Worth Reading: Best Practices in Tech Transfer, Flights of Legal Eagles, and an ISS Farewell

Having taken brief vacation from our Worth Reading series (May was a busy month!), we’re back with lots of stories of breaking news and special features related to technology transfer. This month’s list falls into two categories: best practices and legal battles related to technology transfer. Plus we have a farewell message from one of our favorite astronauts as he prepared to return to Earth from the International Space Station (ISS).

Best Practices: Lessons Learned, Gathering Impact Data/Metrics, Influencing the Economy, and Putting the Brakes on the “Fast Track”

Lessons Learned in Technology Transfer: Prepared by Dr. Gregg Vanderheiden of the University of Wisconsin–Madison’s nonprofit Trace Research & Development Center and published by the Center on Knowledge Translation for Disability and Rehabilitation Research, this lengthy piece is worth the extra time. The author’s 5-phase model for technology transfer is right on target, IMHO. And the list of Trace’s 10 Laws of Technology Transfer — particularly the cautionary comments accompanying it — is spot on. I particularly appreciated the adoption analogy; we’ve often talked about the challenges associated with having to tell a client/researcher that their baby is ugly.

Reporting Templates Generate Higher Licensee Compliance, Stronger Data: Published by the newly transformed Tech Transfer Central (formerly Technology Transfer Tactics — check out their new site), this post (and a longer article in the May newsletter) discusses how several tech transfer offices (TTOs) were using forms/templates to make it as easy as possible for licensees to provide the information that TTOs really need to measure the true impact of their efforts. The TTOs featured were from the University of Texas–Dallas, Lawrence Livermore National Laboratory, Wake Forrest Innovations, and National ICT Australia.

As Becky Stoughton from UT-Dallas said, “There is a perception on the part of some licensees, particularly smaller licensees and start-up companies, that the reporting obligation is more onerous than it really is. So the original impetus for developing the forms was to make it as simple to comply as possible.” Not only do the templates result in greater compliance with reporting by the companies, but they also are helpful for tracking metrics because the data come in with better consistency. Such improvements in metrics gathering are important since, as the Edmonton Journal bluntly put it, “universities are terrible at measuring economic benefits of their research.”

The full article in the May issue of Technology Transfer Tactics offers links to the interviewees’ templates (kudos to them for their openness and sharing). If your TTO adopts one of these templates, consider including an “open” field where non-traditional yet still important “wins” can be captured, such as the company/product winning a technology award. This information is helpful not only for metrics but also for success stories that demonstrate the value of tech transfer.

Integrating the Federal R&D System into the Economy: You may have seen my blog post about the Lab-to-Market Summit convened by the White House’s Office of Science and Technology Policy. Well, this post gives the insights of Summit co-chair Joe Allen on IPWatchdog.com. Joe was right when he said:

“it was impressive how everyone [on the panel] was essentially on the same page….  It was remarkable that in just one day the panel found immediate suggestions for greatly improving the system.  We steered away from the classic Washington formula of just asking for more money, although resources are always an issue…. Fundamentally, we need to show that the United States is indeed serious about maximizing the economic impact of the federal R&D system.”

Interestingly, the recommendations being developed as part of the Summit are synergistic with those offered up in the ARISE II: Unleashing America’s Research & Innovation Enterprise report from the American Academy of Arts & Sciences. The challenge will be for the government and economic development groups to figure out how to implement these recommendations.

GSK’s Fast Track an End Run? There were two articles that caught my attention about the University of California–Los Angeles’s response to GlaxoSmithKline’s Discovery Fast Track Competition: one on InsideHigherEd.com and one on PharmaLive. This is a program where GSK “is approaching faculty members directly, bypassing technology transfer offices at universities” (according to IHE) in order to “avoid initial contract negotiations, which are often perceived as the biggest bottleneck in the pharma/academia collaborative process,… [and] to give all academic researchers who are passionate about translating their science into therapy, a chance to collaborate and access GSK resources and expertise” (according to GSK). The GSK press release included a quote from a researcher at Vanderbilt University, but (according to PharmaLive) that researcher “tells us… that his comment was not meant to imply that he was also endorsing the Fast Track program, since he is not a participant [in Fast Track, though he is a participant in GSK’s larger “Discovery Partnerships with Academia” program].”

My $0.02: This arrangement would be a problem for any university. I agree with the comments and concerns of UCLA Associate Vice Chancellor for Research Brendan Rauw, who is quoted extensively in the InsideHigherEd article.  Having not seen the contract documents myself it’s hard to be sure, but my guess is that university researchers/inventors probably don’t have the authority to sign that contract. GSK has perhaps created an end-run around receiving information (which may be disclosing), but if their real goal is to reduce the time to get to contract then they probably haven’t gained much since the university will need to get involved once GSK has accepted the researcher’s proposal. One has to wonder: Is GSK being naïve or cunning in getting access to IP information and creating a negative dynamic between the faculty seeking research dollars and the TTO trying to protect the rights of the inventor and the university?

Legal Eagles: The Myriad Case, Open Records Laws, and Free Agency (still)

Supreme Court Says Human Genes Aren’t Patentable: By now everyone has heard about the U.S. Supreme Court’s unanimous decision in the Myriad case. But you might not have read AUTM’s position statement, in which AUTM agreed that:

diagnostic tests should be available for the benefit of the public. It supports the encouragement of rapid medical innovation, applied and practical biotechnology, university basic genetic research, collaboration among universities and the medical community and translation of genetic discoveries into tangible medical tests. AUTM believes in the importance of intellectual property protection and remaining competitive with other countries in developing lifesaving technologies.

For those of you interested in what Myriad Genetics was claiming, check out Forbes.com columnist and Johns Hopkins University professor Steven Salzberg’s article “Myriad Genetics CEO Claims He Owns Your Genes.” At this point, it’s a bit like closing the barn door after the horse has left, but it’s still a great piece.

U Wisconsin Fights Open Records Law to Keep Research IP Private in First-to-File Age: The freedom-of-information issue is in the news a lot these days, what with the whole NSA/Snowden affair. But this topic is important for tech transfer as well. The University of Wisconsin–Madison wants to amend state’s open records law to keep some research information from the public until it is published or patented. According to Bill Barker, director of the Office of Industrial Partnerships at UW-Madison, “You want to make sure your competitors don’t know what you’re doing before it’s published… You’ve got to be as competitive as the world is.”

This is a sticky issue, and caution must be used in revising open records laws to protect IP without compromising the intent of FOIA-type laws. Nevertheless, excessive FOIA is bad for deal-making, because it could require the disclosure of any market assessment of a technology’s commercialization potential, thus damaging the university’s negotiating position. Furthermore, any notes the university takes during negotiations with a potential licensee could be subject to FOIA, which would compromise the company’s competitive position. Other universities should look at the open-records laws in their state to ensure their research findings and negotiating position are protected.

Free Agency and My Recent Visit to DC: AUTM president-elect Jane Muir of the Florida Innovation Hub at UF blogged about her meeting with her senators, in which they discussed the problems with the latest version of the Startup Act. As Jane reported, “While we agreed there are many positive components in Startup Act 3.0, the Free Agency component has many unintended consequences which could ultimately hinder our ability to fully benefit from the economic impact of university-based technology startups in Florida.” This type of contact with members of Congress is essential to getting the Free Agency provisions out of the Startup Act, and Jane’s blog post includes links to several helpful items that are part of AUTM’s Free Agency advocacy Web page.

A Fond Farewell to ISS

Finally, I encourage you to take a break for a musical interlude from Canadian astronaut Chris Hadfield, whose off-Earth singing we’ve featured before. This time, it is Hadfield’s rendition of David Bowie’s “Space Oddity.” It’s worth watching not only to hear his singing and guitar playing but also to enjoy the beautiful video filmed by Hadfield, edited by Andrew Tidby, and produced by Hadfield’s son Evan.

Hope you all are having a great summer! As always, feel free to make a comment below or send me a private message.

Share
Posted by Laura Schoppe

Comments are closed.