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ASU, Penn Create Tech-Transfer Partnership To Bolster Resources, Commercial Chances

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Arizona State University and the University of Pennsylvania have entered into a formal partnership to help each other commercialize certain technologies, the schools said this week.
 
The collaboration is believed to be the first of its kind in the US, according to tech-transfer officials from both universities. If successful, it could also serve as a blueprint for similar alliances between other US academic institutions, the officials said.
 
Under the terms of the agreement, which will initially span a period of three years, each university will provide the other with select technologies with commercialization potential. Employees of the assisting office will then apply their specific expertise to seek out potential commercial avenues for the technologies.
 
This expertise will include tapping into regional or industry-specific networks of venture capitalists, licensing executives at companies, seed fund representatives, angel investors, and potential entrepreneurs to head startup companies.
 
In return, each university tech-transfer office will share a percentage of any resulting income received by the other based on the amount of effort and activity involved in commercializing the technology, ASU and Penn said. Each university will also retain complete ownership of their respective technologies.
 
“That’s one of the incentives,” Augustine Cheng, managing director of ASU’s non-profit tech-transfer affiliate Arizona Technology Enterprises, told BTW. “If they’re going to spend time commercializing our technologies, there are provisions in the agreement for financial rewards. I would be happy to share revenues with Penn if they were able to commercialize a technology that we couldn’t.”
 
Each tech-transfer office may provide commercialization assistance to the other from initial marketing through actual negotiations, the school said.
 
“If they give us some leads, and a successful deal comes out of it, then they’ll get a small piece of the action,” Michael Cleare, associate vice provost and executive director of Penn’s Center for Technology Transfer, told BTW this week. “If they get involved to a greater degree, we’ll give them a bit more. If they actually help with the negotiation, we’ll give them even a little bit more.”
 
The technologies will span a variety of research disciplines, but in most cases will be inventions for which the assisting office may have more appropriate resources or staff expertise.
 
For instance, ASU’s most active commercialization areas are in sustainability, the physical sciences, and the life sciences, Cheng said.
 
However, despite its life sciences play, ASU does not have a medical school, so it is envisioned that the Penn CTT will be able to provide assistance with certain ASU life science innovations with potential in human medicine.
 
“Penn has one of the leading medical schools and healthcare systems in the world,” Cheng said. “So I imagine there are quite a few interesting and potentially disruptive technologies coming from them in the healthcare area. We don’t have a medical school, but we have the Biodesign Institute, and we get a lot of IP coming out of that institute.”
 

“It shouldn’t be about creating money for an individual university – it’s about getting the technology created by federal funding to society at large.”

The schools may also send each other technologies based on the other tech-transfer office’s ability to tap into regional networks.
 
“It all boils down to Rolodex-type stuff,” Cleare said. “For instance, we know a lot of pharmaceutical companies around here. It also [includes] contacts with investors. Although we try to keep tabs on investors on a national basis, there are definitely East- and West-Coast investors, with different philosophies.”
 
Cheng added that the offices are trying to “maximize our opportunities and our chances of moving something to the marketplace. I don’t think any tech transfer office is fully staffed in a way they might want the office to be, so they’re always going to be resource-limited.”
 
Cleare agreed, adding that “you never have enough skill sets in your office to cover everything that comes up. However you put it together, their mix of skills will be very different from our mix of skills.”
 
The officials said their tech-transfer offices hope the approach will serve as an example to other tech-transfer offices that want to fulfill the mission of turning federal research dollars into goods and services for the general public.
 
“I think that whereas the first 25 years of the Bayh-Dole Act was more about individual universities, maybe the next 25 years will be about universities pooling their resources and working together,” Cleare said. “I see tech-transfer as a broader thing than just one university. It shouldn’t be about creating money for an individual university; it’s about getting the technology created by federal funding to society at large.”
 
AzTE has already established similar tech-transfer partnerships with academic institutions in other countries. In July, it said that it would help market technologies developed by partner universities Dublin City University in Ireland and Tecnológico de Monterrey in Mexico (see BTW, 7/23/08).
 
In regards to those partnerships, there will more likely be an equal exchange of tech-transfer services between AzTE and Dublin City University because both are located in fairly large commercial markets. By comparison, AzTE will likely provide more commercialization opportunities to Tec de Monterrey as opposed to the other way around.
 
Cleare and Cheng said that they believe their partnership is a first for US academic institutions. “I haven’t heard of anything formal like this,” Cleare said. “We all interact and will try to help one another, but we’ve actually signed an agreement with some well-defined rules as to how it will work.”
 
A formal agreement helps, but a crucial aspect to making the pact work is a mutual trust and professional rapport, Cleare stressed. In their case, Cleare and Cheng worked together in Columbia University’s tech-transfer office for several years before taking their new positions.
 
“It does require trust, the willingness to exchange information, and an ability to work together,” Cleare said. “We know each other well, we’ve done deals together, and we know how we think. And we also like each other.”
 
Cheng said that he sees no downside or potential risk with the partnership, while Cleare said that the only potential hurdle he sees is explaining to faculty inventors why another institution received a cut of any licensing payments that would normally be distributed only to the inventor, his department, and the school.
 
“Any time you share revenue, you take revenue away from your own inventor,” Cleare said. “I’ll have to work carefully telling people that money has come off the top contracting with someone else. But I certainly think I’m capable of selling it, and we often contract with other people, anyway.”
 
In the end, it may actually save the universities money because it will likely cost less to tap into the partner institution than it would to hire an outside tech-transfer consultancy, he added.
 
The schools will kick off their partnership in earnest in early February, when both Cleare and Cheng attend ASU’s Technology Forum, to be held Feb. 12-13 in Scottsdale. Cleare will be on hand to market some of Penn’s inventions, as well, while reviewing how his office might assist in commercializing various ASU inventions.
 

Meantime, neither director will be attending the Association of University Technology Managers annual meeting, to be held Feb. 12-14 in Orlando, Fla.; nor will AzTE have a presence at the meeting. However, Penn CTT representatives will be marketing ASU technologies at the event.

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