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Jill Sorensen on Tech Transfer at Hopkins

Jill Sorensen
Director of
Technology
Transfer
Johns Hopkins
University

On March 1, Jill Tarzian Sorensen will join Johns Hopkins University as the school's director of technology transfer. Formerly director of technology management at the University of Illinois at Chicago, Sorensen, who holds a law degree from DePaul University, spent 18 years in Chicago in the school's technology transfer management office. In five years, her office almost doubled the university's invention disclosures, and the number of licenses it executed, Hopkins said in a statement. She also has experience in the health field as she served for one year as University of Illinois, Chicago, director of health initiatives before accepting the Johns Hopkins' position.

Sorensen arrives at Johns Hopkins as the field of academic technology transfer is in flux, balancing the economic incentives of successful technology transfer against the traditional mission of the academy. BioCommerce Week spoke to Sorensen about the state of tech transfer in academia and how businesses can operate in this changing environment.

What position does Johns Hopkins occupy in the world of tech transfer?

If you look at the classic numbers for technology transfer, Hopkins has not been competitive — it hasn't been a top performer on the royalty side. But, it is second in the country on the research expenditures side. It's a top performer in that type of tech transfer — the transfer of knowledge for public use.

Johns Hopkins has 25 people in the tech-transfer office to service eight separate schools. Is that about the right size?

It's a good-sized office. We are looking at current needs and growth projections and the satisfaction of the faculty. Given that I don't start until March 1, it really is premature for me to do those assessments. I think the most current thinking on academic tech transfer recognizes that different skills sets are required to do different aspects of the job. So part of the analysis will be that.

What kind of inventory is available for transfer?

It's sizeable. I understand that there are approximately 500 active license agreements. The royalty revenue from 2002 was reported as $8.1 million. So, one order of business would be to take a look at those agreements. Are they actively managed? Are there audits? I want to take a look at the systems for monitoring those active agreements.

I don't know the number of active inventions and I don't know what would be the larger set of those that haven't been marketed; or where there is active marketing but no agreement executed at this point.

I've spent a fair amount of time at Hopkins talking about different ranges of value — only some of which are monetary. We do ourselves a disservice by only talking about the pieces that generate revenue. There are lots of technologies at many universities that improve the quality of life but may not generate a high royalty return. Do you not worry about them as a university because you are not going to make a lot of money on them? The more current thinking is that our job as academic tech-transfer offices is to disseminate knowledge, to insure the uptake in society, and in markets. So, you really have to be prepared to address maximizing access to knowledge through your commercialization strategies. Sometimes that means making more revenue than in other cases.

What is the worldwide context you see?

We are looking at global economies, and some fairly significant disparities between advanced intellectual-property systems and emerging systems. So I think mapping out the intelligent systems for coordinating those development pieces that are in flux will be a big issue. That is, interfacing developed countries with developing companies relative to intellectual property and knowledge management and innovation management, basic science capability, but also the important related pieces, which is the capacity to do technology development and deployment.

By way of comparison, what is emerging in, for example, the UK and Japan, are communities where there are growing investments in academic tech transfer as programs that generate positive economic impact. How do you prioritize your interest? Both Japan and the UK have stepped away from a merely monetary focus. That has been a metric that has been convenient for us, so we tended to report that piece readily, but we have fallen short of reporting monetary benefits. In Japan, at the top of the list, the reason that the government invests in universities is to serve the public. In the UK, the same concept is emerging as a top priority, and then, yes, to realize economic value, dollars, that can be invested in a range of services, including basic R&D, startup company incubation, developing a skilled workforce.

Do you think R&D is now being essentially out-sourced to the academic sector?

I've heard reference to a variety of phrases to describe this, and I don't have data to cite, but the trend that seems to be taking place is an open-innovation model where industry understands that it is pretty expensive to run R&D within a company, and given the very advanced capabilities of many universities and this growing awareness of the value of transferring technology to industry — where knowledge can be developed into products — realize that this is a system that works. For industry to affiliate with academic centers of excellence in the sector that it happens to operate in can be quite efficient. That trend has been growing as more universities become accustomed to working cooperatively with industry, and the more industry appreciates the importance of advancing scholarship and maintaining the excellence that drew them to that university in the first place. Much of that comes from having the freedom to inquire, and having the integrity to report data objectively. The more each side understands where those benefits come from, and how you draw them out, the more I think you will see the trend continue.

Are there dangers there?

I'm not sure that I would use the word danger there, but there are different priorities in each sector. The primary object of a university is to share knowledge, advance knowledge, and transfer the benefits of knowledge. The primary objective of a company is to present market value with the products and services it sells. They are just different by nature. One would hope that constructive programs that bridge those worlds are serving the interests of each party. Every now and then you have some concern. An example would be: Can a drug company fund its own research and can society rely on it, in the same way that it would from an objective research entity, for full and fair reporting of data? There are question of influence and bias. There are classic questions and conflict of interest.

Is tech transfer a networking business?

It's true. But the Internet has changed that. It used to be absolutely true. You needed knowledge about what is intellectual property, you needed to know how to do a market assessment. The Internet has really helped move away from that full body contact aspect. You can access proprietary databases now that give you a feel for a reasonable royalty range. You can get a feel for reasonable business terms within a business sector without cold calls. The best contacts now happen through senior people and senior-level contacts and generally that comes from having business experience cultivated over a number of years.

What does your Rolodex looks like?

You mean my five Rolodexes?

What is your view of the inventor's role in this changing world?

That is a primary passion of mine. I think the faculty is front and center. They define the best of what educational institutions have to offer. A friend of mine at the Salk Institute, Polly Murphy, has an idea of what we could do to advance things relative to what we expect from inventors. We could do things like procuring research disclosures, and then as quickly as possible, recognizing where or not there is an invention there, instead of presuming that faculty know how to characterize an invention, or that they know what is intellectual property, or what a patent is.

My idea for Hopkins is to take a piece of what Polly has developed and try to advance it so investigators can appreciate practical applications of research advances. That is, in my view, a piece of knowledge stewardship that is related to the fundamental aspects of the academic mission. The classic position is to recognize that there is a dichotomy — researchers advance knowledge and publish, and their work stops there relative to knowledge transfer. But what I'm excited about is advocating for Hopkins faculty is that they can help be stewards to further advance knowledge transfer. It's less of a money focus but more of a utility focus on how might this knowledge advance be useful. The more they are involved in the screening process, the more adept we are as an academic tech-transfer operation, the more informed they will be. To me, it is about keeping the faculty front and center, and being responsive about what is important to them and giving them suggestions for practical applications and suggestions for people in the industry that might be interesting for them to talk to about market pull, needs, and problems that they might have. That is a knowledge base that might be applied to solving problems. I think faculty will be interested to hear about them. I won't be presumptuous enough to say that their job is now to be a CEO or a business person.

There are some that are.

The job and part of the challenge for academic tech transfer in the near future is to put together resources that recognize that when don't have that in one person. In fact, I am comfortable assuming that the default is that you don't have that knowledge. In fact, the best kind of operation is not to take the scientist out of the research lab, but to set up those complements and look for business partners. I think there is good balance there.

What are negotiations like?

Getting technologies developed, that is a fun piece of work. You are working with passion, and a piece of vision. You get to do the detail work to build out the vision. Outside of the health sector, there is a University of Illinois art and architecture professor, Bill Becker, who designed a beautiful piece of performing art in a wind turbine. He is exploring renewable energy resources, in particular, wind turbines that are aesthetically appealing. The criticism of wind turbines is that they are unaesthetic. He designed a turbine that could be integrated into the architecture of a building, commercial or residential. We ended up licensing this to a startup company, his company. It was a painless negotiation. Each partner knows that there has to be room to change. Markets shift, your first design doesn't work, and you have got to have enough flexibility to adapt to that. He has been bit by bit succeeding in a market that is beginning to take off. But there is lot of ground to cover. So much university advances are premarket. It can be years before a sale — in this case, you have to convince architects that this is doable, you have to have a plan for the low-wind season, and you have to figure out a way to store the energy that is created. I'm watching them, as a company, advance, looking for ways to help them advance, even though I won't be at the university.

What kind of negotiator are you?

I'm a data-driven negotiator. I like to see comparables, and a reasonable range. I like to walk away knowing that this partner will be successful. If I'm negotiating too aggressively, then that position is threatened and I might be wasting my time. I want them to be commercially successful because it is their success that generates my returns. I invest time researching a company and trying to understand a corporate culture and how long have they been in business, what are their priorities, and their commercialization strategy. You hold that up against comparables and hopefully you negotiate an arrangement that is mutually beneficial.

Does that mean more royalties than upfront payments?

For certain sectors, yes. For example, younger companies, to the extent that universities engage with startup companies, putting up-fronts can be deadly. Mapping a license agreement to a commercialization strategy, the business plan of the company, is critical piece of success. I think if you believe that your licensee is going to go under, you probably don't want to license to them to begin with. So, there has to be mutuality. The deals for pharma, with huge up-fronts, and aggressive milestones, are less doable today than they were five years ago. You really have to take that to account as well. But, there is more and more information available that helps us research what are those reasonable up-fronts and milestone payments, running royalties, and sublicense royalty rates, exit strategies, and if you are going to ask for equity. We could do a much better job today of gauging what is a reasonable position. I've discussed with Hopkins of this idea of maximizing revenue. We are comfortable noting that the more you try to max out revenue — and that is part of our obligation, to be as resourceful as possible — but the more aggressive you are, the longer the negotiation takes, the further you are from getting commercialization under way. I like reasonable deal terms, from my side of the table. There is one thing that is always true about the reasonable man — and much of law is written around a reasonable-man standard: A reasonable man never does any thing unreasonable. So if we all understood what is reasonable, then we could all pack up.

What should big companies know about doing tech transfer, if you represent the next wave of tech-transfer managers?

Universities are ready to engage meaningfully by partnering core competencies against industry needs. That is the philosophy we will employ at Hopkins. And, that is what we have in common with most universities engaged in academic tech transfer. It is that not about competing on every front, but being able to define what those competencies are and having a good match so you have positive economic impact on a region. Companies that invest in understanding aspects of scholarship and how you cultivate a healthy research enterprise at a university, that is a really helpful orientation when it comes to negotiating deal terms.

Having basic issues like the need to publish, the need to see a researcher's issues advance, not arrested, is a piece of that understanding and have a respect for priorities.

 

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