Strategic GPS: Where could we go if we changed the model of university tech transfer and licensing?

Lately, I’ve been sharing some views on “A Faster Path from Lab to Market” (from the title of a Harvard Business Review article).



Some thought-leaders have made a case that current restrictions imposed by U.S. research universities on the ways their faculty can commercialize federally funded discoveries are slowing the diffusion of new technologies.



As readers of this blog will know, most universities channel commercialization through centralized technology licensing offices established in the wake of the passage of the Bayh-Dole Act. Over time, according to some, too many of these offices have become monopolies that slow the process of commercialization due to the constraints of the current system.



“We know that there are many vital innovations and discoveries languishing in university labs because of a suboptimal licensing system at many universities,” said Robert Litan, vice president for research and policy at the Kauffman Foundation. “One simple amendment to the Bayh-Dole Act would allow faculty members to choose their own licensing agents/experts and bring these discoveries to market quickly. Unleashing this kind of innovation will lead to the creation of new companies and new jobs.”



This approach, argue that if faculty members can choose their own licensing agents, the increased competition would speed up the commercialization of new technologies while still allowing universities to collect the same royalties as under the current system. The free agency solution is one of the 10 ideas that HBR says “will make the world better.”



In sum, continued federal support for research in academia and the federal labs is important for innovation, and has important economic benefits for the national economy and local economies. But at the same time, we will not maximize the benefits of this spending for society unless we do all we can to maximize the incentives for commercializing the innovations that this spending generates.



Our current innovation eco-system has clear limitations. These can and should be addressed as part of any national “innovation agenda.”



I've found in my work with Bioscience Bridge that we support many of the ideas here for doing so.



Bioscience Bridge is a technology transfer agency represents leading universities and their tech transfer offices. We connect partners to in-license life science discoveries and medical inventions for development into new products, applications, or services.

Strategic GPS: Where is the regional impact of licensing of university innovation

In other recent posts, I’ve been sharing some views on “A Faster Path from Lab to Market” (from the title of a Harvard Business Review article).



As universities and federal labs step up the commercialization of their innovations through tech transfer, the discoveries by faculty members often create “star scientists.”



Beyond the impact of star scientists on specific universities or firms, there are many regional benefits.



Kauffman Foundation researchers Robert Litan and Dane Stangler write that the mere existence of star scientists in a given region has a propensity to increase the number of technology startups in the area.”



In part, this positive impact flows from scientists working directly with businesses. In addition, the “star power” these scientists bring to their enterprises help develop an ecosystem—other scientists and professionals, as well as skilled workers—around the firms they help create. This ecosystem makes it easier for other entrepreneurs with their own ideas to launch new ventures, creating a virtuous circle of development.



It is in this way that regions can develop into hubs of new technology, ventures and ideas. Examples given by the Kauffman Foundation include: Silicon Valley with Stanford and Berkeley, Austin (University of Texas), Boulder (University of Colorado), San Diego (UC San Diego), Raleigh-Durham-Chapel Hill (Duke, North Carolina, North Carolina State), and Seattle (where the local university, Washington, has been important, but not the critical ingredient to that area’s entrepreneurial success).



When I work with early-stage technologies through Bioscience Bridge, we use a proven process designed to configure the technologies’ “road map” called Strategic GPS® Navigation Process. This process:

• Identifies the key targets

Articulates the current situation (Where we are)

Defines the desired objective (Where we want to be) 

Conveys the over-arching strategy

Delineates the milestones

Outlines the key tactics

Strategic GPS: Where we’re heading toward an open, competitive licensing system for university innovators

Over the last few years, experts in our field have been debating ways to create “A Faster Path from Lab to Market” (from the title of Litan and Mitchell’s article in Harvard Business Review).



Increasingly, universities and federal labs are accelerating the dissemination of their innovation through commercialization activities—particularly the licensing of discoveries by faculty members either to existing firms or to companies they form. Some have argued whether commercialization should be a university function at all, since they believe that universities exist to further the creation of new basic knowledge – not to engage in commercialization.



Based on this view, they worry that commercial activities distract faculty from more fundamental research and their instructional activities. Moreover, it is occasionally claimed that commercialization can warp the values and culture of the university, its faculty and its leaders.



In my work with Bioscience Bridge, I believe creative thinking alone cannot promote medical advancement unless it is applied to real-world scientific problems and challenges.



And this spreading of ideas is regularly best accomplished when an innovation is commercialized. This gives the innovation the infusion of human and financial capital that enables innovations to scale up.



Bioscience Bridge is a technology transfer agency represents leading universities and their tech transfer offices. We connect partners to in-license life science discoveries and medical inventions for development into new products, applications, or services.

2 key insights from the patent-approval overhaul

Starting last fall and stretching through mid-2013, the U.S. has been overhauling the patent-approval process for the first time since 1952.

The biggest change:

Our first-to-invent system, which favors creators, will become a first-to-file system, which favors whoever files first.

Uncle Sam says the reform will speed innovation. Experts checked the numbers in a recent article in FAST COMPANY.  There were two particular insights relevant to brand innovators:

1. GOOD FOR INNOVATION—Shorter average patent wait time. 34 months and going down. Startups that qualify for the new fast-track option get their patents reviewed in as little as 12 months, which makes it easier to bring their products to market.
2. BAD FOR INNOVATION—Fewer patents issued to noncorporate inventors. 31,923 in 2010 and going down. When Canada switched to a first-to-file system in 1989, the race to file intensified--and individual inventors were put at a disadvantage (compared to big firms with lots of resources). A similar scenario could play out in the U.S.

You can read the full analysis at www.fastcompany.com/magazine

 

9 best practices in technology licensing -- and the effects of patents in drug repositioning

This is the last of five posts this weekend on drug positioning -- trying to get a new drug genie out of the bottle.

And remember why it's of such interest:

Drug development is a long, complex, costly, and high-risk business. According to the Tufts Center for the Study of Drug Development, drug development from discovery to U.S. approval takes about 15 years on average and costs over $1 billion, and only 3 in 10 drugs on average make enough revenue to sustain R&D.

In order to get a return on investment, companies need to ensure that their repositioned drug will have at least some patent protection. 

Drug repositioning candidates that are still in development may have composition of matter patents, depending on how far into development they are and how long they have been on hold. Companies developing off patent drugs or drugs with patents close to expiry have to rely on data protection, method of use patents, or patents related to formulation technologies. 

Manufacturers launching drugs have some protection against generic competition through data exclusivity, which provides 3 to 11 years of data protection after launch, depending on the market.

Read more in “Getting The Drug Repositioning Genie Out Of The Bottle” at www.lifescienceleader.com

I’m working now with a small nanotechnology company in this area of Technology Licensing.

We work at ensuring best practices for success are being followed by both parties in the licensing process. This may include identifying target application areas, drafting communication documents, promoting technologies on-line and through direct personal contacts, and providing assistance in deal facilitation and in the negotiation process.

1. Non-disclosure agreements
2. Needs and objectives
3. Key elements of the term sheet
4. Positions on relevant issues
5. Negotiating schedule and deadlines
6. Progress reports
7. Documentation
8. Draft agreements
9. Legal counsel