Faculty Have Experienced Allies In Tech-Transfer Process

MARKET FORCE: Harvard's Joyce Brinton says tech-transfer officers are best equipped to determine what has commercial potential. Technology-transfer professionals have a simple piece of advice for new faculty members who believe their ideas have commercial potential but who have never brought products to the market: Get help-immediately. "Call your friendly technology-transfer office if you've got a good idea," urges Joyce Brinton, director of Harvard University's Office for Technology and Trademark Licensing. "That way, they can get some feedback from someone who knows not only the institution's policies, but also something about the kinds of ideas that in fact will have some commercial potential and therefore will offer a potential for tech transfer." Technology transfer is the process by which new inventions and technologies go from ideas in the laboratory to being sold on the market. The process usually involves patenting one's innovation, but according to Brinton and her counterparts at other institutions, young faculty members who are new to tech transfer do not realize the need to avoid any public disclosure-such as in papers or at scientific meetings-before filing for a patent. Such public disclosure can jeopardize future patent protection and leave researchers with little to show for their efforts. "The idea is to get patent protection," says Teri Willey, vice president of Arch Development Corp., a wholly owned subsidiary of the University of Chicago that handles technology licensing and new company development. "Tell [technology-transfer officials] why you think your idea is a different way to solve the problem you're trying to solve. Let them know where the funding came from-because that might mean strings are attached to the idea-and what your plans are for publication." Technology transfer received its biggest boost in 1980, when the Bayh-Dole Act, officially known as Public Law 96-517, permitted universities for the first time to patent inventions based on federally funded work at their institutions. Researchers engage in technology transfer because they feel their ideas will have commercial value or because they believe those ideas will best benefit the public if distributed through commercial channels rather than through publication only. LEARNING THE ROPES: Lita N of MIT educates researchers so they are more comfortable with the technology-transfer process. Scientists at the Massachusetts Institute of Technology (MIT) who choose to consult with the school's Technology Licensing Office first receive a talk on patents, says director Lita N. That is followed by discussions of what it means to work with industrial sponsors and what the government's rules are. All of this prepares researchers for what lies ahead, giving them "a great deal of comfort," N contends. For example, after meeting with N and her staff, MIT faculty members learn that they are permitted to file patent applications while still writing papers on their research. "Not only is it allowed, it's encouraged by the government, to encourage the results of federally funded research." Recent studies have led critics to claim that some academic-industrial collaborations compromise scientific integrity and help foster public mistrust of science (K.Y. Kreeger, The Scientist, March 31, 1997, page 1). Others worry that universities' increased interest in technology transfer is resulting in a commercialization of academia (P. Gwynne, The Scientist, May 12, 1997, page 1). But N argues that tech transfer allows taxpayers to get some bang for their buck: "It's not a conflict of interest if it's handled correctly." LONG TIME COMING: Robert Robb of the University of Michigan emphasizes the commitment required to patent and market a new technology. However, it is important for researchers to know what they're getting into, comments Robert L. Robb, director of the Technology Management Office at the University of Michigan. "We educate so there is a greater awareness of this process and the realities associated with it, along with the benefits. The key words are realities and benefits of the process." He says scientists must realize that technology transfer requires a major personal commitment: Answering inquiries from patent counsel, potential licensees, and investors-should a new company result from the idea-all take time and will distract them to a degree from their research. "We have noticed at times that there is a perception that there is much less time involved than it actually takes, and some are not willing to commit the time," Robb observes. Others, he continues, have unrealistic expectations of the financial returns their development will net them. FISH VS. FOWL: Penn's Louis Berneman cautions scientists to let tech-transfer officers do their job. "The faculty member needs to work very proactively with the technology-transfer office," asserts Louis Berneman, managing director of the University of Pennsylvania's Center for Technology Transfer. Berneman provides a laundry list of what faculty members should do when working with tech-transfer officials: provide their résumés; disclose any previously signed material transfer agreements and whether they received any materials that helped them make their discoveries, for these may affect how patent royalties are distributed; think about how their technology might be used industrially; respond quickly to questions of commercial potential; be as accurate as possible in applying for patent protection; and name colleagues who participated. This will help the process move along smoothly and give the researcher's new technology the best shot at being patented, he explains. Patenting one's technology is crucial, because without a patent, few companies will decide to license the development, asserts Susan Gould-Fogerite, an assistant professor of experimental pathology in the Graduate School of Biomedical Sciences and in the medical school at the University of Medicine and Dentistry of New Jersey (UMDNJ). "People really need to contact their school [technology transfer] departments very early and be aggressive," she says. Gould-Fogerite learned many of these lessons the hard way. Several years ago at Albany Medical College, she and her partner Raphael J. Mannino began working on subunit vaccines and gene-transfer methods to protect against such diseases as influenza, parainfluenza, herpes, and AIDS. The pair are continuing that work at UMDNJ. Because the National Institutes of Health traditionally does not fund clinical trials by academic researchers, Gould-Fogerite cofounded BioDelivery Sciences Inc., a Lexington, Mass.-based company, in 1995. The move allows her to compete for funding from other government sources and gives her greater flexibility to license her techniques privately. DO IT YOURSELF: UMDNJ's Susan Gould-Fogerite cofounded a company to bring her ideas to the market. As a vice president with BioDelivery Sciences and as a faculty researcher, Gould-Fogerite is familiar with both ends of the technology-transfer process. She spent much her time doing things like negotiating licensing agreements that today's researcher can pass along to tech-transfer offices. But, she remarks, it has been worth it: "I really enjoy basic science, but what I like about it best is doing something which could ultimately have a positive impact on human health." MIT's N points out that once researchers are educated about the nuts and bolts of technology transfer, the process can go much more smoothly. "If you've got a decent tech-transfer office, you shouldn't have to turn your researchers into tech-transfer experts. Neither side should be dealing with it alone." Technology transfer officials say that many newcomers make common mistakes while trying to commercialize idea or technology. Brinton finds that many of them have "unrealistic evaluations" of their work. Some believe what they have developed will have little appeal to anyone except other scientists, while others think their developments will "revolutionize industry." She says: "Different people look at what they've done in different ways." Brinton is quick to point out that regardless of these differing views, her office evaluates each proposal to determine whether it is worthwhile to push it commercially. Penn's Berneman observes that technology-transfer offices are designed specifically to turn ideas into profitable realities. That is why researchers should contact them as soon as possible, he states. "When they're thinking about submitting an article or an abstract or a poster, that's the time to get us the disclosure [of the new invention or technology]. We can be in a patent office much more quickly than anybody can get into print or go to a conference if we're advised when the submission is made." The Association of University Technology Managers, a nonprofit professional and education society for administrators of patent and copyright programs at universities, provides a wealth of information on academic technology transfer on its World Wide Web site (http://autm.rice.edu/autm/). The Association of University Technology Managers can be contacted at 49 East Ave., Norwalk, Conn. 06851-0493; (203) 845-9015. Fax: (203) 847-1304. E-mail: autm@ix.netcom.com. Robb says one myth he tries to dispel is that patenting one's idea is a bar to publication. "In most cases you can follow the patent process and publish according to academic requirements." He also observes that some researchers mistakenly believe that "everything should be patentable," while others-usually older investigators-"feel that technology transfer is perhaps not appropriate in the academic community." Gould-Fogerite is pleased that she can both help to run a company and conduct research. She calls it "the best of all possible worlds," though she acknowledges that "it's not something everyone can do. . . . It's not a path for the faint of heart." Indeed, Berneman warns faculty members not to immerse themselves too deeply in the commercialization process. They simply don't know enough about it to be effective, he says. For faculty members "to think they can do both-remain in faculty or postdoc or research scientist positions and pursue entrepreneurial ambitions as a manger with line authority in a company-is a dreadful mistake. They can't be successful in both. They can be fish or they can be fowl, but they can't be flying fish." SOLVING PROBLEMS: Teri Willey of Arch Development stresses the need to obtain patent protection. According to Willey, many faculty members wonder how the technology-transfer process will affect their careers. While the effects can vary from institution to institution and between departments within institutions, Willey points out that tech-transfer offices are established by the schools themselves to ensure that "the research results benefit the public-in this case through commercialization-and to make a fair return [that] can be reinvested to continue and encourage the process." Beyond that, Willey advises discussing plans with one's department head, a course of action Gould-Fogerite endorses. She credits the support of her department chairman at UMDNJ as being critical to her success thus far. "It is important if you are going to maintain your university position to do it through the system and not around it. If you involve people all the way along and get them invested in the process, they're going to be supportive and not obstructive." And those scientists whose proposals never make it to the market should not take it personally, according to the professionals. "Good science is critical to commercializing early-stage technology," Willey states. "Nevertheless, the market will most often not appreciate the excellence of your science. If your idea is not chosen to pursue for commercialization, it is rarely a reflection of the science. It is often a reflection of market, product development, and regulatory dynamics." Gould-Fogerite agrees, saying her support often was cut because the companies that were funding her decided to go in new directions. "That's pretty common," she says. "You may end up getting dropped not because your science isn't working but for other reasons."

Faculty Have Experienced Allies In Tech-Transfer Process

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