Intellectual Asset Management in research commercialization projects: A case study in a Finnish Technology Transfer Office

Examensarbete för masterexamen
Bisso Mifflin, Sebastian
The more obvious functions of research universities are to contribute to the expansion of scientific knowledge and the education of students, however, in recent decades, research universities are expected to play an increasingly important role in promoting the societal impact of research results. One of the ways to promote the societal impact of research results is to commercialize them by a virtue of licensing or selling the intellectual property rights (IPR) of the research results, or by building a spinout company around them. Technology Transfer Offices (TTOs) are generally responsible for evaluating and capturing the research results, and the organizations function as a supporting role in university-industry collaborations, as well as in developing business cases around the results. To fully open all the doors to the utilization of research results and to unlock the full value of such assets, the research results should be effectively claimed and managed as intellectual assets by the TTOs and innovation offices. The problem is that the TTOs, as part of the academic environments, are often under-resourced and follow processes which can be viewed as narrow in the context of intellectual assets management activities. This study investigates how the University of Helsinki TTO approaches the claiming of research results as intellectual assets so that the societal value potential could be utilized most effectively. The study was conducted as a single case study of a Finnish Technology Transfer Office by qualitatively analyzing data gathered through semi-structured interviews and by analyzing organizational documents. The findings show that the environment under examination has processes which are aimed to claim and manage research results, particularly in the context of patented inventions, which also highlights that the general IPR strategy considerations of the TTO are also strongly focused on patenting and activities related to patenting. In relation to the CIP intellectual asset management (IAM) framework which is directed to enable effective utilization of research results, the TTO information-gathering activities are largely in accordance, however, the organization uses less-comprehensive categories for intellectual assets (IAs), and the information-gathering activities which specify the scientific value and the utility of the IAs are not as extensive as in the framework. Moreover, when assessing the control value of IAs, the TTO is emphasizing the patent-related control aspects due to the legislation governing the ownership of research results and the policies in relation to the management of non-patentable research results, which are being developed. The conclusion is that the organization places patent-based control strategies at the center of commercialization activities, which is reflected in the way the TTO gathers the needed information for capturing the research results. Moreover, the process for claiming IA’s is largely in accordance with the framework, but due to the strong focus on patenting, the process could be expanded by following the value specifying steps of the IAM framework to enable wider opportunities for research-driven societal impact.
Research Utilization, Commercialization, Academic Entrepreneurship, Technology Transfer, Intellectual Assets, Intellectual Property Rights, Intellectual Asset Management, IP management
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