Ep 46 – A Primer on Technology Transfer



Laleh is the Director of Intellectual Property and Administration in the Office of Technology Licensing where she develops UC Berkeley’s IP strategy and oversees licensing for life sciences, chemistry, medical instruments, physical sciences, engineering, software technologies, and artificial intelligence. Laleh also handles trademark and copyright matters, and open source compliance. Additionally, she works with sister offices on IP matters for government grants and contracts, foundation grants and contracts, and sponsored research agreements. 

Laleh is a trained scientist and worked for several years in research before practicing law. Prior to joining UC Berkeley, she performed population genetics research at Stanford, pediatric brain tumor research and ovarian cancer research at UCSF, brain tumor research at University of Chicago, and comparative genomics research at Exelixis. She then embarked on a law career and became a patent agent at Exelixis, followed by a director of IP and assistant general counsel for IP matters at SRI.

Laleh holds a Ph.D. in Biophysics from UC San Francisco and a J.D. from Concord Law School. She is a member of California State Bar and is also registered to practice before the US Patent and Trademark Office.



Who are the some of the smartest experts in the innovation ecosystem most entrepreneurs don’t even know exist?

Why is it fatal to your startup to talk about your big scientific breakthrough too soon?

How can you as a founder get the best of both worlds in bringing your discovery or invention to market for great outcomes?

In this episode, Laleh Shayesteh, Director of Intellectual Property and Administration in the Office of Technology Licensing at UC Berkeley, talks about how how university-based science and technology entrepreneurs can proactively protect their valuable research, successfully bring their discoveries to market, maximize the return on their work while still leveraging deep resource networks, and much more.

Episode Highlights

  1. What is tech transfer?
  2. How tech transfer works for different types of intellectual property
  3. The one thing research-driven founders must do before publishing their work
  4. How university tech transfer offices(TTO’s) are structured and why that matters to founders
  5. How your university TTO measures the success of IP
  6. A quick overview of the US patent framework
  7. Is your IP yours? Or your university’s? How to find out.
  8. How to leverage your university’s TTO in your startup
  9. The many ways you can commercialize IP
  10. What to know about licensing and royalty agreements and why that matters
  11. Staying compliant with your licensing agreement – the essentials
  12. How university TTO’s differ from VC’s and why it matters to founders
  13. The real value and significance of filing for patents
  14. Tips for non-university affiliated tech founders on protecting your IP


Links and Resources:

IPIRA: UC Berkeley’s Tech Transfer Office

Interview Transcript

Shubha Chakravarthy: Hey Laleh, did I say your name right?

Laleh Shayasteh: Yes!

Shubha Chakravarthy: It is wonderful to have you here today. Thank you so much for being on Invisible Ink!

Laleh Shayasteh: Of course. Thank you so much for having me. I appreciate it.

Shubha Chakravarthy: You have had a pretty exciting career. You have a PhD in biophysics, you also have a JD. It is a unique and very impressive background.

So, you have a role that very few entrepreneurs even know exists. Why exactly is tech transfer?

Laleh Shayasteh: Technology transfer is the process of taking inventions or or software or new technologies that come around to the university and licensing them out either to startup companies that might be coming out of a university or other startup companies or to big industries.

Shubha Chakravarthy: How did you get into tech transfer and what motivated you to take this job?

Laleh Shayasteh: I got into tech transfer by chance. I was doing a lot of research for several years and I had kids and there was a time to either go up the ladder in science or do something else and I fell in love with wanting to do something else.

Basically, at the time, I was working at a small startup and the opportunity was there to join the licensing group and I entered that. I started to work on a patent application as the first thing to do, and I truly fell in love.

So, then I became a patent agent. Then I went to law school, then I became a patent lawyer and by then I had started to work at a nonprofit organization that is a government contractor. Then several years after that I thought, I really want to go back to the university because the university was the one that gave me opportunities.

I think it is a role where people who have experience in both science and also in licensing or agreement activities can really make a difference. So, I really wanted to get back into university and I was very fortunate that Berkeley took me in.

Shubha Chakravarthy: That’s fantastic. Which are the parts that you have the most fun with, and are there parts that are not so fun or a little bit more challenging?

Laleh Shayasteh: As far as I’m concerned, every part is fun. Every challenge is an opportunity to do something different and to be more creative. When, people have challenges, I don’t see them as bad things. I see them as opportunities to become more creative and to help whoever has been reaching or whoever has been reaching out or having probably an issue, right?

How to creatively create better agreements that both parties are going to be happy with? How to creatively make better patent applications? So, I don’t see anything as a challenge really. I do enjoy working with people and trying to figure things out.

Shubha Chakravarthy: In your career you work with many companies, many technologies, and many patents. Is there one that stands out just because it was so special or so fun, or so impactful?

Laleh Shayasteh: I always say that I take any achievements and any agreements in stride and in little pieces because then keeps everybody humble.

That includes all the agreements that we have done. Without naming names, Berkeley is the creator of a massive technology that is really changing the world of science right now and the world of medicine. That would be one.

We also have huge agreements that have to do with synthetic biology and synthetic biology in batteries in diagnosis. So, if I name a name, and my inventors hear and then other inventors did not hear it then no. That would be the challenge. I don’t want to go there.

Shubha Chakravarthy: I know. I don’t want you to go there. We want you to be happy and safe and compliant within whatever requirements you are required to stick within. Then getting into the actual function of a technology transfer office, what does a TTO actually do?

Laleh Shayasteh: What we do in our office is that we take in invention disclosures. We take in software disclosures and then we work on them.

So, a software disclosure is an easy one because by the moment we receive the software or the software is created, it is already copyrighted in the name of the creators.

But then when invention disclosures come along, we contact the inventors, we talk with them, we see where the technology is, how it is doing, and when they are going to be publishing it.

As a university, we are a publish or perish just like all other universities. So, the threshold to filing a first application is almost zero. We always file the very first application very quickly. After that then we start to put out a non-confidential disclosure of the technology on our website and from there then we try to license out the technology.

A lot of times the professors, the students, the postdocs already know that they want to make a startup, and so they approach us, or they have connections with other entities, with other companies already, and they bring the companies to us, to do a license agreement.

We also do license agreements, and we take the invention or the technology from cradle to grave, literally. We also deal with any intellectual property related provisions in different types of agreements that come into university.

Shubha Chakravarthy: Got it. How does a TTO get organized? Typically, who staffs them? Can you talk a little bit about that?

Laleh Shayasteh: So, different TTOs are very different. Our TTO basically is staffed in a two-sister office form. Our sister office is called the IAO.

So, it is the office that brings in money from big companies. They negotiate agreements and sponsor research agreements from big companies. We deal with the IP parts and provisions of those agreements.

Our office now deals with, let’s say inventons have been created no matter from government funds or from actually the sponsor funds, right? So, what we do is that we then deal with the inventions, and we then try to license them out.

Both our sister office and our office bring in money to the university through different mechanisms. The way we are staffed is that there are four of me in the office and we deal with taking in invention disclosures, licensing technologies, and everything that I spoke about.

Then we have staff members in our front office who help in to take in the disclosures and also file everything away for us. They help us with signing of agreements and to be the second sets of eyes that we have.

Shubha Chakravarthy: It sounds like clearly the good part is that you’re a revenue generating center, so that is great. To some extent it makes monitoring or measuring performance easy.

But outside of the revenue aspects, are there other metrics that you use to see how you are doing as a TTO?

Laleh Shayasteh: Our job in general is one to make money to bring in revenue into the university, but at the same time it is to help other units. It is to help the inventors.

It is to help everyone else with any intellectual property related questions that they have. But the ultimate measure of performance at the end of the day would be, “Let’s create agreements that will bring in money for the university.”

Shubha Chakravarthy: I’ve had a couple of short conversations with TTOs at other universities, and it seems to me like there are multiple different approaches that different universities take in terms of how the TTOs organize and what the philosophy is.

Can you please comment on what some of those approaches are and why a university might take one approach or a philosophy versus another?

Laleh Shayasteh: Sure. So, many TTOs completely divide up what we do. For example, in our office, we do everything from cradle to grave. One person will be responsible for that one technology from cradle to grave.

Some of the things we don’t do, for example, are that we don’t look to see if something is really patentable or really commercializable before we want to file on it.

Other TTOs take a very different approach. They actually do look to see if something is patentable. When we have a time pressure, I don’t think that is probably the wisest thing to do, but for the specific TTO, that will be excellent.

Some staff members only do prosecution. Some staff members only look at how this technology is doing, and some other staff members only do licensing activities. They only do licensing and that is a divided part. But if it works for the TTO, more power to them.

In our TTO, for a massive institution like Berkeley, we only have four people who do this job. For the past 12 years or so the number of startups that we start is only second to Stanford.

Nobody else has as many startups as Berkeley has, and we only have, four members. That’s it. So, we are particularly proud of that. Of course, we are also pressured, and we are looking for staff members, but who isn’t?

Shubha Chakravarthy: That is really impressive to hear. Coming to the point of the view of the entrepreneur or the researcher. So, a researcher, an inventor, a scientist, typically, at what point would they encounter the TTO and what triggers that first contact?

Laleh Shayasteh: We try, when we have new professors, new faculty member to actually have meetings with them and to have conversations or open houses where we provide, “Hey, you know, we are the Technology Transfer Office. This is what we do, please provide your inventions to us,” because a lot of staff members don’t know very much about inventions, invention disclosures, and all of these.

But the first thing that triggers normally is because somebody says, “I’m about to provide this talk or do this publication, and I think there might be something important in here. What do I do next?”

Sometimes, they say, “A startup has come to me,” or “Somebody is interested in my technologies or the work that I do. What do I do next?” But most of the time, the first trigger of encounter that we have with our inventors or with the staff members in general is through an invention disclosure.

Shubha Chakravarthy: For those of us who don’t know, what is an invention disclosure?

Laleh Shayasteh: So, an invention under US patent law is something that is novel, something that nobody else has done before. It is non-obvious if you put two the pieces together and nobody has put the pieces together like you have done before and it is useful.

For example, you cannot create a new mouse to just feed it to a lion. The mouse needs to be good for medical purposes, so you can do research on them, and it needs to be described to somebody like yourself in a way that helps them to understand exactly like you understood it.

So, if they pick up your invention and go to the lab, they will be able to recreate it. That’s called an invention.

So, an invention disclosure is an act. It is a document that the inventors, those who conceived the original invention, put together this document.

All offices basically have invention disclosure forms, and we always ask them to go there and file the disclosure form. It is a very simple form. “What’s your name? What did you think of? What is it? Where did the money come from?”

This is because we have obligations to a lot of entities. If the government paid for it, the government gets rights.

“Where did your money come from? Tell us a little bit about what this is, and did you publish it already? Did you talk about it with anyone and or are you planning to talk about it with anyone or publish it? If you are about to publish it, do you have a document that you are about to publish, like a pre-public draft?”

We ask all of those and they basically provide those documents to us, and we go from there.

Shubha Chakravarthy: It sounds like it is important that you establish the university’s rights to it before it becomes public knowledge because I remember that I was talking to a VC in life sciences, and one of her pieces of advice to entrepreneurs was, “Please don’t go out there and publish it before you make sure that you protected your IP in this.”

Laleh Shayasteh: Any employee of the university is one who gets paid by the university. So, that would include somebody like me or also professors and PhD students or postdocs.

Undergrads don’t have to give theirs because they pay their own way. IP belongs to themselves, but the day we enter into the university, we signed this agreement that says all my IP will belong to the university. So, that has already been established.

But if we want to protect the rights to any piece, we will need the disclosure. If we don’t get the disclosure and if we cannot file on it actually in a timely manner, the rights are lost throughout the world.

In the US we still have one year to claim rights. But nowadays, for any inventions, it is the first person who gets to the patent office. So, if within that year somebody else goes to the patent office and files you may not want to go after them because it is an extremely costly process. It is not worth it.

Shubha Chakravarthy: So, if somebody comes to you, say I’m about to publish a paper. I found something in the genetic area, and I file an invention disclosure. What do you do with it next? What happens after that?

Laleh Shayasteh: So, the first thing we do is that we hope that they have already done that invention disclosure and we have received it.

One of the four of us picks it up and then we run with it, especially when there is a publication that is imminent. We do all of our filing of applications through outside counsel, meaning we hire firms to do these filings for us.

We establish relationships with firms that have been working with us for a long time. They know exactly what we want and how we want it.

Since I already have, for example, since I already was a patent agent and then a patent attorney before I came in, I know exactly what I want in these patent applications. So, once they draft the application, I will review, the inventors have to review, and then we file the application.

Shubha Chakravarthy: That is when you have established the rights, correct? So, you have protected it so that nobody else can come in and claim precedence over you for that specific invention or property?

Laleh Shayasteh: Then we say, “Okay, go ahead and publish.”

Shubha Chakravarthy: So, now they have published. Then what happens to that IP?

Can you walk us through a generalized example of two or three different paths to generating or monetizing that IP that you would typically go through with, with any of these disclosures?

Laleh Shayasteh: Sure. If it’s a software, for example, and we didn’t have to file a patent application on it, advertise the software. Sometimes we will license the software. Most of the software that we do provide, we open sources for the whole world on a really simple basis. So, like the whole world uses it. Even if you want to commercialize, no problem. Go on.

That has been Berkeley’s stance for a long time. It is pretty rare that we do software licenses for monetary gain, but we do, and they have been good too. Then we come to the patents and normally with the patents then we have remember that we are licensing something really early on.

We are a university. We don’t have products. We don’t have technologies that are advanced. They are really early on, right? So, if it is a startup, we enter into simple agreements with a startup.

Normally the first agreement we enter into are agreements that say, “Okay, you can work on this technology in-house just by yourselves. You cannot sell it. You cannot advertise it to anyone else but work on it in-house and if it works in your hands, come back and then we will talk license because you as a company need to figure out what it is you want to deal with and how you are going to commercialize it too.”

Then they come back, hopefully in a couple years, they come back with a very good commercialization plan. Then from there we start on a term sheet and then we start negotiating a license agreement.

Shubha Chakravarthy: So, there is a time when you know that there is a potential property, as you said, it might be early on, and then there is a time when they need to go build it, flesh it out, figure out what it is going to look like.

Does the university provide any support as an entrepreneur? Should I be looking to the university for support? If so, do I as an entrepreneur make sure that I’m putting this to the best use? Since that is good for me, it is good for the university, and it is good for the world.

Laleh Shayasteh: So, if the inventor themselves is interested in starting a startup, we have a webpage and a huge community of not only inside facing funds, but also different venues on how to test out your technology.

There are in-house places or small places, so you can actually work on your technology. We even have a research infrastructure commons where the company can come inside the university and use university resources to work on their technology before they move out. So, the University provides the resources.

Our office cannot be on both sides of the table, right? We push out the technology, but we also provide the resources. We tell them these are all the resources you can go to, and we have a very rich vault of resources that any entrepreneur who is interested in starting a startup out of a university can go for to take courses, different venues, and talk with others to get their startup up and running.

Shubha Chakravarthy: So, in that intervening period, whatever time that is, it sounds like you have a very minimal role.

Your only role is the guardian of the intellectual property, and then you started taking an active role once it shows some commercial viability.

Laleh Shayasteh: Yes, so the prosecution part of it is also like a day job, right? As the patent application is ongoing, prosecution happens. This means that this patent application goes to different patent offices, and we start to hear back from the patent offices, and we need to decide where to go, how to go, what to claim, and how to tailor our claims to get the best claims possible.

Meanwhile, if there is interest in the technology, our job is also to now negotiate a license agreement with the entity that is interested in a license to this technology.

Shubha Chakravarthy: So, then you’ve come to a point where there is a commercial valuation, or a commercial opportunity attached to this.

Now, I can see two or three different ways that you mentioned earlier in terms of the paths that the skin takes. One is somebody who has been affiliated or is affiliated with the university, wants to take the market.

Can you walk us through a simple overview of what that typically looks like, and then we’ll get into Disney or somebody else coming in and trying to use the property that you have ownership of?

Laleh Shayasteh: So, you put out the two perfect examples, right? If it is a startup out of a university, we try to be kind to our own startups, and knowing that startups don’t have a lot of money we structure our deals in a way that entering into a license agreement is not going to be costly.

But then we back load the license agreement so that royalties will be high. Not that high, but royalties will be what the market requires. But we will also take a bite out of the company, meaning that we will ask for stocks in the company. So, if the company does well, we will also do well with them.

This also shows that our skin is in the game because we are funding the patent applications that is going into this until the company has enough money to pay us back for all the prosecution. If a big company, let’s say Disney or massive entity, let’s say Pfizer comes around, that same technology is going to be at least 10 times as expensive for them to enter into the agreement because we are never going to get stocks in them. So, we handle, and we deal with the licenses with massive companies as we would with any other massive company, with the market rates instead of rates for startups out of universities,

Shubha Chakravarthy: I’m just curious as a potential entrepreneur would be, there is part of it that says, “Hey, there is a standard rate of X percent royalty fee or Y percent licensing fee in a certain industry or a certain category.”

But are there any other complicated financial calculations that are involved, or is it a “Just give me X percent and I’m done” kind of a situation?

Laleh Shayasteh: Okay. So, there are a lot of calculations that will happen. Think about it this way. We provide what we know to be the best numbers. How can we find out the best numbers for this particular category of technology?

We enter into conversation with the potential licensee. Of course, it is possible that the license technology or product is not going to be the only one that they are going to be selling. Maybe we are providing one piece of the whole puzzle.

So, now we have to discuss with them how we will deal with the royalties in this case or if you want to sub license this technology, how do we deal with those royalties? How do we deal with those numbers?

We have to be creative and both sides have to be creative and also a little bit flexible on how we negotiate these numbers to get to the best numbers possible so that the licensee is happy, and we will bring in money for the university as well.

Shubha Chakravarthy: Got it. This is where I imagine what you talked earlier about having to be creative. It is all going to come in the picture.

Laleh Shayasteh: That is exactly when the rubber hits the road, literally.

Shubha Chakravarthy: Just looking back on your time, either at Berkeley or before that, are there aspects of this whole deal or arrangement that require to be more creative than not?

If so, can you just talk generally about what dimensions of the deal would require that level of creativity?

Laleh Shayasteh: Really all the measures of the deal aside from all the verbiage. A deal is a bunch of numbers. So, if you pressure one number down, you have to be able to increase the number somewhere else in that agreement or if you are completely eliminating the numbers, let’s say a startup is coming to me that literally has no money.

But they are interested in the license agreement.  So, maybe I won’t take money for the first couple of years, but then we will take money.

So, all of them can be interesting and all of them need to be number variations that we work out with the potential licensee so that they will walk off happy. They will be able to bring their technology to the marketplace, and we will also be happy and able to support them in their quest.

Shubha Chakravarthy: Got it. I assume that in this process, do you have to deal with a lot of financial scenario analysis or very heavy calculations to understand what some potential outcomes might be or is it not that complicated?

Laleh Shayasteh: It is not that complicated. We have floors, yes? If somebody says that “I’m going to be mixing your technology with 30 different technologies,” I’m not going to go down to one-thirtieth, right? The university is not going to go down to one 30th. We will print a floor. We just need to be reasonable with each other.

At the end of the day, the numbers work themselves out. We really don’t want to pressure them or us into complicated calculations ultimately. We need a bunch of numbers that we are both going to be happy with and which turned out to be sort of the same as we started, except with some variations.

Shubha Chakravarthy: This means that, let’s say every day or every month, some new technology is going out and now it is starting to earn money. Does your office also have some kind of an accounting back office?

How do I, as an entrepreneur, stay in touch with the technology transfer office? What is a typical tenure? During that tenure, how do I make sure that the numbers are working out and the cash is flowing and everything is clean?

Laleh Shayasteh: We do have one finance person and compliance person in our office. The license agreement takes care of a lot of those issues because one of the things that we absolutely want from the licensee, you remember I said that commercialization plan, and the reason for that is that we are an entity that is funded by the federal government and the state government and taxpayers, such as yourself and me. We expect the university to do the best with the technologies that come out of the university.

So, when a licensee comes along, they provide a diligence plan that gets them to the commercialization. That diligence plan will be in the license agreement, and we will keep their feet to the fire on those diligence timelines and plans.

So, before they commercialize, they tell me, for example, “I’m going to go into the beta mode. I’m going to be doing marketing plans. I’m going to hire three C-suite individuals. Then I’m going to do this and that and some years down the line, I’m going to be commercializing it if it is a biological or potential possible compound. Then it is going to go first phase, second phase, the third phase, and then FDA approval and then commercialization.”

So, we keep their feet to the fire and some milestones may come along as well. Once they commercialize, then on a quarterly basis, they have to tell us what they have done, how much they have made, and provide us the royalties.

UC is special because there are 10 campuses altogether, and all of us work with what I like to call “The Mother Ship” – that is office of the president. Office of the president handles all the financials for all the universities.

So, when we want to either invoice the entity or they need to give us royalty money, it all goes through the main accounting system. When they are non-compliant, that is when our director goes after them and makes sure of what is going on.

They’ll ask, “Where are you with your payments?” We deal with it that way. It has two-layer finances, but we deal with it altogether and very well.

Shubha Chakravarthy: This is fascinating. I had no idea about the level of complexity, so thank you for laying it out. It is almost as if you think about the diligence plan and how you are monitoring it from the TTO.

You are almost like a mini-VC firm because, it is like a VC firm is sitting there and the founder is committed to all these milestones, and it sounds like it is almost exactly the same thing that you are doing because you are watching over the value of the investment you have made and your future cash flow that is coming out.

Laleh Shayasteh: Of course. But the VC’s motivation and our motivation are different. The VC’s motivation is, “I want to make money.” Our motivation is, “We need to make sure that the licensee is not putting our technology on the shelf while they are developing a competing technology that is going to do better for them.”

That is why we want the diligence plans. That is my job. If it brings money, “Hey, that is fantastic!” But we need to make sure that our technologies are seeing the best light of day for as many people as we possibly can.

Shubha Chakravarthy: That is really fascinating. Then, let’s say that you have this portfolio of patents. You have all of these intellectual property rights, broadly speaking. You have got this big portfolio, especially for a university of your size.

How do you manage this portfolio? It is a portfolio of assets, right? What approach do you take to manage these specially when it comes to, let’s say a single entrepreneur like me.

Let’s say that I’ve licensed something from you. There is always a risk to the property. You can take an approach of what my theory of patents is. Do I want to scare off other people? Do I want to go trolling?”

What is the value of the patent? What is your approach to that and how do you make decisions as to how to protect how much money to spend and how you work with the entrepreneur in case of threats to the IP?

Laleh Shayasteh: Okay. So, our job is such that I always come back to the fact that as a university, our job is research and education and not gambling money. Our threshold becomes higher and higher each time we want to move forward with the filing.

So, the very first filing that we do is almost a no-brainer. We always do the first filing easily. The second one, we start to go, “Should we really do the next filing or not? Professor, how is this technology coming along? What are you doing because we haven’t received commercial interest?”

The third stage is when the application becomes really expensive, and by then, if we haven’t had any commercial interest, chances of moving forward, for our office to pay for patent costs is pretty low.

It is pretty low unless the professors are absolutely committed and the work is coming along, but it is a technology that honestly takes a very long time to come to fruition. But if we have a licensee and we are moving together and we want to enforce the patent, which is your question.

Enforcements only happen if the licensee is an exclusive licensee, so they have all the rights to the technology, and they are sitting in our shoes because they are sitting in our shoes. We allow them.

We say, “Okay, you think somebody is walking all over our technology? Prove it to me.” They have to prove. They can’t just say, “I think they are doing this, and we are going to go after them.” They have to do their due diligence a hundred percent and completely. If they have done their due diligence, if they have been good, and if we agree, then they can go ahead and sue.

UC always reserves the right to join or to not join and if we absolutely get dragged in, then they are going to have to pay for us too. But most of the time, if the licensee has been good, if they are paying, and if the technology is good and if somebody is literally walking over the rights, then we will likely join.

Shubha Chakravarthy: Then, let’s say I take something, some life sciences thing. I’m going along, I’m doing this stuff, and then suddenly a new application or some adjacent discovery or area of opportunity shows up.

As I am the licensee, if somebody says, “Hey, have you thought about applying it in this area?” Or “Have you thought about that?”

Then what happens? Do I come back to you and say, “Hey, you know, I’ve figured this out. Will you help me file a patent in a different classification?” I’m not an expert, I’m just making this up. So, how do future opportunities and future applications play into it? What role do you play and what role does your entrepreneur play?

Laleh Shayasteh: That is two questions. It will have two answers really. If you are the entrepreneur who has moved on, has a company, and you find another technology that is very similar, your job is to go file for yourself.

Now your company will need to take it has nothing to do with UC anymore. You go on, you do your thing because my job is to take care of patents and technologies that come out of the university, not technologies out there.

If technologies come out of the university that are bifurcations and you remember that invention disclosure, one of the invention disclosure questions is, “Who do you think might be interested in this?”

The inventor might say, “Look, Company X already licensed that technology and will be interested.” So, we will reach out to that company, but we will not be freely giving it to them. They will have to negotiate or pay us a little more or a lot more to know to get that technology as well.

Shubha Chakravarthy: Then we have gone along, and I have licensed it. Is there a typical term, and if so, what happens at the end of that term? What happens to me as an entrepreneur? I’ve been using your technology. It is a critical part of my offering. What happens next?

Laleh Shayasteh: A patent from the date that is filed nationally has a 20-year lifetime. The US patent law gives us the right to stop others from making, using, or selling the technology in exchange for providing how we did it to the public.

So, the life of a patent is 20 years from the date that it was filed. All of our licenses have the life to the last patent expiration. Once it expired, enjoy.

Shubha Chakravarthy: Thank you. Have you seen a lot of that happening, like where patents have expired, and what entrepreneurs have gone on to do?

Laleh Shayasteh: Yes, of course. Some companies are really successful, so, they go on and do whatever and that is perfectly fine with us.

We cannot reach more than we should be deserving, we also license actual materials, not just technology, but materials, let’s say mice or plasmids and stuff that have come out of the labs under material agreements.

Sometimes when people ask for those, they have a life of five years or ten years and if they want to use the material for longer than that then they come back and they just ask for it longer. These are difficult materials to recreate.

If it is software, software has a particular lifetime, it doesn’t go on forever. We say 10 years, and then if you are interested, “Come back and we will give you another 10 years with it.” We try to be reasonable.

Shubha Chakravarthy: Got it. You have worked with a lot of entrepreneurs and scientists. Are there typical best practices that they should follow, especially if they have an interest in personally commercializing it as an entrepreneur?

Also are there any don’ts, like pitfalls that they should avoid, making sure that they are not compromising their own value or the value of the university’s properties?

Laleh Shayasteh: The answer to both of those is one thing, do not publish and do not talk about it to others before you provide an invention disclosure, or if you want to talk about it, come to us. We will help you with a non-disclosure agreement.

So, if we want to talk about your new technology with Company X, come to us provide us with a disclosure, and we will use the disclosure as a basis to say, “Company X, Professor ABC wants to speak with you about this technology. Please sign that you are not going to be disclosing it to anyone else, nor are you going to be using it in any bad way and then you can talk to them.”

Shubha Chakravarthy: Then from then on, it goes into whatever path it takes and you will handle it appropriately from there. I want to ask a slightly related, but slightly tangential question.

I’ve read some research that says that women in science tend to file fewer patents than men. Is that true? Related to that, have you seen any differences in terms of how women scientists have handled both the patents themselves and the potential for commercialization where there might be a lesson for other women to learn from?

Laleh Shayasteh: In Berkeley, we are particularly lucky that no, we don’t have any difference between the number of men or women who provide disclosures. They are pretty much equal.

As far as startups go, I can tell you a hundred percent that women work a million percent more than men do and unfortunately, women get a lot less money from VCs than men do. That is something we are really trying to work hard on with VCs and with any companies that come along and as universities.

Women get a fraction of what men entrepreneurs can get as far as VC funding is concerned. So, I am fortunate that I work with a lot of women entrepreneurs who are taking technologies out of the university, and I can tell you without a doubt that they work a hundred percent more, really a lot more than gentlemen do to get their technologies funded and moving.

Shubha Chakravarthy: Just from all the experiences you have had and all the conversations, are there tips or potential areas or things you can offer that might help to equalize this funding gap that we all know exists? What have you learned?

Laleh Shayasteh: I wish we could. One of the things we do is that we put the numbers out there, right? We keep putting the numbers out there and the statistics out there and ask the VCs, “Consider this when you are trying to put money” and we also try to we try to pivot the women entrepreneurs to the VCs that are being led by women. That is the best we can do.

Shubha Chakravarthy: I keep asking because this is my personal mission. So, I keep asking.

Laleh Shayasteh: It is a difficult mission. Hopefully we will get to a place where funding will be independent from the gender of a person.

Shubha Chakravarthy: Yes, from your lips to God’s ears as they say.

Then moving to a slightly different topic, so far, we have talked about the property that is sitting within the walls of the university, so to speak, but there are patents and intellectual property that is being created even outside the walls of a university where maybe somebody doesn’t have access to the resources of a TTO, like somebody within the university.

So, what tips would you give them to protect and to commercialize this given that they don’t, especially women and underrepresented women, so that they can have the best shot of commercializing and getting the value, to your point, just a minute ago, out of everything that they worked hard to invent or create?

Laleh Shayasteh: Since I stood in the walls of a university, I have not had the chance to speak with a lot of people who are outside of the university. But if they are outside of the university, or for example, for people within the university, within our university who are not University employees, like when they approach and they always do, I have this idea.

What do we do is that we tell them, “Come to me. I will introduce you to attorneys that will do a fantastic job in your area and will not charge you a lot of money. But do enter into non-disclosure agreements.”

I have worked with a lot of ladies actually to help them do non-disclosure agreements so that they don’t give away the farm when they are talking about their technologies to others.

Shubha Chakravarthy: Are there tips of three or five things you can offer to them as dos and don’ts, to protect whatever they have come up with?

Laleh Shayasteh: Don’t talk with others about your technology unless you have filed, or unless you have done a non-disclosure agreement. Try to reach out to those who might know people from outside university. Don’t always ask university people. What if they do? I’m always happy to answer questions and to guide them to who to go to the government which also authors a lot of programs for small business grants for people to move their technology along if they can.

Shubha Chakravarthy: Got it. This has been incredibly informative, so is there anything I should have asked you, but I didn’t?

Laleh Shayasteh: No, you haven’t but the answer to that would be to try to connect with other women like yourselves who are willing to help out and get help.

Basically, just connect with them. Get help if you ask. There is so much help out there that you’ll be able to utilize.

Shubha Chakravarthy: Awesome! Thank you so much Laleh. This has been a really informative and it was a conversation that I’ve learned a ton of things from that I didn’t know before and I’m very sure that others will as well, especially those in the STEM fields. They will gain a lot, not just today, but hopefully for many years to come. So, thank you. It has been a true pleasure.

Laleh Shayasteh: Of course, same here. Thank you so much for this opportunity. Take care!

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