David Ward remembers the days before technology transfer offices. Ward, deputy director of the Nevada Cancer Institute and a scientist with some 40 patents to his name, says that in the early days getting a patent meant having to hunt down an external licensee yourself to convince your university that the technology would be worthwhile before it would assign someone to handle the paperwork and prosecution of the patent. “You had to lobby to get it done,” he recalls.
Today, the landscape has changed considerably. The Bayh-Dole Act of 1980 gave universities the ability to patent scientists’ technology themselves, and ever since, academic tech transfer offices have abounded. “In the past 10 years you’ve seen the mushrooming of technology transfer offices across universities in the US,” says Walid Qoronfleh, who runs a consulting firm called Q3 that works with tech transfer and business development issues for new technologies.
According to the Association of University Technology Managers, more than 190 research universities in the US have tech transfer offices. As these offices sprouted, so too have university-controlled patents and license deals between universities and external companies. AUTM data show that prior to 1980, fewer than 250 patents were assigned to US universities; but between 1991 and 2004, new patents filed increased to more than 11,000. In 2005, the most recent year for which AUTM offers data, there were more than 28,000 “current, active commercialization licenses, each representing a university-company relationship to develop a product to benefit people,” according to AUTM President John Fraser.
The patenting fever isn’t just on the side of the tech transfer folks. By all accounts, so many scientists are sending invention disclosures -- the first step toward filing a patent -- to their tech transfer offices that the licensing teams are swamped. At the Wisconsin Alumni Research Foundation, the highly successful tech transfer office at the University of Wisconsin, Madison, Managing Director Carl Gulbrandsen says, “We get about 400 disclosures a year.” At Yale University, that number runs to more than 200 annually, according to Jon Soderstrom, managing director of the Office of Cooperative Research. “We’re managing portfolios that might have 50 to 100 cases that we’re trying to license at any one time,” he says.
Still, not everyone has bought into the craze. Scientists who have a successful record of patenting say that the academic stigma against patenting is still in force. “It’s unclean somehow,” says Wisconsin’s Jo Handelsman, a plant researcher who has patented a number of bacterial strains and other research advances. “There’s a lot more support from [scientists], but it’s by no means the majority,” she adds.
But if trends continue, scientists may have to cozy up to the patenting realm. Qoronfleh at Q3 says that the evolution of the economy will continue to drive the need for patents. “The economy in the United States has migrated from being manufacturing to being service-oriented and is now transforming itself more into an information-type economy,” says Qoronfleh, who is also executive director of the Core Technology Alliance at the University of Michigan. “In that type of economy, intellectual property becomes very important.”
Triumphs and Trials in Tech Transfer
As tech transfer offices sprouted, they became increasingly valuable to their home universities. In some cases, the benefit to the university was completely financial, such as the gene insertion patents that have made more than $300 million for Columbia University. That money can be funneled back into research, or into startup packages to lure prestigious recruits to the institution. “At Wisconsin, we have this billion-dollar endowment that has been generated entirely out of patents,” says Handelsman. “The quality of life in science at UW is a lot better than at a lot of universities [because of that].” A number of her students, for instance, have been supported by fellowships offered through Wisconsin’s tech transfer arm.
The money can also be applied toward faculty salaries, which with funding cuts at federal agencies are coming more and more out of universities’ budgets instead of from grant dollars. “When I was at Yale, you would try and raise 70 percent of your salary from grants,” says Nevada’s David Ward, who spent 33 years at the Connecticut university before heading westward. “When the atmosphere in Washington was such that it was less difficult to come by funding, most people could satisfy that.” Now, he says, the high competition for grant money means that universities have to find more revenue to maintain faculty salaries.
Beyond internal growth, universities have become important components in regional and economic development efforts. “This is happening across the country,” says Gulbrandsen at WARF. “There’s a realization of governors in all 50 states that they really are looking to universities to be economic engines for their state.”
As tech transfer offices become more established and get more experience under their belts, they’ve been able to make better deals and grow more aware of the kinds of research innovations that outside companies will want. John Zawad, a managing director at the University of Pennsylvania’s Center for Technology Transfer, spent 20 years on the pharmaceutical side, licensing IP out of universities. “Over the past 10 years, tech transfer offices have become more sophisticated and savvier” about working with pharma, he says.
But they’re still learning, says Q3’s Qoronfleh. “They need to have people with true commercial backgrounds, not just the mechanics of in- and out-licensing and dealing with the portfolio,” says Qoronfleh, who contends that the broad scope of patents these offices have to handle makes it extremely difficult for the people to develop good knowledge of very specific market segments. There tend to be so many invention disclosures and not enough knowledge about specific markets that it can be quite a challenge for tech transfer offices to accurately value the technology they’re trying to license.
Qoronfleh adds that while some tech transfer offices are indeed cash cows for their institutions, statistics show that most of these offices just barely “cover their expenses,” he says. Legal fees for prosecuting patents are so high that it’s rare for those expenses to be completely recouped, he adds.
The Faculty Perspective
While tech transfer offices are admittedly a work in progress, they have achieved remarkable success in not only getting the attention of academic scientists, but also in getting them really interested in patenting their work. “The mindset of academics has changed terrifically from my 40-odd years in the academic science,” says David Ward at the Nevada Cancer Institute. “Back in the ’60s nobody ever thought of patenting anything. [Today] it’s a different world.”
Qoronfleh says one reason for the change is that a new generation of scientists has grown up with patents and doesn’t treat them with the disdain of more established scientists. “There is a little bit more entrepreneurialism in them. They are more of a driver in terms of considering [patents],” he says. “Additionally, they are more likely do to do more focused, applied research.”
They also may feel more compelled to patent than previous generations. Companies today are loathe to develop anything in which they don’t have a strong IP position, so often getting a patent is the only way to send an invention out into industry. “Faculty always are excited if they think that their technology can be actually applied to benefit people,” says WARF’s Gulbrandsen.
Some scientists patent because they think it will give them leverage in future dealings with companies, says Soderstrom at Yale. It might be a chip they can use in establishing collaborations, for instance. Other motivators, according to Handelsman at Wisconsin, are that “some people want to gain financially … some people want the benefit to their departments that will accrue, or the benefits to the universities.”
Handelsman is an active patenter and has made a practice of educating her own students about the tech transfer landscape. “We have periodic lab meetings on the subject to talk about why one patents and who benefits,” she says. “I think it’s a really important part of training.”
Walid Qoronfleh says the patent dynamic will continue to evolve. He believes that as universities get savvier about markets, they’ll probably provide additional downstream funding for scientists in order to get more advanced, better fleshed out patents to license to companies. “Universities want bigger patents,” he says. They’re starting to provide seed funding and incubator space for startups to help with that. “They go to proof of concept, they go to prototype. … If they want to set up a startup, it makes it more attractive for venture capitalists to fund it.”
He also predicts that patent pooling, a hallmark of the semiconductor industry, will become a technique used more in the life sciences field. Biotechs can rarely bring a tool or other advance to market with just one or two patents, he says: “Many times you need a bunch of patents together.” That need is likely to drive cooperation among organizations and will “enable the practice of shared technology,” he adds.
Join the Club: How to Make Friends in Tech Transfer
So you’ve decided to venture into the patenting realm and see what it holds for you. Where to begin? In general, you’ll want to make a trip to your institution’s tech transfer office and go from there. Patenting pros and tech transfer officials offer their advice on how and when to pursue a patent.
Take a stroll to tech transfer. If you’re new to patenting, your best path to learning about what it involves is to speak with people who have already been through the filing process. “My feeling is if you are a junior faculty and you have no experience in that, you might want to at a faculty meeting or a faculty luncheon ask your friends and colleagues [if] there is someone here who has experience with [the] tech transfer office,” says David Ward at the Nevada Cancer Institute. And if you don’t have a colleague who has already mastered the process, “then you’ve got to sort of take the bull by the horn and go [to the tech transfer office].” You can also get an early glimpse of how things work by checking the office’s website, which usually has the university’s full patent policy and other helpful information for scientists.
At universities with very active offices, you might not even have to make the trip. At the University of Wisconsin, Madison, the tech transfer branch sends over a welcome wagon with an informational DVD and other getting-to-know-you handouts. “Our staff explains what’s involved in disclosing their inventions,” says WARF’s Carl Gulbrandsen of the greeting to new faculty members. “We’ll make house calls.”
Meeting the tech transfer people also helps unfamiliar faculty learn about what kind of research can be patented, says Wisconsin scientist Jo Handelsman. “The faculty have been very surprised by the things that seem to be patentable that they didn’t think were,” she says.
Remember the three criteria. When in doubt about whether to patent something, says Handelsman, consider whether it will meet the patent office’s three rules of thumb: novelty, utility, and enforceability. She encourages people to consider filing a patent “if we really think that this is new and not an obvious extension of published work.” Handelsman also says that technologies tend to be more amenable to patenting than processes. “We’re always skeptical about methods patents because [they’re] so hard to enforce,” she says.
Also, Handelsman says, consider the paths for getting your research out to the public. It may be that patenting the invention will be the fastest way to get interest from outside companies that will be willing to put in the time and money to commercialize your invention -- but only if they know they have a secure IP position.
Know why your invention is better than what’s out there. Tommy Cheng at Yale says his lab, which has successfully pursued a series of patents, doesn’t just hand over something newly discovered to the tech transfer office. “We have to figure out whether it’s better than the existing [tool],” says Cheng, who has five patented chemicals in clinical trials right now. “You have to think why others would be interested. It cannot be too abstract or wishful thinking.”
Go the extra mile with your invention. Scientists “need to enhance the value and have a practical perspective for the patent,” says Walid Qoronfleh at the Q3 consultancy. “Let’s presume a scientist found a small molecule against, say, cancer. … The reality is, just because a molecule in a lab test or even in an animal test showed its effect, that doesn’t mean it can be brought to commercial light,” he says. Further research into dosage, toxicity profiles, and tolerance of the molecule are examples of ways to enhance the value in this particular example, Qoronfleh says.
Priority status trumps all. In the patenting world, “priority date” -- or when the patent was filed -- is the currency that determines who controls an invention and how secure the IP position is. You want the earliest date possible, says Nevada’s Ward, so get those documents to your tech transfer office as soon as you can. If you continue to invent around the technology, you can file documents called “continuations in part” to add to the patent but keep that all-important priority date.
Myths and Misconceptions: The Patenting Stigma
Scientists who actively pursue patents on their work agree that while times have certainly changed, there’s still a considerable element of the academic population who seem to believe that patenting is tantamount to selling one’s soul. “There’s still the stigma [that] it’s beneath academic, ivory tower scientists,” says Jo Handelsman at the University of Wisconsin, Madison. “I would say there’s still that sentiment that you’re sort of a crass mercenary by patenting.”
Some tech transfer people contend that much of the stigma stems from misunderstandings about how the process works, and what it means for the academic scientists. Genome Technology rounds up the most common myths and misconceptions about patenting.
Applying for a patent delays publication. In reality, good tech transfer offices make sure that their pursuit of a patent does not affect scientists’ ability to publish. “We take seriously that we’re in an academic university environment, and we make sure that we never delay publication,” says Carl Gulbrandsen, managing director of the Wisconsin Alumni Research Foundation. He adds that there’s a one-year grace period after publication to file a patent, so the fear simply isn’t founded.
Jon Soderstrom, managing director of the Office of Cooperative Research at Yale, says he hears the same concern from faculty members. He says that the new rules that established provisional patents have made the process even faster and more smooth so “it doesn’t hinder publication in the least.”
While the patent process is underway, the inventor can’t talk about the work. If you can’t tell your peers about your great new technology at conferences and meetings, what good is it? WARF’s Gulbrandsen says that some faculty members shy away from patenting because they think they won’t be able to share their news with the community. “We never tell faculty that they can’t talk about their inventions,” he says. “We don’t keep trade secrets here.”
Scientists only patent inventions to get rich. That certainly explains why academics who pursue patents are considered “mercenary,” but Yale’s Soderstrom says personal financial gain is often the last reason people pursue patents. “It’s very, very seldom that they’re doing it because they think they’re going to get rich,” he says. “In the last dozen years, I probably heard that once -- and they were wrong.”
In fact, more academics follow through on patenting because it can be the fastest and most effective way of getting a research breakthrough out to the public. Companies that will have to commercialize new technology or other types of discoveries want some assurance that they’re protected while they’re making it ready for market, and the first thing they tend to look for is a solid IP position.
It takes too much time. Sure, it takes longer to apply for a patent than not to apply for one. But the common feeling that pursuing a patent will suck your life away isn’t quite true, according to tech transfer officials. John Zawad, managing director at the University of Pennsylvania Center for Technology Transfer, says that faculty members probably think the paperwork for a patent is akin to writing a grant. “When they fill out an invention disclosure we just ask them to summarize … what is the invention and why is it different from any other technologies out there,” he says. “This can be done in two pages, and they’re used to writing 50-page grants.”
Zawad’s team tries to make the process as quick and painless as possible, even allowing scientists to disclose inventions right through the tech transfer office’s website.
Everything should be patented. On the other side of the coin are scientists who believe that all new findings should be patented, and argue that their tech transfer offices aren’t doing good work by not pursuing patents on everything. In fact, says Soderstrom at Yale, filing a patent is an expensive proposition and unless there’s a clear indication that the university will recoup its legal expenses, the tech transfer office won’t pursue the patent. In the US alone, he says, filing the patent and prosecuting it -- “assuming that it’s fairly straightforward” -- “is somewhere between $25,000 and $50,000,” he says. “If you decide to go international with [the patent], start adding zeroes.”
As the cost has risen, the bar has been raised on what’s worth patenting. “If you decide that you made a new little wrinkle that might be a product that’s sold [by catalog],” says David Ward at the Nevada Cancer Institute, “it might not be worthwhile to [patent] that.”