Bianca Maria Cattaneo is a lawyer and staff member at USI Transfer, USI’s Technology Transfer Service. In a short interview, she explained the role of lawyers in Transfer.
What responsibilities does a lawyer have in a transfer service?
"In a Technology Transfer Office (TTO), the lawyer is mainly responsible for drafting and subsequently implementing contracts that govern the relationships between universities, researchers and external partners. This work involves negotiating and finalising specialised contracts, including non-disclosure agreements (NDAs), confidentiality agreements (CDAs), material transfer agreements (MTAs), and license and collaboration agreements. Additionally, it includes conducting legal assessments related to patent protection and management of intellectual property rights. Furthermore, this role encompasses providing comprehensive legal advice to ensure that all research and exploitation initiatives comply with the relevant legal framework and the internal regulations of the institution concerned.
Why is it important to have a legal expert within the service, and how does this help professors and researchers?
"The internal legal expertise within the service enables the conversion of knowledge into opportunities by effectively managing legal, operational, and reputational risks. The lawyer acts as a mediator between academic principles and market demands, helping to define the legal framework of research and assess its legality. This process enhances and protects research outcomes. Additionally, they support professors and researchers in understanding complex legal implications and guide them throughout the entire process-from conducting research and disclosing inventions or software to negotiating and entering agreements with external partners."
What are the most common mistakes that "non-experts" tend to make?
"One of the most common mistakes is underestimating the legal implications of research projects, which can take many forms and have significant consequences. For instance, premature disclosure of results that could be patent-protected, hastily signing contract proposals without thorough review, and using standard models that are not customised to the specific case or generated by artificial intelligence systems. What may seem like a time-saving shortcut can actually be misleading, putting you at risk of losing valuable opportunities for exploitation. This oversight can result in costly and complex issues that could have been avoided with an initial legal assessment."
What motivated you to work in this sector?
"The law governing technology transfer is a complex and relatively little-known area of expertise, but at the same time, it is very fascinating due to its practical and interdisciplinary nature. As a legal advisor involved in the creation, development, and protection of research projects, one takes an active role in a process that, while defined by formal procedures, aims for clear and constructive objectives. Ensuring legal protection for scientific results, whether in research or in collaboration between academia and industry, allows us to view legal contributions as an essential part of the innovation process and collective growth, both socially and economically, rather than just a bureaucratic necessity."
