Posts Tagged: "Technology Transfer"

Recently I visited a Congressional office with a friend who led technology transfer at a public institution located in a mid-level city not normally associated with innovation. By skillfully using the authorities of Bayh-Dole and the patent system combined with good business judgment the program was very successful in start up formation and licensing, making it a driver of the regional economy. The Congressional staff were effusive in their praise of the results, which are well known in the state, vowing to do everything they could to support continued success. However, just before the meeting my friend confided that their new leadership made it clear that they did not consider technology transfer a profession requiring special skills and experience. The staff that labored so long and hard building the program got the hint and was leaving. Luckily their achievement is recognized by other institutions that are happy to snap them up. Unfortunately, the economy of the area they left behind will pay a high price for this boneheaded mistake.

MUIR: “There are approximately 40 countries around the world that have enacted their own version of the Bayh-Dole legislation because they have seen the numbers. They have seen the success that the United States has had in commercializing these discoveries. We truly are the envy of the rest of the world. In three or four months I’m going to be visiting about six different countries. What they want to hear about is how is the U.S. achieving this level of success. So oftentimes we look at our own backyard and don’t have a full appreciation of the beautiful flowers growing there but there are lots of beautiful flowers growing in our tech transfer profession in the United States.”

Jane Muir, AUTM President: “[U]niversities are not the next patent troll because at the end of the day, university tech transfer offices were put into place to ensure that the new discoveries that happen in the research laboratories ultimately get out into the marketplace by way of product and services that improve the human condition. The big difference is with patent trolls. They’re not interested in commercializing discoveries. They’re interested in using those patents to sue legitimate companies who do want to move those products into the market. From the commercialization standpoint that really is the fundamental difference. Patent trolls have no real interest in commercializing. Their interest is in litigating.”

Jane Muir, AUTM President: “[T]he majority of all the discoveries that come out of universities and research institutions are very early stage. They’re at the stage where they’re patentable. They are a new discovery, but they’re not yet a product. In order to get them from that patentable early discovery stage to a product that can actually be taken to the market requires an additional investment of time and money, whether it be to develop a prototype or proof of concept. It could be animal studies or all of those things that need to happen to actually create the product out of the new invention. That’s why the patent system that we have in the United States is so important because without proper patent protection, there’s no real incentive for companies and investors to invest in those very early stage technologies without the patent protection.”

Any government truly interested in commercializing its research must realize that time is of the essence, risk is inherent in the process and deal makers should be supported by process. Napoleon adopted the motto: “Not a moment must be lost.” But quoting Napoleon may be too intimidating for times like these, so how about Larry the Cable Guy? Perhaps we still retain enough of the American spirit to embrace: “Git ‘er done!” Time will tell (perhaps sooner than we imagine). We’ve been trying to drive the federal R&D system with the parking brake on. It’s time to put product people behind the wheel, buckle the process people safely in, release the brake, hit the gas and get rolling. Those that used to be far behind are coming up fast in our rear view mirror.

First of all, congratulations! You made The Washington Post and they even spelled your name correctly. Unfortunately, AUTM was specifically called out in an article titled Patent Trolls Have a Surprising Ally: Universities… For a profession that keeps a low profile and goes out of its way not to antagonize people, you may wonder what in the world’s going on that you are gaining such notoriety. The answer is that you are in the sights of several groups who do not wish you well. Some want to weaken the patent system for their short term benefit, some believe society would be better off if inventions were freely available without patents; some don’t think it’s moral for universities to work with industry, and others believe they should determine who reaps the rewards of innovation. While operating on diverse belief systems, they all have one thing in common: they don’t like you.

At IPWatchdog.com we write about Bayh-Dole, technology transfer and University innovation regularly. In 2014 we are going to more regularly write about University innovations in the hope of getting good information out to the public to demonstrate the important role of Bayh- Dole and the innovations coming from Universities. Help us help you! Below is a list of the information that would be extremely helpful to have, much of which we could not obtain publicly. Critical to a good, interesting story is conveying the back story, which may be about why the inventor pursued this path in the first place or perhaps about real people who have benefit from the innovation. I understand that some of the following piece of information may be deemed to be confidential, but the more you provide the more substantive and interesting any article can be, which will lead to greater “good publicity,” which patent owners sorely need in this political climate.

Unfortunately, I’ve known for a couple of weeks what this month’s column was likely to be about. After a brief illness, my friend Howard Bremer died last Friday… Working through WARF, Howard’s efforts were critical in our eventual success enacting Bayh-Dole despite long odds. Over the years, he remained a steadfast defender pushing back against the critics of the patent system… Howard attended the Association of University Technology Managers meeting this year—an organization he helped found in the 1970’s to foster the profession. Howard knew it was his last as he was not physically able to travel any longer. But there was no sadness; he enjoyed seeing many of his friends for what he knew was the final time…

There’s nothing in the world like the U.S. public research system which is on the cutting edge of every field of science. However, to fully benefit from this investment discoveries must move from the laboratory into the marketplace. This can only happen when partnerships with U.S. industry are be made on terms conducive to commercialization. Additionally, in a time of tight budgets federal research must be efficiently managed even if that means crossing traditional agency borders to leverage resources and increase impact. Someone must be charged with insuring that the system is running as Congress, the President, and most importantly, the American people intend.

But how could Universities ever be characterized as non-practicing entities in the first place? If we are going to be intellectually honest there is no way you can characterize Universities as non-practicing entities. University innovations have laid the foundation for thousands of startup companies since 1980; in fact well in excess of 7,000 startup companies have been formed. These startup companies are not just high-tech companies, they are the highest tech companies based on the most cutting edge research and innovation our country has to offer. These companies are not imaginary or mythical, but rather they are real, tangible and operating companies; they exist! These startup companies are also U.S. formed companies that are located in the U.S. and employ U.S. workers. Now that is a jobs plan if I ever saw one!

I spend a lot of time every day and my staff also spends time every day looking through press releases, looking for stories. And I can’t tell you how many times I have come across something that I knew was good but I couldn’t get any information on. I mean literally no information other than the self-congratulating, back slapping stuff that you see in two or three paragraphs in a press release. So that is one of the things I want to talk to you about today. How do you get your story to those journalists and reporters out there who care? Continually there are calls from detractors who want to change the technology transfer system regardless of how wildly successful it has been.

Todd Sherer: “And what we’re seeing, what the AUTM survey is showing, is that patent budgets are going down. And that’s of concern to me, because everything has to go through that funnel. You can do a lot of research, basic and then applied research and have translational funding, but that technology has to come through the Tech Transfer Office and through the patent budget. So it doesn’t do us a lot of good just to have funding targeted at programs at the front end of that funnel to try to shove it through, through the right limiting step, or pull it out the other side. We need to also be mindful of the fact that we need to invest in those fundamentals, that patent and licensing part. Because we’ve also seen that the number of licensing professionals has gone down over the last couple of years in the Tech Transfer Offices. So, what we don’t want to see is that trend continue. We don’t want to see the number of our staff go down and the patent budgets go down at a time when we want to improve impact.”

Todd Sherer, Ph.D. is the director of technology transfer at Emory University, and is also currently President of the Association of University Technology Managers (AUTM). Recently AUTM concluded its annual survey and found, not surprisingly, that University technology licensing has substantial positive impact on the U.S. economy. On the heels of that survey I reached out to my friends at AUTM and requested an interview with Sherer. Our interview took place on Friday, December 14, 2012. During our interview we talked about the nearly constant challenges to gut Bayh-Dole, which is the very foundation of university technology licensing and the piece of legislation called the most successful domestic legislation in the post World War II era by none other than The Economist. We also discussed what it is that universities do and how, despite what the critics say, the basic research done by universities is hardly ready for the marketplace.