, know contract law, and who can manage many projects at once.

Small Business Incubators—Small business incubators specialize in helping people decide how to move their ideas forward to market. An inventor who has an idea, but is not linked to a technology transfer office, might bring the idea to a small business incubator. A person with an idea for a small business might also bring their idea to an incubator.

Business incubators offer access to experts for making decisions about business planning, funding, manufacturing, patenting, and other start-up concerns.

Incubator employees and managers need to understand contract law, small business creation, patent disclosure, and organizational management. Incubator managers need to write well, communicate well, and be able to manage many projects at one time.

Patent Programs—Some states and universities offer intellectual property programs that help lone inventors or small businesses with initial assessment of intellectual property. The State of Maine, for example, offers the Maine Patent Program (www.mainepatent.org), which helps Maine inventors understand how to identify and protect their intellectual property.

A patent program might perform prior art searches, review the novelty of an idea, and provide advice regarding how the inventor should proceed. Patent programs are typically staffed by attorneys, patent agents, and support staff who coordinate the flow of projects. Some patent programs also work on issues of trademark or copyright.

—— Technology Licensing Associate ——

Technology licensing associates work in technology transfer offices at universities or research-and-development firms . Associates keep track of licensing agreements, use databases to track information, and work on technology education programs.

Associates work closely with faculty and inventors to prepare disclosure documents, conduct research, and translate complex information about new technologies to plain English so that it appeals to investors. Associates negotiate or sit in on negotiations of licensing agreements and often draft agreements that reflect negotiated terms.

Qualifications for technology licensing associates include the following:

• Bachelors degree, background, or interest in science/medicine/computer technology
• Written and oral communication skills
• Ability to communicate complex issues clearly
• Ability to communicate complex information simply
• Ability to draft clauses for agreements or contracts
• Negotiation skills
• Familiarity with patents, contracts, disclosure statements
• Ability to work independently
• Must be organized and able to multitask.

—— Small Business Incubator Associate or Manager ——

Small business incubators hire people who can help their clients or tenants launch businesses. They work for universities, research and development organizations, and technology incubators. People with knowledge about various business organizational entities, contracts law, or intellectual property disclosure rules would bring useful knowledge to this position.

Incubator associates and managers choose and interact with clients or tenants of the incubator. Incubator associates do not give legal advice but provide direction to clients about experts they should consult. They coordinate mentorship relationships, and provide clients with resources for business planning, intellectual property assessment, loans, grants, and other start-up needs.

Associates and managers of student incubators seek grant funding, schedule educational programming for students, and develop and maintain contacts with local businesses.

Qualifications for Small Business Incubator Associates or Managers include the following:

• Bachelors degree or higher
• MBA or small business experience preferred
• Written and oral communication skills
• Interpersonal communication skills to build relationships
• Grant request writing
• Contract management
• Marketing skills
• Educational programming experience
• Ability to work independently
• Negotiation and networking skills
• Ability to take on many skills from networking with executives to troubleshooting the Wi-Fi.

—— Patent Program Coordinator ——

Patent programs help people who cannot afford to hire a patent attorney or a patent agent with initial patent work. Patent program coordinators triage clients’ intellectual property needs, determining if they need help with patent, trademark, or copyright, and find an appropriate patent agent or attorney to do an initial assessment of the patentable invention. They work for cities, states, universities, or privately owned incubators.

Patent programs do prior art searches and provide patenting advice to inventors. Patent Program Coordinators schedule appointments, assist with research, track deadlines, draft documents for review, and maintain the program’s educational programming.

Qualifications for Patent Program Coordinators include the following:

• Bachelors degree or higher
• Experience with intellectual property
• Ability to conduct intellectual property research
• Ability to communicate complex issues clearly
• Ability to communicate complex information simply
• Ability to work with people who have no understanding of intellectual property
• Ability to work independently
• Must be organized and able to multitask.

—— Compliance Manager ——

An organization’s compliance office ensures that organizations that participate in research and development are complying with the terms of grant funding and any local, state, or federal regulations that apply.

Some compliance managers focus on federal ethics rules that apply to research involving people or animals, while others concentrate on financial aspects of complying with research and development. They work for universities,research and development organizations, hospitals, and privately owned entities.

Qualifications for Compliance Managers include the following:

• Bachelors degree
• Written and oral communication skills
• Ability to manage budgets
• Ability to draft clauses for agreements or contracts
• Negotiation skills
• Familiarity with federal laws related to research with humans and animals
• Ability to work independently
•Must be organized and able to multitask.

—— Afterthoughts ——

The movie Flash of Genius (2008) depicts the process of technology transfer going terribly wrong for inventor Robert Kearns. Kearns wanted to mass-produce and sell the intermittent windshield wipers he created to major car manufacturers. The manufacturers wanted to produce them along with the car (and ultimately did). Kearns spent many years fighting a legal battle to get automakers to admit the idea was his. Even after being offered a $30 million settlement, he persisted. He wanted manufacturers to admit that he was the owner of the idea.

Kearns’s story has an ominous message for inventors because part of doing business through innovation is deciding how to treat an idea. Sell it? Produce it? License it?

If you have ever worked with a lone inventor whose name was left off a patent, or for a small company fighting for its technology, then you know the true cost of innovation. You also know that there is no ten-step process to insulate inventors or small business owners from legal disputes, but with guidance from patent attorneys and business experts, including legal advice about business creation, inventors and entrepreneurs can minimize the risks of litigation.

Reprinted with permission of NALA, The Association of Legal
Assistants/Paralegals, and Charlsye Smith Diaz, PhD, the article originally
appeared in the September/October 2011 Facts & Findings, NALA's bi-monthly magazine for paralegals. The article is reprinted here in its entirety. For further information, contact NALA at www.nala.org or phone (918) 587-6828.