Talk to an attorney with Tech Transfer & IP experience

Legal Services at TACO.law

Tech Transfer

Technology transfer (or tech transfer) is the movement of knowledge from research institutions to the market. More briefly: It's "turning ideas into impact" or (for life sciences) "taking ideas from bench to bedside."

Based in San Diego, California, TACO.law's founder worked in technology transfer at a mid-sized research university for over 6.5 years, understands working with research institutions, and knows how to license research technologies without a costly education process.

Licensing

In the context of IP, "licensing" is the grant of permission to use intellectual property. Often, the terms of license are in a written license agreement executed by the parties.

Many industries rely heavily on licensing to transact business, including technology transfer at universities and other research institutions.

IP Strategy

Many attorneys are good at protecting intellectual property. Fewer have substantial experience at working with startups to form a cohesive IP strategy, and many are happy to bill hours pursuing protection in a way that doesn't forward the client's long-term goals.

TACO.law works with clients to develop and pursue a holistic strategy: one aligning IP, commercial goals, and market opportunities.

IP Protection

Technology transfer is the movement of knowledge from research institutions to the market. More briefly: It's "turning ideas into impact" or (for life sciences) going from the bench to the bedside.

Often, tech transfer occurs when a university or research institution licenses IP to an existing company or startup built to commercialize the idea.

While there are many attorneys with licensing and IP experience, few have much experience interacting with technology transfer offices at universities or research institutions. The lack of familiarity results in delays, missed opportunities, and costly billing time.

TACO.law Founder Kyle Welch spent over 6 years working in a technology transfer office at a substantial research university, is familiar with tech transfer licensing terms, and can negotiate beyond anticipated hurdles.

It is important to note that "tech transfer" is a misnomer: Creative works and other types of knowledge can move from research institutions as well—lucratively.

Entity Formation & Early Governance

Before entrepreneurs can share their ideas with the world, they need a business entity to serve as the vehicle to do: usually a corporation or an LLC (limited liability company).

Don't risk financial ruin by operating without the protection of limited liability, and avoid the costly mistakes that set entrepreneurs back just when they start to gain traction.

Contract Drafting & Negotiation

Every business relies on an unending series of written agreements to get paid, cement relationships, secure IP, perform research, and ensure that its idea reaches the world in the right way.

Many of these agreements need experienced attorneys to draft and negotiate them with other parties.

TACO.law can help clients draft and negotiate many common (and uncommon) agreements, including licenses, NDAs and CDAs (confidentiality agreements), research agreements, IP agreements, MTAs, CRADAs, MOUs, and others.

Early-Stage Fundraising

TACO.law can help founders and startups with early-stage fundraising: terms and approaches to take advantage of SEC registration exemptions.

While "early-stage" is a malleable term, it refers to angel, pre-seed, and most seed rounds. It also includes many forms of non-dilutive capital, such as SBIR/STTR award funding (see more below). Once whole teams of attorneys are involved, TACO.law can effectively facilitate any necessary transition.

STTR/SBIR Funding & Bayh-Dole Compliance

While nearly every startup would be well-served by non-dilutive funding from government grants—it's not without its downsides.

Government grants such as SBIR (Small Business Innovation Research) and STTR (Small Business Technology Transfer) awards have specific terms mandated by the Bayh-Dole Act. These terms have compliance requirements such as reporting new inventions to the government, entering IP agreements with subcontractors, and favoring the manufacture of products in the U.S.

Not many attorneys are intimately familiar with the provisions of the Bayh-Dole Act. But during his time in tech transfer, TACO.law's Founder spent years reviewing such terms, complying with the requirements, and implementing the necessary agreements.