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Using Sponsored Research to Bridge the Licensing Gap: Insights from AUTM Panel

Editor’s note: Fuentek vice president Danielle McCulloch (left) served as moderator with panelists (left to right) Todd Sherer of Emory University, Pauline Callinan of MedImmune, and Brian Kraft of Washington State University (WSU).
Danielle McCulloch of Fuentek, Todd Sherer of Emory University, Pauline Callinan of MedImmune, and Brian Kraft of Washington State University at AUTM 2018
Every technology licensing officer dreads that moment when a company has expressed interest in a piece of intellectual property (IP)… but doesn’t want to sign a license. Over the many years Fuentek has helped clients commercialize early-stage technologies, we frequently found that industry-sponsored research can be a useful tool to get things “unstuck” in these situations. Since it seemed that many technology transfer offices (TTOs) were underutilizing this technique, we thought it would be a useful session topic for the annual meeting of the Association of University Technology Managers (AUTM™). Happily, the folks at AUTM agreed and accepted our session proposal for the recent conference. This proved to be a very engaging session. In fact, there were so many great interactions—among the panelists and with the audience—that I’m going to discuss it in two parts. This post shares the panelists’ perspectives on and experiences with connecting technology licensing with sponsored research. My next post will provide Fuentek’s advice for university TTOs who want to proactively pursue sponsored research.

 

Panelist Perspectives

Universities

The two university panelists have programs that are at different stages of maturity and handle the connection between licensing and sponsored research differently:

  • Reorganization: At Emory, industry-sponsored research agreements were handled by the Office of Sponsored Research. To build cohesion between licensing and industry contracting, Todd Sherer implemented a reorg that brought these two groups together in the Office of Technology Transfer. (More information on the Emory reorg is in this Technology Transfer Tactics article.)
  • Coordination: WSU has recently begun to focus on diversifying its research funding while increasing licensing. Brian Kraft is spearheading this effort, which involves coordination between the Office of Commercialization and the Innovation & Research Engagement Office.

Despite these distinctive structures, both institutions have pursued some similar arrangements:

  • Industry vs. Federal: Both Emory and WSU have separated industry-sponsored research from federal government research due to the very different relationships, management requirements, and data tracking needed.
  • Foreign Corporations: Both Emory and WSU merged tracking of their foreign corporation engagements with the rest of their industry-sponsored research, which was especially helpful with big pharmaceutical companies that have a significant U.S. presence but a foreign headquarters.

Industry

As discussed by Pauline Callinan, MedImmune looks beyond merely funding research to pursue bigger relationships with universities, since these offer some key benefits:

  • Efficiency: Strategic relationships are easier to put in place and have a longer horizon than individual projects. They also make it easy to have university researchers present to the company (and vice versa) to find areas of overlap and synergy.
  • Attracting Top Talent: MedImmune has arranged with several nearby universities to offer a “researcher rotation” program for post-docs. This gives the company a chance to test out and cultivate potential employees, while providing students with valuable industry experience—a good thing since 70% of Ph.D.s go into the private sector.

Sherer and Kraft agreed that such engagements are ideal from the university perspective as well.

 

Insights about Industry-University Agreements

Communication Challenges

Callinan shared a useful insight regarding the challenges that can occur in industry-university engagements:

  • Problem: Like most private companies, MedImmune cannot always express its technical needs explicitly.
  • Solution: Start with scientist-to-scientist discussions to try to achieve a match on the fundamentals, rather than focusing on what purpose the company has for the final drug.

This example particularly resonated with Kraft. In fact, his office is training WSU researchers on how to effectively communicate with industry to help industry see them as a match.

Master Agreements to Share IP

Both industry and academia can benefit from longer term collaborative relationships with master agreements that specify terms for sharing IP ownership.

  • Callinan pointed out that MedImmune has had engagements where the IP was split 50-50 and has been very happy with the relationship and results.
  • Emory has a new type of agreement vehicle that shares the research costs and the IP. Sherer observed that what such arrangements lack in terms of industry sponsorship is made up by the terms for IP ownership (and the upside that follows).

The takeaway message: When the university shares some of the risks associated with the research, it is easier for industry to agree to share the IP ownership.

 

Challenges in Licensing–Industry Contracting Interactions

Panelists also discussed the culture differences between sponsored research and licensing teams. For example:

  • Licensing officers tend to have a “Let’s get this deal done!” enthusiasm that can be viewed as pushy by sponsored research staff.
  • Staff members’ skill sets and salaries across the two groups may be quite different, which will need to be reconciled if a reorg is pursued.
  • In a consolidated office, recruitment can be more challenging since some applicants might view contracts as “not fun” and would rather do licensing marketing and deals.

Change management is always tricky, whether it’s part of a reorg or encouraging more interactions between the licensing and industry contracting personnel. Formally shifting the goals usually results in a comparable behavior shift. Ensuring the metrics match the job descriptions also helps move things along.

 

The Bottom Line

The panelists agreed: Using industry sponsored research as a pathway to licensing early-stage technologies is a viable approach that resonates with companies. If your tech transfer organization is like most—that is, with licensing separate from the industry contracting function—now is the time to engage with your counterparts. As noted in an earlier post on sponsored research agreements, the licensing and the industry contracting should have a “we’re all on the same team” mentality. My next post will offer Fuentek’s suggestions for operationalizing this idea. Stay tuned!