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Competition in Technology Transfer

By David Maskalick posted 04-02-2010 10:00

  

The purpose of this article is to suggest new ways to address the substantive educational issue of commercializing knowledge produced by research universities.   All but a few research universities, commercialization centers, and venture capitalists could benefit from a better understanding of this educational issue, so that more discoveries and inventions can be applied more rapidly to the goal of achieving global sustainability. This article also is an attempt to communicate to a broad audience the best way to interpret and translate discoveries and inventions into products that would simultaneously help “the major players to confront and grapple with the entire sustainability agenda” (1) regarding people, life, and natural resources globally.

This article is addressed to two audience groups. The first is composed of tech transfer offices, research managers, and scientists and engineers at research universities that produce knowledge in the form of discoveries and inventions.  The second is composed of licensing offices, research & development managers, and scientists and engineers in companies that apply knowledge in the form of commercialization of new and better products. 

In the February 22, 2010 article ‘Obama Administration Examines Universities as Engines of Economic Development’ Goldie Lumenstyk makes clear that there is contention regarding how best to accomplish this goal.(2)  During a U.S. Department of Commerce summit of 45 guests invited to address this issue, Renee Kaswan and the Kauffman Foundation  reiterated some salient points  that they had published prior to the summit.  Renee Kaswan in her web site and in Genetic Engineering and Biotechnology News and the Kauffman Foundation in their web site and in Business Week propose improving the rate at which new technologies produced by research universities are translated into commercial ventures.(3,4,5,6) 

The improvement method they propose involves introducing competition into the technology transfer process by allowing companies to take over some, if not all, of the activities performed by today’s conventional technology transfer offices at research universities.  Understandably, the Association of University Technology Managers AUTM is sensitive to the claim that the efficiencies of technology transfer offices could be improved.(7)  They believe that the rate at which technology transfer offices have helped create new startup companies, and, the amount of money received by technology transfer offices from licenses and royalties, demonstrates that they are doing a more than adequate job with the resources they have.

“In the period 2000-08, U.S. universities received 147,515 invention disclosures, filed 83,988 new patent applications, and signed 41,598 license and option agreements, of which 4,566 were with startup companies based on university research.”  This is a quote from ‘Defending the University Tech Transfer System’  from Arundeep S. Pradhan president of the Association of University Technology Managers.(8,9,10)  AUTM also published ‘The Better World Report 2009 - Innovations From Academic Research That Positively Impact Global Health’ which has 23 chapters describing inventions and their impact.(11)  Fifteen chapters refer to a healthcare impact, three refer to a food supply impact, and one each refer to geophysical, ecological, fossil fuel alternative, building material, and water quality impacts.  A more balanced impact of technology transfer would help contribute to the sustainability of the life support systems on our planet.

The broadened perspective I propose in this article would simultaneously help knowledge product producers and knowledge product consumers confront and grapple with the entire sustainability agenda regarding people, life, and natural resources globally.

Successful technology transfer has four main goals.  Accomplishing them requires people who possess legal, business, commercialization, scientific and/or engineering, and interdisciplinary communication prowess in varying amounts, as indicated in the table below.

Successful Technology Transfer

Goals

Job Skill Requirements

1st create patents based upon discoveries, inventions and knowledge produced by research scientists

legal, scientific and/or engineering, and interdisciplinary communication prowess

2nd market the applications found in the patents to commercial organizations

marketing, commercialization, scientific and/or engineering, and interdisciplinary communication prowess

3rd construct patent license agreements

legal and business prowess

4th negotiate license language, including license fees and royalties, with companies willing to purchase rights to the patent

commercialization, legal, business and interdisciplinary communication prowess

A mix of commercial competition and strong staffing for university technology transfer operations could be a powerful combination.  As a first step, companies with expertise in knowledge management could compete to gain the respect of the university in the form of a strict and comprehensive confidentiality agreement so that they could help in a number of ways. First, companies specializing in Knowledge Translation could compete to help more researchers learn to recognize how their discoveries, inventions and knowledge could be translated into the scientific and/or engineering, societal and market value that venture capitalists and applied researchers and engineers in companies seek.  Second, Knowledge Translation companies would compete to help university research managers stay abreast of faculty research accomplishments and the related scientific and/or engineering, societal and market value so the research manager can appropriately encourage faculty to file patent applications with the technology transfer office, then encourage the technology transfer office to file the patent applications with the US Patent & Trademark Office. 

Successful Knowledge Translation companies could obtain sources of revenue in the following ways.  

A)                        They could charge fees for evaluating knowledge produced by faculty and preparing for faculty, research managers, and the technology transfer office evaluation reports for commercialization possibilities.

B)                        They could offer and charge fees for ‘patent’ and ‘commercialization’ courses for faculty and research managers.

C)                        They could also charge fees for communicating the market and commercialization potential of a patent to Knowledge Marketing companies who market the applications of the patent to commercialization organizations.

D)                        They could charge the Technology Transfer office fees for a market analysis of select patent applications.

Then Knowledge Marketing companies could step in, competing to help technology transfer managers learn to prioritize writing patents based on the scientific and/or engineering, societal and market value of the discoveries, inventions and knowledge produced by research scientists who file patent applications.  Successful knowledge marketing companies could obtain revenue in the following ways.

A)    They could charge fees for the Market Analysis of patent applications in the appropriate sector of venture capitalists and companies globally

B)   They could charge fees for direct and/or broad based advertising of patent applications to customers

C)   They could charge fees for follow-up advertising through training of a knowledge sales force. 

Eventually, Knowledge Sales companies would take their turn, competing to help with directed advertising of patents to venture capitalists and companies globally who are seeking the scientific and/or engineering, social and market value present in the patents created by the technology transfer office.  Competing knowledge sales companies would also help technology transfer offices to negotiate favorable licensing and royalty terms based on the scientific and/or engineering, societal and market value of patents when selling patent rights owned by the research university to venture capitalists and companies seeking to capitalize on the value of the patents in their commercial endeavors.  Sources of revenue for successful knowledge sales services would be based on contracted commissions for completed licensing agreements.

Initially the greatest improvement in the rate of technology transfer will result from help with directed advertising of numerous patents to venture capitalists and companies globally who are seeking the scientific and/or engineering value, societal value, and market value present in the patents created by the technology transfer office. 

For example a sustainable Knowledge Marketing company could have a web portal to a relational knowledge management database holding inventions, discoveries, and knowledge produced by people at research universities.  Such a sustainable Knowledge Marketing company database would relate the knowledge products with the basic human needs market and with products that help maintain and manage the life support systems of our planet.  Products consumed by the basic human needs market are a) clean water, b) clean air, c) nutritious and palatable food, d) recyclable and durable materials for clothing and housing, e) new fuels to replace fossil fuels, f) durable and recyclable modes of transportation that use the new fuels, g) sanitation services that recycle all waste so that the life support systems of our planet are not compromised, and h) healthcare services and products. 

Since a market for the basic human needs products will always exist, the production by scientific and/or engineering research of all knowledge products related to the basic human needs will be always be sustainable.  Then the application of these knowledge products related to basic human needs by businesses that produce basic human needs products will always be sustainable. 

Our example knowledge marketing company would have been established to accelerate technology transfer so as to contribute to sustainability globally.  There will always be a scientific market demand for new and improved scientific and/or engineering tools to advance discovery and applied research.  There will always be a basic market demand for water, food, clothing, housing, a mode of transportation, and fuels.  There will always be a societal market demand for products that help maintain and mange the life support systems of our planet.   The societal market demand will be for a) the services of cleaning, storing and delivering clean water, b) creating products composed of recyclable materials, and c) services to remove and recycle waste gases, liquids and solids. 

Thus a sustainably prosperous economy can be defined as one that satisfies the societal demand for products that help maintain and mange the life support systems of our planet.   Sustaining the life support system of our planet in turn will help humanity to sustain the activities of human life.  These activities include businesses, research laboratories, engineering companies, construction companies, manufacturing companies, artistic expression organizations, and organizations helping people to help themselves. 

University faculty, university research managers, and staff in technology transfer offices will benefit by entering Meta data, for no fee into an example Knowledge Marketing company knowledge management database to describe the knowledge held in the patents the university seeks to license.  The example Knowledge Marketing company could then receive revenue in the following ways.

A)   Technology transfer offices could contract with such a Knowledge Marketing company to advertise their patents through the company database web portal, more directly on the company web site, and/or directly to venture capitalists and companies globally, so that commercial organizations querying BIKE for such patents could find them and then potentially seek licensing discussions. 

B)   Technology transfer offices could contract with such a Knowledge Marketing company to have the company enter knowledge Meta data into the company database for the knowledge, patents, and related potential applications they have translated from the research efforts of their faculty and students. 

C)   Technology transfer offices, research managers, and faculty could contract with such a Knowledge Marketing company to evaluate knowledge produced by faculty and provide written evaluation reports for commercialization possibilities to faculty, research managers, and the technology transfer office. 

D)   To better assess the value of the knowledge, inventions, patent applications and patents produced by the university technology transfer offices could contract with such a Knowledge Marketing company to perform a market analysis for knowledge, inventions, patent applications and patents produced by the university in the appropriate sector of venture capitalists and companies globally. 

E)   Technology transfer offices could contract with such a Knowledge Marketing company to train a knowledge sales force to perform follow-up marketing and complete knowledge sales contracts with venture capitalists and companies globally.

This example Knowledge Marketing company could specialize in one or more scientific or engineering fields.  Similar competing companies specializing in other fields of expertise could be contracted when a university has expert faculty producing discoveries, inventions, and knowledge in other fields such as chemistry, materials science, and engineering.  This would address the added challenge the University Technology Transfer office has when a university has many faculty and students working in diverse disciplines to produce discoveries, inventions, and knowledge.

A major initiative of this example Knowledge Marketing company would be perform market analyses for knowledge products.  The knowledge market includes companies, venture capitalists and commercialization centers.   A market analysis would list and evaluate the value of previously purchased knowledge products, current knowledge product needs, and future potential knowledge product needs.  The previously purchased, currently needed, and potentially needed knowledge products and their related value would be placed in the company relational knowledge management database.  The value will again be a function of the scientific market demand, basic market demand, and societal market demand for products that are related to the knowledge product.  During the collection of data for the market analyses the example Knowledge Marketing company would be communicating and discussing the related societal value of the commercial products related to knowledge products.  The societal value of each commercial product will be a function of either its direct or indirect value for sustaining people, life and natural resources globally.

This example Knowledge Marketing company also would express clear ethical principles publicly as well as in its vision and mission statements.  Thus, university faculty, research managers, and technology transfer offices can apply their own ethical principles to further test competing Knowledge Translation, Knowledge Marketing, and Knowledge Sales companies.

Additionally, it is likely that, over time, small companies will merge into large Knowledge Exchange companies, hopefully carrying the same set of clear ethical principles.  Each Knowledge Exchange company will have a division of Knowledge Translation, a division of Knowledge Marketing, and a division of Knowledge Sales.  In each division there will be departments with expertise in biotechnology, nanotechnology, chemistry, materials science, engineering, and so forth.

Finally, it is accepted practice in industry that employment is contingent on the fact that employees sign agreements to transfer their rights to the discoveries, inventions and knowledge they produce to their employer.  It is also fair to view a university as a business  in the sense that the faculty, staff, employees, and students of most, if not all, research universities also sign an agreement that transfers their rights to the discoveries, inventions and knowledge they produce to the university when accepting an employment offer or an admissions offer.  However, some people like Renee Kaswan, find this practice difficult to accept when they wish to see their discoveries commercialized for the benefit of society but encounter bureaucratic hurdles in technology transfer operations.  Knowledge Translation, Knowledge Marketing, Knowledge Sales and Knowledge Exchange companies could help alleviate these bureaucratic technology transfer hurdles so that scientists and engineers at research universities could concentrate on their knowledge production activities.

In the end Technology Transfer offices would become the executive and administrative portal through which contract negotiations, performance evaluations, and payments for services rendered will take place.   Companies will compete to obtain confidentiality agreements and contracts for services rendered.  The Technology Transfer offices will also need to evaluate company reports and recommendations.  Finally, if it becomes established university policy, Technology Transfer offices will use part of the income from Licensing fees and Royalties to pay for services rendered by companies competing to help make the technology transfer process as efficient as possible.  Thus, it is in the best interest of the competing companies to sell as many patent rights as possible, along with helping market patent applications as efficiently as possible, after most efficiently evaluating the market values of university patents, after translating as many university discoveries, inventions, and knowledge as possible into patents with their related applications that could benefit society through commercialization.

In conclusion, the technology transfer process would be made much more efficient if competing companies were contracted by University Technology Transfer offices to accomplish the following.

1st Encourage the translation of discoveries, inventions and knowledge into patents 

2nd Help with the marketing and sales of patent rights to venture capitalists and companies globally

3rd Bring licensing and royalty revenue to the University Technology Transfer offices

4th Encourage commercialization of products that benefit society

Thus, if one were to view universities as businesses that create knowledge in the form of patent rights that can be sold, then, universities could indeed optimize the technology transfer process and in so doing become engines of economic development.

David G. Maskalick, Ph.D.

President and CEO

BiotecConnect, Inc.

dmaskalick@biotecconnect.com

http://www.biotecconnect.com

(1)  http://www.williamcfrederick.com/articles%20archive/Top%2050%20Review.pdf

(2)  http://chronicle.com/article/Summit-Gathers-Technology/64334/?key=Gm52cwNpbndJZyZkLCRIeidRYHApJEx7OndGanMabVxX

(3)  http://www.ipadvocate.org/

(4)  http://www.genengnews.com/blog/item.aspx?id=574

(5)  http://www.kauffman.org/Details.aspx?id=5758

(6)  http://www.businessweek.com/technology/content/sep2009/tc20090918_628309.htm

(7)  http://www.businessweek.com/smallbiz/content/feb2010/sb20100219_307735.htm

(8)  http://www.businessweek.com/smallbiz/content/feb2010/sb20100219_307735.htm

(9)  mailto:pradhana@ohsu.edu

(10)               http://www.autm.net/AM/Template.cfm?Section=Home&WebsiteKey=565cb6bc-ea08-4c37-af24-c28771fd086c

(11)               http://www.betterworldproject.org/documents/AUTM_09_BWR7.09_FNL.pdf

http://community.autm.net/AUTM/AUTM/Directory/BlogViewer/Default.aspx?BlogKey=06596904-f2b9-43f1-9347-e11f22af4a36

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05-03-2010 19:24

David:
Your well-researched and detailed note will -- if my experience in one of the debates that was undertaken at the last annual meeting prove correct -- fall on deaf ears (at least in the United States.)
If you were in that meeting, you will recall that I effectively advocated this very position. However, the feedback I received from Americans was extremely negative bordering on the hostile. Those who have jobs in the area believe that these proposals would put those jobs at risk.
Curiously, many other countries around the world (my own country of Canada and Australia where I recently visited) are engaging in wide experiments relating to knowledge translation companies as you describe. The reason for their willing adoption is likely related to a question of scale: with smaller sizes, institutions must essentially band together to create a greater mass of projects to warrant specialized staff.
In any event, I wish you well. DO not take the silence as an indication that your ideas don;t have merit; only treat it as the response of an audience that still has a lot to learn!

04-02-2010 09:57

I'd appreciate any and all comments regarding this topic of competitive technology transfer. I seriously believe that the potential benefits will benefit everyone globally.