CLP CLP Technology Transfer & IP Management 2 — Questions and Answers
Question 1: A sponsored research agreement (SRA) between a company and a university typically grants the sponsor:
- An option to negotiate a license on inventions arising from the sponsored work (Correct answer)
- Automatic assignment of all patent rights from the research
- Unlimited royalty-free rights to all university IP forever
- Veto power over publication of research results
Correct answer: An option to negotiate a license on inventions arising from the sponsored work
SRAs commonly give the corporate sponsor an option to negotiate a license on resulting inventions, subject to Bayh-Dole obligations.
Question 2: What is the primary purpose of an invention disclosure form (IDF) in a university TTO process?
- To formally notify the TTO of a potentially patentable invention so it can evaluate and protect it (Correct answer)
- To publicly disclose the invention and establish a prior art date
- To request research funding from the federal government
- To register a trademark for a product derived from research
Correct answer: To formally notify the TTO of a potentially patentable invention so it can evaluate and protect it
An IDF is the internal document inventors submit to their TTO to trigger evaluation, and it begins the clock for the university to decide on patent filing.
Question 3: Which term describes the process by which a licensee gains access to a licensor's know-how, training, and technical support alongside the patent license?
- Technology transfer (Correct answer)
- IP assignment
- Patent prosecution
- Freedom-to-operate analysis
Correct answer: Technology transfer
Technology transfer encompasses the transmission of technical knowledge, training, and support needed to actually deploy licensed IP commercially.
Question 4: In IP portfolio management, what is 'IP landscaping'?
- Mapping the existing patent filings in a technology area to identify white spaces and competitive positions (Correct answer)
- Pruning low-value patents from a portfolio to cut maintenance fees
- Filing continuation patents to broaden claim coverage
- Conducting freedom-to-operate searches before product launch
Correct answer: Mapping the existing patent filings in a technology area to identify white spaces and competitive positions
IP landscaping analyzes the patent environment in a technology domain to reveal competitor activity, coverage gaps, and potential licensing opportunities.
Question 5: What is a continuation application in US patent law, and why is it relevant to licensing?
- A new patent application claiming the same priority date as a parent application but with different or broader claims (Correct answer)
- An appeal filed when the USPTO rejects the original application
- A divisional application splitting out separate inventions
- A provisional application extending the 12-month filing window
Correct answer: A new patent application claiming the same priority date as a parent application but with different or broader claims
A continuation allows the applicant to pursue additional or broader claims while keeping the original priority date, which can strengthen licensing leverage.
Question 6: What does 'freedom to operate' (FTO) mean in the context of technology transfer?
- A determination that a product or process can be commercialized without infringing valid third-party patents (Correct answer)
- A government clearance to export controlled technology
- A contractual right to sublicense without licensor approval
- An indemnification clause protecting the licensee from infringement claims
Correct answer: A determination that a product or process can be commercialized without infringing valid third-party patents
An FTO analysis determines whether practicing a technology would infringe any in-force patents owned by others, reducing the licensee's infringement risk.
CLP CLP Technology Transfer & IP Management 2
A sponsored research agreement (SRA) between a company and a university typically grants the sponsor: