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Ethics and Best Practices

Ethics and technology transfer do not always go hand-in-hand. Share your thoughts and experiences here.


A Tip of the Hat to the Best University TTO's

IPAO Salutes Those Who Are Moving Innovation Forward

As a new decade begins, IP Advocate would like to recognize those university TTO's that see value in innovation as more than financial. Those institutions that have regarded its faculty and student researchers as integral to the technology transfer process have achieved greater success.

University of North Carolina
Start-Ups on the Fast Track

UNC announced in 2009 the launch of their new Carolina Express License Agreement to make starting a company based on technology licensed from the university a simpler process. Start-ups under this agreement must have at least one UNC faculty member as a founder and agree to pay 1-2% of net sales back to the OTD.

This fresh idea was developed by a committee whose members included a Vice Chancellor, a serial entrepreneur and a professor already involved in a start-up, who also chaired the committee. They were tasked to "find a way to do licensing faster".

"The bottom line for the committee was to find new and innovative ways to enable UNC to increase deal flow, protect the University's and the inventor's upside in new ventures, and allow companies to rapidly get launched and funded," said committee member Joseph DeSimone. Input and agreement from faculty was critical and will hopefully impact how faculty members approach the licensing process in the future.

OTD's Director Cathy Innes says, "We hope the Carolina Express License Agreement will make UNC-based spinouts very attractive to venture backed investors and other commercialization partners, ultimately amplifying the impact that Carolina will have in economic development and improving the health and well-being of society."

Interestingly, while Dr. Ashley Stevens, President of AUTM says he "applaud[s] UNC for this initiative and hope that others will follow their lead and develop similar template agreements that work in their communities." However, Stevens points out that "the terms UNC is offering companies to induce them to accept these standard terms are highly concessionary, and I suspect that many universities will not be prepared to accept such a diminished share of the rewards of future success in order to streamline the licensing process."

University of Utah & Utah State University
Investing in Innovation Statewide

The Utah Science Technology and Research (USTAR) initiative began in 2006 when the state of Utah invested a budget surplus of millions of dollars into building "world-class innovation teams" and "state-of-the-art interdisciplinary research and development facilities" at University of Utah and Utah State University to "form first-rate science, innovation, and commercialization teams across the State".

The emphasis of this program is to ultimately improve Utah's economy through commercialization of research. Whether it is leveraged by entrepreneurial start-ups or attracting industry to the state, Utah is leading the way in developing a big picture approach through this statewide initiative.

USTAR is a vast undertaking aimed at long-term results, not a quick fix. Beginning with its inception in 2007 through realization (projected for 2015), USTAR will take place in four scaleable phases along a continuum, rather than a sequential basis. Phase I: Research and Team Building is already under way and researcher recruitment and building projects are surpassing expectations. Phase II: Extramural Funding is also progressing ahead of schedule with growth in grants submitted and won. Between 2008 and 2009, Utah saw an overall 16% growth in research awards. Phase III: Technology Development targets the quantity of invention disclosures and patents filed. Both of these measurements are on the rise as well. Also progressing is Phase IV: Commercialization, building on the other phases. Over the past year, four new companies have been started by USTAR researchers.

The influx of grant money will no doubt lead to more research, but how will it ultimately benefit the state of Utah and its taxpayers who made the investment? A recent University of Utah study using econometric modeling of 10 years of data indicates that each $1 million of new research funding will result in the creation of 20 jobs. Based on this, the 2007-2009 success of garnering over $71 million in new research dollars should net the state of Utah approximately 1,500 new jobs.

The program is still scaling up, but IP Advocate looks forward to seeing where this innovative program takes Utah and its researchers.

U.C. Berkeley
Socially Responsible for Success

Launched in 2003, U.C. Berkeley's Socially Responsible Licensing Program (SRLP) continues to lead the way in ethical commercialization of university research, setting the bar high for its contemporaries.

Berkeley's SRLP continues to fulfill its goals of ensuring widespread availability of technology and healthcare in the developing world, affordable pricing, revenue sharing, reservation of rights, sharing research materials, publication of results in accessible journals, IP management that provides commercial incentives, yet benefits the poor.

Under this model, IP licensing becomes less of a focus and expectations become better aligned. Over the last seven years, U.C. Berkeley has literally redefined technology transfer. IPIRA's Carol Mimura sees tech transfer as "an ongoing relationship continuum between the public and private sector, not a single transaction. A relationship continuum spans many years."

IPIRA also continues to redefine "success" in technology transfer, seeking to maximize research impact rather than licensing revenue. IPIRA has broadened the scope of TTO metrics to encompass social impact, translational efficiency, innovation acceleration, global outreach, uptake, collaboration, gifts, reputational gains, affiliation, public-private partnerships and product development partnerships.

Mimura and her team at IPIRA differentiate themselves from other tech transfer programs by taking the time to consider the needs of all of the stakeholders in the complex series of transactions that results in licensing and commercialization of university technology.

By building deep relationships with both faculty and industry, Berkeley recently secured a half-billion dollar long term research deal with BP to research renewable fuels.

IPIRA continues to blaze the trail of the future in IP through their vision and meaningful translation of innovation to address critical issues such as denge fever, malaria, hunger and water purification.

Carnegie Mellon
Crossing Boundaries to Achieve

Carnegie Mellon has long been a forerunner of entrepreneurship education in the U.S. with nearly four decades of experience fostering business. This entrepreneurial spirit is encouraged through several different centers on campus, using an interdisciplinary approach.

As part of the university's Tepper School of Business, The Donald H. Jones Center for Entrepreneurship helps bring innovation to an increasingly global marketplace by educating and synergizing students, faculty and entrepreneurs with research out of Carnegie Mellon's different schools.

Both the Tepper School of Business and the Donald H. Jones Center for Entrepreneurship are renowned for business solution development and venture capitalization research. The Jones Center has seen success through an interdisciplinary approach including teaching entrepreneurship at the Computer Science, Science and Engineering schools of Mellon.

"Translating technical innovations into business plans that are capable of attracting investors and securing the funding necessary for entry into the marketplace requires collaboration," said Art Boni, executive director of the Donald H. Jones Center for Entrepreneurship at Carnegie Mellon's Tepper School of Business.

Launched in 2007, Project Olympus has a mission to rapidly progress basic research into development. Critical to this mission is their "Proof of Concept" Innovation Lab where advisory board members, with on and off campus partners, works with students, faculty and alumni to evaluate the commercial viability of campus research.

Project Olympus fosters innovation through programs such as its "Show and Tell", where students and faculty are invited to introduce their concepts to regional business leaders and investors. Additionally, the center offers incubator space, start-up advice and micro-grants for Carnegie Mellon faculty and students.

Carnegie Mellon's Center for Technology Transfer and Enterprise Creation has a tagline unique among university technology transfer offices: "Choice. Guidance. Expertise." In stark contrast with traditional tech transfer, Mellon's approach is to collaborate with their researchers to facilitate translation of their innovations to the marketplace.

Boni believes the success of Mellon's strategy is built on its "interdisciplinary-academic approach coupled with experiential learning" as a "recipe for successfully incubating entrepreneurial ventures."

Stanford University
Operating On the Forefront

While most universities were scrambling to establish technology transfer offices after the 1980 passage of the Bayh-Dole Act, Stanford already had 10 years of experience to draw upon. Niels Reimers launched a pilot program at Stanford in 1968 based on what he believed was huge potential in gene-splicing research.

From the beginning, Stanford's OTL sought to operate without red tape and to be more than simply a patent office. Although one of the most active and successful technology transfer offices, Katherine Ku, head of the OTL since 1991, runs a compact ship of less than 30 staffers and 8 licensing managers. Each associate is allowed autonomy and a wide swath of responsibility - shepherding a portfolio of inventions from disclosure to fruition.

What's unique to Stanford's OTL is that their associates have a scientific, rather than administrative background and each has a specific area of technical expertise related to the innovations they manage. They rely on boilerplate agreements and allow associates to negotiate with licensees without involving legal counsel - which avoids unneeded expense and time-consumption.

When the approach is a start-up, researchers are encouraged to identify their own VC candidates and then come together to the OTL for consideration. Stanford is known to allow faculty to take up to two years leave of absence to help spinout the technology. Incredibly, most professors choose to come back to Stanford. This flexibility has helped Stanford avoid the "brain drain" at other universities where researchers abandon academia for industry.

Always one to be ahead of the curve, Stanford's Office of Technology Licensing has established a Researcher Portal where inventors can log on to a secure website and monitor activities associated with their innovations including detailed patent and marketing information, licensing information, royalty income, information on sponsored research, collaborations and material transfer agreements.

Other features of the portal are the Prior Art Tool (PAT) for Stanford inventors to conduct prior art searches and digitally signed Invention Disclosure Forms.

Stanford's OTL has a long history of success and yet a keen eye for the future and was aptly dubbed by Fortune magazine as "the intellectual incubator of the digital age."

It's All About the Inventor

CalTech is one of the rare technology transfer programs that heavily involves its inventors. While many of its contemporaries struggle with researchers withholding invention disclosures due to their dissatisfaction with their TTO, Caltech's OTT has inventors banging at the door. The "Otters", OTT's nine member team, answer that call and excel at developing a friendly and non-bureaucratic environment.

Assistant Vice President of the Office of Technology Transfer Fred Farina says he "relies on faculty inventors to help him make the best management decisions for their intellectual property." CalTech uniquely contrasts to other tech transfer offices where inventors are often shut out of the process once an invention disclosure and assignment are obtained. Instead, CalTech recognizes that their faculty innovators are aware of the marketplace for their research and leverages this expertise to, Farina says, "avoid lengthy and often meaningless invention evaluations."

While many universities exercise controllership over its faculty and their research, Caltech has infused its program with flexibility and inventor involvement and an eye toward entrepreneurship. Each year 5-10 spinouts are launched from Caltech technology with OTT assistance. The OTT negotiates the licensing deal and helps the emergent company navigate the start-up process.

Faculty are allowed to fully participate in the licensing and commercialization process - a key differentiator which keeps CalTech's researchers coming back to the OTT with their innovations. Key to maximizing invention disclosures is building and maintaining relationships with its innovators and making them comfortable with the process. The Otters meet with faculty to discuss their research, request their input and keep them involved. This approach has seen a doubling of invention disclosures.

Although CalTech is relatively small in size, it is a powerhouse in intellectual property, securing patents in record numbers to protect the innovations of its researchers. Patenting is an expensive and lengthy process and some universities are averse to investing in patents until they are sure of profit potential. This often causes problems for researchers who need IP protection. CalTech success has been achieved through aggressively securing patents and licensing technology, while encouraging full inventor participation.

A Legacy of Entrepreneurship

For the faculty inventor who wants to be actively involved in seeing their research come to commercial fruition, entrepreneurship and a start-up may be the best path. For those lucky enough to be part of MIT's entrepreneurial "ecosystem", the tools and guidance to go this route are readily accessible.

Beginning in the post World War II era, MIT recognized the importance of entrepreneurship. Policies and practice have long encouraged faculty and staff to be involved with industry and participate in spinning out their innovations into new companies. Normalizing entrepreneurship as part of culture has driven MIT's long running success in this arena. In the decades leading up to the passage of Bayh-Dole, MIT was largely alone in embracing rather than shunning industry.

MIT's Technology Licensing Office (TLO) has consistently been at the forefront of licensing its technology to start-ups. For over a hundred years, MIT has encouraged its faculty to become entrepreneurs. In the 1930s, The Technology Plan was established as the first and still largest university-industry collaboration, now called the MIT Industrial Liaison Program.

In the last decade, MIT launched the Venture Mentoring Service and the Deshpande Center for Technological Innovation. The Venture Mentoring Service is aimed at helping any MIT-related individual (faculty, staff, student or alumnus) who is considering a start-up. The Deshpande Center funds research grants to faculty with ideas that seem likely for commercialization. In its first five years, the Center funded over 80 such projects resulting in 15 spin-outs.

Critical to its entrepreneurial tradition is enfranchising its inventors and its approach. This practice, however, is still questioned by most universities. In its long-standing "Rules and Regulations of the Faculty", MIT encourages outside consulting one day per week and allows moonlighting to form spin-outs while remaining full-time faculty status. MIT will no doubt continue to be a leader in technology transfer and entrepreneurship based on the legacy of faculty involvement and collaboration in launching innovation.

University of Washington
Innovating its Approach to Innovation

The University of Washington has seen a steady increase in invention disclosures over the past decade. Patent applications, patents issued and licensing are also on the rise. With this quantitative proof that their model is working, why tamper with it? Because they know they can do better.

A few years ago, Digital Ventures was launched and with it, an Express Licensing Program. Digital Ventures was designed to manage intellectual property in the form of software, algorithms, systems, databases and digital content such as music, dance and educational materials. The Express Licensing Program allows a licensee to view the non-exclusive, source-available license, accept it "as is" and submit it to UW. In some cases, the license can be purchased on-line and paid for by a credit card. This program emulates a shopping cart type approach to licensing many of the software and tools created at the University of Washington.

Most recently, UW has rebranded its technology transfer office as the UW Center for Commercialization, UWC4C, for short. Linden Rhoads, Vice Provost of UW Tech Transfer is beginning his second year in the post by retooling the mission of his office. He believes "a name can imply a lot about a mission" and hopes "the transition to the UW Center for Commercialization conveys a proactive, full-service group of commercialization experts committed to long-term relationships with UW researchers."

The new focus is to help researchers engage with industry early-on, even before they have developed an innovation. UWC4C plans to assist researchers whether or not there is any "traditional intellectual property" to manage.

Over the past year, under Rhoads' guidance, a number of new programs were established to provide a broader set of services to support the translation of research to commercialization. The Entrepreneur in Residence (EIR) program brings business executives on campus to provide faculty an industry perspective on assessing opportunities for and developing innovation. Innovation Showcase was launched in 2009 as well to present innovative technologies ready for commercialization to the venture capital community. A new gap funding program is already assisting UW start-ups secure research and commercialization grants.

UW encourages inventors to be part of the process - to help identify markets and potential licensees - and to consider being involved in a start-up to advance their innovations. UWC4C's New Ventures Group (formerly LaunchPad Services), under the newly appointed leadership of a venture capitalist and entrepreneur, will focus on spinning out promising technology.

Research and innovation are constantly evolving. It is refreshing to see that a technology transfer organization such as University of Washington is evolving as well - not because they are failing - but because they want to continue to excel.

A Pat on the Back to the Best - an Appeal to the Rest
These universities and their TTOs operating under best practices are advancing innovation, driving the economy and bettering mankind. While each of these universities are unique in their approach, they are all a reminder that there is a better way to commercialize university research.

IP Advocate commends these schools and appeals to other universities to adopt standards suggested in the well-regarded report In the Public Interest: Nine Points to Consider in Licensing University Technology




Comments : 0 - Last Post : Feb 3, 2010 4:17 PM by: IP Advocate
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