Part II – Diversity in University Technology Transfer Strategy
Like socks labeled “one size fits all,” “one size fits all” university technology commercialization strategy is actually “one size fits no one.” There’s a yawning chasm between diverse, local realities, and what ultimately gets passed off as strategy in mainstream tech transfer policy discussions, scholarly articles, and training workshops. This article is Part II of an earlier article that explored five common challenges in bringing university research to market that hold true at many universities in the U.S.
Without some kind of strategic foundation of shared challenges and common strategic insights, it remains impossible to evolve and improve how we bring university-owned patents into practical use. In this article, I’m going to go out on a limb and lay out five additional challenges that U.S. universities of all shapes and sizes have in common when it comes to managing their patent portfolios. Yet, like peeling the proverbial onion, the search for core truths is a difficult and uncertain task.
For example, last week in Toronto, at the International Commercialization Forum, I watched speakers from several nations share first-hand experiences of the wide variety of commercialization challenges they face within their national boundaries. Before that, a few weeks earlier in Salt Lake City, Utah, tech transfer practitioners from the U.S. convinced me that even within a single nation, there are as many correct strategies as there are university environments. However, even within extreme diversity, there lie commonalities.
Take, for example, the mainstream cuisines proudly served in the U.S. and the U.K. I’m in London this week. After enjoying a few meals here in England, I’m pretty convinced that so-called “American food” takes its cues from England, its former colonial boss. In particular, the mythic English breakfast — like a traditional good old American-style diner breakfast — is loaded up with sausages, bacon, eggs and fried potatoes. The most notable difference that I can see is that the English breakfast tosses in its bit of local diversity: canned beans, oily mushrooms and a fried tomato.
But I digress. Back to university patents. Below are five challenges that seemed to rear their, um… challenging heads nearly everywhere I’ve gone.
- Town, gown and state may not always see eye to eye
- Big pharma used to pay big bucks for university patents; now big pharma is becoming personalized pharma
- The best time to learn about a new invention is before you learn about it
- Industry and investors like prototypes; but few universities have prototyping resources
- Everybody’s got un-used patents. What are we going to do about it?
The above challenges hold true inside the U.S. It needs to be done, but tackling cross-country comparisons is a task too vast for a blog article — to do justice to that particular analysis would require a book. For now, below are common challenges to the U.S. system of technology commercialization that if addressed, may provide the beginnings of more meaningful public discussion about making better public use of federally-funded university research.
Five shared challenges across U.S. universities
Challenge 1. Town, gown and state may not always see eye to eye
State politicians feel pressure to prove their budgets are fiscally responsible, i.e. spending money wisely on things that will benefit everyone. Universities are frequently perceived of as elite institutions that do not benefit enough tax payers in their state. Fair or not, if this perception is not addressed, the rift between town, gown and state will grow wider as tax-payers struggle to make ends meet.
As a result, at many state-funded universities, the relationship between the university and state government is strained. Even at private universities that do not rely on state funding, a tech transfer unit must navigate tricky political realities at the regional level. In many cases, like a scalding hot potato being tossed around a university administration, the technology transfer unit gets tasked with the goal of economic development, namely creating region-based jobs.
It’s not a nice responsibility for a university administration to unload onto a tech transfer unit. Let’s face it, job creation comes as a result of larger, external economic forces. However, education of senior university administrators takes time, skill and courage.
In the meantime, perhaps the strongest and most realistically available response for a university’s tech transfer office is to offer easy and low cost access to university patents and research resources to startups and regional small businesses. The quicker, cheaper and smoother the process to license a university-owned patent or to sign up to use a costly piece of university research equipment, the better: there are few more optimal moments to demonstrate that economic development, not revenue for the university, is the goal of the tech transfer office.
Challenge 2. Big pharma used to pay big bucks for university patents, now big pharma is becoming personalized pharma
Big blockbuster patents for mainstream drugs are expiring. Big pharma companies are scrambling to find their next fix. Biotech patents have been the licensing deals that in the past, earned large amounts of patent licensing revenue for a lucky few universities. Now that game is going away. In an era of personalized medicine, biotech-intensive universities are trying to figure out new strategies to collaborate with pharma company labs.
While massive patent deals may be a thing of the past, personalized medicine and university research may actually be a match made in heaven. For example, I spoke to one expert from a large medical university who described personalized medicine as a potentially positive force. Consider that personalized medicine is tailored to the health problems of a single individual or a small sub-group of the population. As a result, in a post-blockbuster era, drug companies may find it more effective to pay for several, small university research projects and patents rather than making just a few big investments in elite medical schools to search for their next blockbuster drug. A de-centralized approach to new drugs and medical devices may force both companies and universities to explore leaner and more agile new models of research collaboration.
Challenge 3. The best time to learn about a new invention is before you learn about it
In a perfect, world, if you manage a university patent portfolio, you would be already be familiar with every invention before its inventor formally tells you about it. Imagine, if you were so plugged into the research projects going on in university labs that a formal invention disclosure would just confirm details and provide an official starting point for follow-on patenting and licensing proceedings. Yes indeed, such a high degree of awareness exists only in a perfect world. Given the volume of new inventions pumped into university tech transfer offices each year, this scenario is probably not likely to happen.
However, based on what I learned in my travels, several universities have found simple, low-cost ways to efficiently scout upstream. This actually isn’t as difficult to do as it sounds at first. If 10% of university researchers create 90% of the inventions handled by the university tech transfer office, scouting upstream with an eye on the productive 10% becomes manageable. The goal is to find efficient ways to keep an eye on the inventive 10%.
A relatively easy method I liked offered by one practitioner was to pull the names of the most active university inventors from the tech transfer unit’s operational database (this is easy to do). Once you have inventor names, it’s easy to set up a Google alert and subscribe to NSF and NIH grant awards newsletters.
Another simple way to reach further upstream is to be-friend the people who work in the campus media arm. Many university faculty alert their university’s news and PR staff when they’re about to have major paper published, or have achieved some kind of scientific breakthrough. A tech transfer unit should convince university media staff to provide a “heads up” before publishing their press releases.
In cases where a university inventor is about to receive a lot of press but has not yet turned in an invention disclosure, a few days of advance notice opens a small window of time to convince the inventor to submit a formal invention disclosure. If you, the tech transfer practitioner, are really persuasive, you can convince your media people to place a small link to the university technology transfer office on their news story.
Challenge 4. Industry and investors like prototypes; but few universities have prototyping resources
Many universities like to talk about prototyping but not that many do it. In fact, at the national level, a popular request from universities to federal policy makers is that the government should fund “Proof of Concept” Centers on campuses to help create working prototypes out of early-stage university inventions. The problem with this approach is that only a few universities get the federal money to build Proof of Concept Centers.
Rather than waiting around for federal prototyping dollars to rain down, a few universities I spoke to are funding prototypes on their own. For example, to support the prototyping of medical devices, a Vice Provost of a large state medical university on the east coast of the U.S. hosts a “Surgical Innovation Group,” a working committee that meets every two weeks to evaluate new inventions for medical devices. An engineer with prototyping equipment runs the seminar.
Each meeting, the committee – working surgeons and medical researchers — pick promising inventions they’d like to have prototyped. After every Surgical Innovation Group meeting, the engineer figures out how to transform each device invention into a CAD file, which he has 3D printed or otherwise fabricated at a local service provider. Next meeting, physical manifestations of the prototyped devices in hand, committee members can examine the concrete details and features of the invention and see whether it’s worth developing further.
Another approach for tech transfer units fortunate enough to have their own discretionary funding is to invest directly in faculty prototypes. The University of Utah Tech Ventures unit offers its faculty “small, light, fast money” in the form of prototyping grants. Each grant is about $1,500. The application form is a single page. Faculty can rent time to use the manufacturing machinery provided by the Tech Ventures unit to make their prototypes.
Challenge 5. Everybody’s got un-used patents. What are we going to do about it?
Last but not least, managing university patents is not just about the front end; it’s also about the back end — managing a patent’s entire lifecycle. In the U.S., every university with a formal tech transfer program owns dozens to hundreds of unlicensed patents that are nearing the end of their lifespan, or have been comprehensively marketed with no success, or represent a technology whose era has passed it by. Given how widespread this problem is, this challenge surfaced in nearly every strategy discussion I took part in.
Setting up a multi-university patent pool appeals to many tech transfer practitioners I spoke to. In a patent pool, several universities contribute unlicensed patents into a common database where companies that wish to license them sign a single license that covers any number of patents. However, patent pools are a strategy that’s difficult to sell to higher-level university administrators.
For a patent pool to work, the pool’s standard patent license needs to be simple — no quibbling over terms to squeeze out a few dollars of licensing revenue. Therefore, in an efficient patent pool, each participating university agrees to a common revenue split of licensing royalties. As a result, a high-level university administrator — under pressure to generate revenue from the university’s patent portfolio — takes a risk when she approves the release of patents into a multi-university pool.
So far, this may not sound so risky. What’s the risk? It’s a common illusion that a skillful licensing person can identify university patents that have high potential commercial value. The result is a conundrum: what if you pick out the wrong patent for the pool? For the high-level university administrator, the risk is the unlikely event that a pooled patent contributed by her university ends up earning millions of dollars in licensing royalties. The wealth that would have been reaped by this lucrative patent license ends up being evenly distributed across all participating universities in the pool.
More investigation is needed to determine exactly what form licenses for this hypothetical patent pool should take. Non-exclusive “clean IP” licenses to reassure startups and small businesses they won’t be sued by the university for patent infringement would be simplest. In a patent pool, offering exclusive licenses invites abuse. An exclusive license would need to contain some kind of built-in “troll repellent” to ensure that a single company does not license large blocks of university patents in order to block its competition. Whatever licensing mechanism is chosen, it would need to be hands-off: no reporting, no compliance and no milestones.
While many traditional thinkers might balk at the idea of releasing un-used patents into the wild, consider that these patents, if left on the shelf in their individual university, would likely never find a home. In addition, the release of un-licensed patents is a powerful symbolic good-will gesture, that universities are not simply guarding piles of un-used intellectual property for no good reason. By taking the risk of releasing a potentially lucrative patent into the wild, universities would demonstrate that they truly are patenting and licensing research for the greater good and not to earn licensing revenue.
An all-too-common assumption is that universities are the same. Too much university technology transfer strategy, policy and education overlooks regional — not to mention international — diversity. Although English and Americans seem to enjoy a similar style of hearty breakfast, when one pushes oneself away from the table and wanders into the larger world, diversity abounds. Regional conditions matter. So does the size of the university, its research budget, the age of its tech transfer unit, and the presence of local industries.
We need to build an infrastructure of policy and tech transfer education that takes into account the diversity across universities. First, however, identifying a few key commonalities might provide a foundation upon which to create more flexible and realistic policies. Individual universities need room to maneuver at the local level to best support their unique researchers, regions and industries.
image credit: morganlinton.com
Melba Kurman writes and speaks about innovative tech transfer from university research labs to the commercial marketplace. Melba is the president of Triple Helix Innovation, a consulting firm dedicated to improving innovation partnerships between companies and universities.
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