SAN FRANCISCO (GenomeWeb News) — University technology-transfer offices looking to cut deals with the private sector must be flexible and avoid the impulse to be “greedy,” while for their part companies should recognize a university’s restraints and try not to “intimidate” potential partners, according to Cornell University’s newly appointed vice provost for tech transfer, a new title.
Academic tech-transfer organizations and companies that rely on their discoveries have very different goals, and representatives must “build rapport and trust” if they are to makes strides — and money — together, according to Alan Paau, who has also been named executive director of the Cornell Center for Technology, Enterprise, and Commercialization.
For starters, academic tech-transfer offices aim to “maintain the integrity of the university and research education mission,” and to respond to “new funding initiatives and growing expectation of the university’s role in society,” said Paau, who spoke at Biotechnology 2007, a Law Seminars International conference held here this week.
By comparison, industry “most cares about” developing products that turn a profit, “certainty,” competition, and “keeping Wall Street … happy.” As a result, Paau said that companies that want to work with tech-transfer shops should recognize that they are “mostly early stage;” that their researchers “may not keep notebooks well for intellectual property protection;” that they "talk and ship their products around;” and that they “follow the money” — that is, they oftentimes rely on different sponsors for different developmental stages.
Industry should also know that tech-transfer sites “collaborate freely,” work under “specific requirements” when public funds are in play, and that university administration officials “cannot really control researchers,” said Paau. “And if they say they can they’re lying,” he quipped.
Paau, who had been assistant vice chancellor for tech transfer and intellectual property services at the University of California-San Diego before joining Cornell Jan. 1, also stressed that schools within the same state-funded system approach technology transfer in very different ways.
For instance, at UCSD, “for the last 10 years the regional economic development has been a very important mission for that campus,” he said. “But if you go across the Bay and talk to Berkeley, I’m not too sure you’ll find the same emphasis.” He said UC Berkeley is “more into things like socially responsible licensing, while if you go to UCLA you’ll find a totally different mentality.”
In addition, citing what his former employer calls a “commitment to students,” Paau said that companies must also keep in mind that schools in the University of California system pick tech-transfer partnerships very carefully. At UCSD, “we almost always refuse to do work with what we think does not enhance education and scholarship,” said Paau. “We are not hired hands; we are not state-subsidized cheap labor. When you come to propose a project with the university it has to be academically meaningful.”
City by the Bayh
“Tech-transfer offices are still very young and sometimes inexperienced,” said Paau. “If you deal with a tech-transfer official who has spent time in industry, you’re lucky.” But the roster is growing.
Before 1980, tech-transfer offices in the US were a relative rarity. But in 1980 a federal law was enacted that has become the linchpin of modern tech-transfer practice. Since then, the legislation, known as the Bayh-Dole Act, academic tech-transfer sites surged.
Broadly, the Bayh-Dole Act gives US universities, small businesses, and nonprofits control over patents that cover technologies they developed with the help of federal funding.
According to a 2003 survey conducted by the Association of University Technology Managers, US universities created 24 tech-transfer sites between 1930 and 1979. By comparison, that number swelled to 156 between 1980 and 2003.
To be sure, not all stayed open — on average 6.5 tech-transfer offices were up and running each year between 1980 and 2003 — but the message was clear: The Bayh-Dole Act was the green light that US academic centers needed to begin seeing their discoveries as marketable, potentially profitable commodities.
For example, before 1980 fewer than 250 patents were issued to US universities annually, and discoveries were “seldom commercialized,” according to AUTM. But by 2002, members of AUTM, which include 3,500 individuals among 350 universities, research institutions, teaching hospitals, and government agencies, penned 5,327 new license agreements.
Between 1991 and 2004, annual invention disclosures increased more than 290 percent, to 18,178; new patents filed increased nearly 450 percent, to 11,089; and new licenses and options executed increased about 510 percent, to 5,329, according to AUTM.