IPAO Interviews Dr. David Townsend
Head of SPECT and PET Development, Singapore Bioimaging Consortium
Professor, National University of Singapore
For years Dr. David Townsend has carried out life-saving imaging research at prestigious universities from the University of Geneva to the University of Pittsburgh and then the University of Tennessee. However, after enduring trials with the bureaucracy that has become university technology transfer and compliance, he is relocating his research efforts out of the U.S. to Singapore.
The legal and compliance hurdles of many U.S. universities are driving valuable researchers like Dr. Townsend to become expatriates. In a time when America most needs its innovators to help reverse its economic downturn, we are driving them to foreign institutions because of cumbersome and ineffective bureaucracy.
IP Advocate: Dr. Townsend, we know you as the co-inventor of the combined PET/CT scanner which was hailed by Time Magazine in 2000 as its Medical Innovation of the Year. And then later as the defendant in a high-profile case filed by the University of Pittsburgh against you and your co-inventor over this invention.
Dr. Townsend: Yes, all of these things, but hopefully more for my research activities than for the litigation with the University.
IP Advocate: Naturally. You actually left Pitt prior to the lawsuit being filed?
Dr. Townsend: Yes, I worked for UT [University of Tennessee] after I left Pitt from 2003 to this past June, and I am now going to work for the Singapore Bioimaging Consortium (SBIC) and the National University of Singapore.
IP Advocate: Let's talk first about the circumstances that led up to the litigation in terms of your situation specifically and then the academic arena overall. What was your experience with the technology transfer office as you were submitting documents and disclosures required by Pitt?
Dr. Townsend: You know, dealing with any bureaucracy, there are forms and more forms and policies and fine print and it's a lot to keep up with and deal with and understand, but over a period of years, I stayed in compliance to the best of my ability.
IP Advocate: Can you give us some specifics?
Dr. Townsend: Sure - prior to accepting the offer of employment with Pitt, I had told them about my research with Ron Nutt [founder of CTI PET Systems, now owned by Siemens]. You know this was an ongoing collaboration we had and the PET/CT scanner had already been conceived in Geneva. We hadn't built it at this stage, but had certainly conceived it and discussed it and were excited about it, but were unsure of a sales market for it because of the high cost of imaging scans and limits on insurance coverage and reimbursements for them.
IP Advocate: The scanner was invented in terms of developing the concept prior to you coming to Pitt, correct, and you were already working with Ron and his company? Did Pitt ask you about this? Was this a roadblock to Pitt offering you a position?
Dr. Townsend: Oh yes - they knew all this and it wasn't a roadblock of any sort. I think it was a part of the attraction for Pitt to bring me in because of the work and research I was already doing in Switzerland together with CTI in Knoxville, Tennessee. And I was required to submit extensive disclosure and conflict of interest forms telling Pitt all about my existing research, my relationship with Ron and his company and so on.
IP Advocate:You submitted invention disclosure forms as required?
Dr. Townsend: Right. There were forms detailing the scanner we were reducing to practice. There was an agreement between CTI and Pitt for the materials and components CTI was funding, and Pitt was the designated test site for the prototype PET/CT machine. We also had an NIH grant to help fund the PET/CT development.
IP Advocate: What was the level of interaction and interest by Pitt's Technology Transfer Office during this process?
Dr. Townsend: I found them to be amateurish and inattentive for the most part. They just sat back and weren't really interested until I suppose they thought there was some money to be made. I don't really know, of course, what went on in the TTO office at that time , but I know from my observations that there was no interest, no real interest and then bang - in 2003 - anger and accusations.
IP Advocate: So is it your opinion that Pitt's TTO was not performing their core functional responsibilities and instead chose to litigate?
Dr. Townsend: Exactly. There was a regime change of sorts going on and all of a sudden Pitt got very aggressive, and from my perspective, unscrupulous. The TTO had been lax and somewhat incompetent and rather than acknowledge they had dropped the ball, they tried to rewrite history through their claims in the lawsuit.
IP Advocate: Were there other factors driving this lawsuit outside of their questionable performance?
Dr. Townsend: Absolutely - there always is once the lawyers get involved. There was a lot of press at that time, in 2003, about the scanner. It had first appeared commercially in 2001 - actually G.E. made it to the market before Siemens. Our scanner was developed by Siemens - but there were other imaging researchers who had developed their own versions of the scanner. That's something that's not necessarily well known.
IP Advocate: There was a big splash in the press about you, Ron and Pitt, right?
Dr. Townsend: Well, yes and that may have started some questioning at Pitt about what their cut was going to be. I think their interest was motivated by a big company's [Siemens] involvement. The scanners were selling for $2 million and I think Pitt figured it was worth a shot to get a piece of that. If it had not shown the potential to be so lucrative, I doubt they would have bothered.
IP Advocate: The court sided with you and Ron and his company. That must have been a relief.
Dr. Townsend: You know it was so stressful - a real black cloud looming. I can't say definitively, but if Pitt had handled things differently they may have walked away with some of the royalties.
IP Advocate: You're saying the issue was more about whether Pitt followed protocol rather than whether or not they were entitled to a share in the profits.
Dr. Townsend: As a researcher at Pitt, I fulfilled my legal obligations to the university according to my letter of employment. I submitted forms every year updating them. I disclosed my work - I disclosed conflicts of interest. I really don't know what more I could have done to assist them. The ball was in their court and they just let it lie there.
IP Advocate: Are you getting rich off of royalties from these scanners as Pitt would have us believe?
Dr. Townsend: [laughter] Hardly. Before I even came to Pitt, as a CTI consultant, I had signed away any IP rights, including those for the combined scanner. I was a researcher on the project and am listed on the patent, but Ron and his company were footing the bill all along. I was certainly intellectually invested in the project and wanted to see it come to fruition because of the diagnostic potential of the device, but I never anticipated seeing a dime of royalties.
IP Advocate: Nevertheless, you are getting some royalties, correct?
Dr. Townsend: A very little bit. These scanners sell for a couple of million now and I was granted a $1,500 royalty on each scanner. I actually didn't ask for it and I certainly didn't expect it. It was really just a little gesture of thanks from Ron and CTI for a decade of my working with them to get this thing built. So no, I am certainly not getting wealthy off of this. I am still an academic researcher and professor now at Singapore National University.
IP Advocate: Let's take this up a level and talk about the overall system of university technology transfer. There is a Thursby study indicating that invention disclosures at universities are down.
Dr. Townsend: That's not surprising. The research environment can be frustrating, not because of colleagues, but because of the bureaucracy. There are so many compliance hoops to jump through and if you make it through those and conduct your research with integrity, there is always the possibility that the TTOs can be unscrupulous and just seize anything they think is profitable whether or not they have a real right to it.
IP Advocate: Is no one inventing anything?
Dr. Townsend: Well I'm sure they are - the research is ongoing - there are innovations being developed, but I think people are not very forthcoming about what they are developing because it's too difficult to work with them and even when you submit invention disclosures, as I found out, you may not hear back unless the TTO thinks there is money coming in. It can be very discouraging to researchers.
IP Advocate: You are currently in the process of moving to Singapore. You'll be at the National University of Singapore?
Dr. Townsend: I am actually packing now and will probably be there by the time this interview is published. I will be the Head of SPECT and PET Development for the Singapore Bioimaging Consortium and a professor at the National University of Singapore.
IP Advocate: Do you anticipate finding the same type of environment there in terms of commercialization, disclosure and all that?
Dr. Townsend: I know that even in Singapore, there will be conflict of interest issues, but I am certainly optimistic that the research environment will be less bureaucratic and more aware and interested in the process and progress of research at its universities and government agencies.
IP Advocate: How did the U.S. university system in its current state affect your decision to accept a research position abroad?
Dr. Townsend: I know there are universities in America where the TTO offices do their job well and the administration is not deliberately difficult, but in my experience, it has been very frustrating and difficult to get anything meaningful accomplished.
IP Advocate: I know you've had some frustrations with university compliance.
Dr. Townsend: Absolutely. In my field, the research equipment is so costly that partnering with corporate sponsors is a feasible - and often the only solution, but there's this implication that if you are willing to work with a corporation that you are being bought. Compliance officers need to understand the way the scientific community operates. If I misrepresented my data I would be exposed by my peers as a fraud.
IP Advocate: Will you come back to the U.S.?
Dr. Townsend: I can't say now. If things go well in Singapore, I may finish out my research career there. It's an interesting challenge at this age.
IP Advocate: There's a recent study about invention disclosure behavior of university scientists and it talked about factors that encourage researchers to disclose. One was perception of institutional support and another was perception of the efficacy of their university's technology transfer office. Your thoughts?
Dr. Townsend: Absolutely - those are both critical measures. If a TTO is not going to come and knock on your door, there's zero incentive to work with them. My experience is that you disclose and they don't follow up. And in some cases the ineptitude costs them if an innovation is profitable, but I think in many other cases it costs them because the researchers don't bother with disclosure. They just research, publish and move on. It's so difficult dealing with them it's often just not worth it.
IP Advocate: Do you think the decline in invention disclosure will continue?
Dr. Townsend: Until things improve, I don't see why researchers would expose themselves to either the apathy or the aggression that can be present in technology transfer today.
IP Advocate: IPAO has spoken to other researchers who have had experiences similar to yours and they suspected that their invention disclosure forms hadn't even been reviewed.
Dr. Townsend:That doesn't surprise me. If Pitt's TTO had reviewed my disclosure forms and documents, who knows if it might have gone differently. But it just seems to be a system of mismanagement on the front end and mean-spirited litigation on the back end to try to correct what was done wrong by the TTO. The whole situation is avoidable - it truly is. Researchers are doing their jobs - doing them well and with integrity. If the TTO and the administrators would apply the same work ethic to their job functions, disclosures would increase and the school would make more money and be able to retain people. Researchers have enough to do formulating ideas and getting them funded in an environment of diminishing resources - their jobs often depend on it.
IP Advocate: To summarize - you see a dysfunctional system with a lot of issues.
Dr. Townsend: It is and, you know, it can be fixed. However, a university has to want to fix it. And right now, it seems like they prefer to litigate and intimidate. It's very disappointing.
IP Advocate: In closing, if it got better - the TTO problems and the compliance policies here in the U.S. - do you see yourself coming back to the U.S. as a researcher?
Dr. Townsend: I might one day. I have been able to achieve a lot here in the U.S. but I felt this move to Singapore would allow me to try somewhere I can continue doing something meaningful. I always like to feel that my work can make a difference and when I stop having that feeling, it's time to move on.