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Remember the Real Goal


It's tough to think of a topic more likely to put a lab full of life scientists to sleep than tech transfer. But if you're willing to stay with me, there's an interesting thread here.

Tech transfer, or the art of universities' patenting and licensing researchers' inventions, has been on my mind lately. I recently attended a showcase at Boston University, where the tech transfer office put together an afternoon of elevator pitches, slides, and mingling to highlight some of the technologies in its portfolio. That upbeat day came shortly after Stanford University scientists Ron Davis and Nader Pourmand made headlines with complaints that the university's tech transfer office undervalued their technology when licensing it to Ion Torrent. Whether you believe their arguments were solid or just a bunch of attention-seeking is beside the point: The upshot is that, as more scientists in the systems biology field team up with their tech transfer offices, there's going to be a lot of room for misunderstandings.

That's why I spoke with some experts about the goals of tech transfer and what scientists should expect from the process. David Weitz, a physics professor at Harvard University, has filed some 50 or 60 reports on invention (the first step in a long process toward a patent), licensed a fair number of patents, and started up companies based on his technological advances. Weitz says a big mistake is counting on patent licensing to change your tax bracket. "You rarely make money on this sort of thing," he says. "My own view is I'm not in this for the money, I'm in this to make sure the work that I do has as much impact as it can."

In an interview with Innovation, a US Department of Energy-supported magazine, Secretary of Energy Steven Chu noted that the goal of tech transfer offices should be to get good technology into the commercial realm — without worrying so much about the terms of the deal. "Tech transfer has to be friendly to the inventors and friendly to the companies trying to license," he told Innovation. "The director of the laboratory should be telling the tech transfer people ... that a best practice is to leave the change on the table. Don't be greedy." It's a useful reminder of why we have tech transfer in the first place.

Indeed, while some scientists think they need to play hardball in negotiating royalty terms, many universities have firm policies that aren't open to change. Over at the Wisconsin Alumni Research Foundation, the tech transfer arm for the University of Wisconsin at Madison, Managing Director Carl Gulbrandsen says, "We don't negotiate royalties." Every group of inventors gets 20 percent of the gross income WARF gets on the technology, and that's that. If a researcher gets through the process and is unhappy with the final terms, ownership of the technology can be transferred back to the lab as long as it hasn't been licensed yet, Gulbrandsen adds.

In practical terms, experts agree on a few basic tips for working well with your tech transfer office:

1. Contact your tech transfer people early, and keep them in the loop.
2. Where possible, work with them to identify whether your invention would be good for licensing or for spinning out a company.
3. Get involved with licensing. You probably know your niche better than the tech transfer people do, so be active in brainstorming which companies might benefit from access to the technology.
4. Remember that not all inventions should be patented. If there isn't a clear path to recoup the filing fees — which can run up to $100,000 or more — be open to ditching the patent dreams.

Meredith Salisbury is editor in chief of GenomeWeb. Feel free to disagree with her at [email protected] The views expressed in this column are not necessarily those of Genome Technology.

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