Super-High Temps Can’t Beat NASA’s Aerogel-Reinforced Composites: Licensing Opportunity

Danielle McCulloch formerly served as a Fuentek vice president. She transitioned to our client and is now Program Manager for NASA’s Flight Opportunities program.

Researchers at NASA’s Glenn Research Center have developed a patent-pending method for fabricating aerogel composites for thermal insulation applications — and NASA is now making this technology available for licensing.

Flexible aerogel composite provides thermal insulation to 1200 ºC. (NASA photo)

These low-density composites are super flexible (check out the photo!) and robust enough to withstand temperatures of up to 1,200 °C without flaking. These qualities — plus its lower weight and higher efficiency — make the innovation an ideal insulation material for the aerospace, military, aviation, and oil and gas industry applications such as:

Thermal protection systems (TPS)
Inflatable decelerators
Heat shields
Fire blankets
Radioisotope power systems
Thermoelectrics
High-performance clothing
Thermal seals and seals to reduce gas permeability

In fact, several commercial companies have already expressed interest in the technologies, and we’re helping with moving them down the technology transfer pipeline.

A Streamlined Licensing Opportunity

NASA’s award-winning engineer Frances Hurwitz developed the technology in collaboration with Ohio Aerospace Institute (OAI). In fact, the two organizations have a joint-ownership agreement (JOA) in place for the intellectual property (IP). The JOA specifies the roles and responsibilities for patent prosecution and technology marketing, and it authorizes NASA Glenn to represent OAI during license negotiations.

Quite frankly, this agreement is a big win for potential licensees:

Streamlines licensing: The JOA enables potential licensees to negotiate with one entity rather than two.
Facilitates exclusivity: The streamlining enabled by the JOA is particularly beneficial when working toward an exclusive license.
Enhances ongoing R&D: Having clear IP ownership means additional developments can progress in a more creative and collaborative context.
Establishes template for new collaborations: NASA Glenn can replicate this arrangement with other R&D partners to streamline licensing negotiations, with flexibility in the assignment of commercialization responsibilities.

I think OAI’s Ann Heyward said it best: “This agreement is a proactive, rather than reactive, approach to commercialization. Not only does it empower NASA to negotiate on OAI’s behalf, which is more resource efficient, but we’ve worked out in advance all of the issues that typically come up during licensing. This head-start will be a significant benefit for companies interested in our joint innovation, and it’s an approach we want to build on for the future.”

If you’d like to learn more about how Fuentek can help you employ these types of proactive strategies in your technology transfer activities — or if you’re interested in learning more about licensing the aerogel-reinforced composites — contact me here. You can also read more about the successful joint-ownership agreement between NASA Glenn and OAI.

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Focus on Market Potential to Prioritize Active Projects: Stories from the Field

By Danielle McCulloch

Danielle McCulloch formerly served as a Fuentek vice president. She transitioned to our client and is now Program Manager for NASA’s Flight Opportunities program.

Stories From The Field We’ve blogged often about how planning for technology marketing helps tech transfer offices (TTOs) be more proactive and efficient in selecting innovations to market. If your TTO is like most, you have more active marketing projects than you have the resources to handle. Therefore, monitoring and adjusting your marketing projects to prioritize the best ones is the key to achieving long-term value. In today’s Stories from the Field post, I share details of how to apply what we’ve learned through years of identifying high-priority projects.

We recently worked with a university client to help the TTO identify the “most likely to succeed” of its nearly 50 active technology marketing projects. Due to limited financial and staff resources, our client not only wanted to focus its efforts on the projects with the greatest potential for success but also to identify the projects that it should shut down, keep open, or simply gather more information about in order to make a good decision.

Fuentek’s experience had shown that the best way to achieve such diverse objectives is to concentrate on the projects that are most likely to end in some type of deal. This allows you to focus (rather than dilute) your marketing efforts and get to the best deal as quickly as possible while expending the fewest resources. Here’s how we helped this particular client prioritize the marketing portfolio. We:

Gathered the decision makers to “clear the decks” of those projects that warranted no further effort as well as those where marketing efforts were succeeding. Including technology managers who can provide the most up-to-date information about how each project is going is essential. In the case of our university client, this discussion uncovered 17 technologies for which more up-to-date market information was needed to understand whether further marketing was warranted.
Reviewed the assessments and conducted market research to determine whether technologies were still relevant. Sometimes while a technology is in development, new products emerge that are a better fit to market needs/desires. It makes sense to suspend marketing of innovations for which market potential has diminished and give priority to those with higher market match-up potential.
Analyzed new market data and determined next steps with specific suggestions for proceeding or shutting down each project. We provided our client with action plans that enabled quick and efficient exploration of high-impact opportunities. For technologies we rated as having lower potential, we recommended passive marketing efforts, which allowed our client to stop expending effort yet not completely abandon the technologies.

The lesson? The means to achieving success is not to keep as many technologies as possible in play but instead to focus on those with the highest potential. This approach to prioritizing marketing projects ensures that your TTO can direct limited resources to those projects with the greatest likelihood of generating a deal.

Have you prioritized a group of marketing projects? What approaches and criteria did you find helpful? Tell us about it by leaving a comment below or contacting us privately.

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Prototyping Licenses: Another Angle on Evaluation Licenses for Technology Transfer

By Laura Schoppe

Laura Schoppe is the founder and president of Fuentek, LLC. She is a past chair of the AUTM Foundation and also served as AUTM’s vice president of strategic alliances and chair of the Global Technology Portal Committee.

A few months ago, the IP Marketing Blog discussed the OpenUlster program at the University of Ulster in Ireland and its evaluation license. It caught my attention for its efforts to streamline licensing and help mitigate the risks that potential licensees may feel when contemplating a new technology. Here’s how the blogger described it:

To take out an evaluation license, which costs just one Pound, the visitor just clicks on the link to download the documents, fill out two forms and return them both to Ulster. “When the license is countersigned by one of our commercialization team, the firm has exclusivity to evaluate that technology,” says [technology commercialization manager Dr. John] MacRae… At the end of the evaluation period… the evaluation license can be converted into a full commercial license.”

I double-checked with John MacRae, and sure enough my interpretation was correct: The OpenUlster evaluation license provides companies with a quick, easy, inexpensive way to test a new technology, and then the company (if it likes the tech) comes back to negotiate a full license. BTW, this is very similar to the program offering $1,000 license options that the U.S. Department of Energy launched last summer.

Giving potential licensees the chance to get their hands on a technology for a while so they can decide if it really meets there needs is a great idea, and I think more tech transfer offices should consider following Ulster’s lead.

If your TTO is thinking about offering evaluations licenses, let me mention yet another angle to consider for certain situations.

Several years ago we helped a client develop a Prototyping License, which allowed a company to license a technology for the express purpose of making prototypes for other potential licensees. Note that this was a very restrictive license. The licensee couldn’t sell the technology commercially. In fact, the agreement specified that the licensee could sell the prototypes only to those organizations approved by our client.

This might sound like a strange license to offer, but in certain situations it’s exactly the right way to go. Some companies might be interested in your technology but either can’t (because they’re too small and/or lack the facilities) or don’t want to (because they’re too big and/or too busy) make the prototype themselves for evaluation.

There are plenty of small prototyping shops that are set up to do one-offs quickly and cost-effectively. In fact, there is one “down the road” from Fuentek called Laut Design that does just this kind of work. (Thanks for the photos, Michael!) So there’s no reason for you to be in the business of making prototypes for potential licensees. The Prototyping License lets potential licensees pay the third party for the cost of building a prototype to their specifications (which BTW might be very different from yours). Then they can test it and revise as needed to confirm it meets their needs, reducing the risk associated with obtaining a full license.

This arrangement worked out great for our client for certain technologies. I can recall one particular instance where a small shop prototyped our client’s technology for a huge government contractor, which eventually licensed it. In another case, the prototyping licensee later became a commercial licensee.

The keys to success with a Prototyping License arrangement are:

Find a good shop: In a sense, the rapid prototyper is your representative, so be sure the shop does good work and will keep your potential licensees happy. It also helps if the shop can handle different types of prototypes, such as foam for early tests all the way up to limited runs of production-quality pieces.
Establish an umbrella license: You don’t want to have to execute individual licenses for each technology that the shop will prototype. Simply add amendments or appendices so that it’s legally appropriate but you don’t have to go through the task of getting all the signatures.
Help the licensee be successful: Early on in the relationship, the inventor will need to provide technical support to the licensee to ensure accurate prototyping of the technology. Once the prototyping licensee is familiar with the technology, the inventor probably won’t need to spend much time and you all can rest assured that the quality is to your expectations.

Do you have experience with these types of licenses? What was your experience? Submit a comment below or send us a private message.

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Great Tech Transfer Is a Marathon, Not a Sprint: Stories from the Field

By Doug Foster

While everyone likes a sprint, the reality is that tech transfer with the greatest impact usually is a marathon. Negotiating effective tech transfer agreements can seem as arduous, and there are so many steps along the path where you can trip or even fall. But taking the longer view always has better benefits for you and your potential licensee/partner. That’s the focus of today’s Stories from the Field post.

We were leading a marketing campaign for a green energy innovation for a government client. This innovation was so timely and cool that our marketing campaign netted not one but two non-exclusive licensing deals. (Woo-hoo!) When a third potential licensee contacted us, we could have sprinted for the finish line and high-fived our client. Instead, in discussing with this potential licensee the intended use for our client’s innovation, we realized that a license wasn’t the best route to success.

As a licensee, the company would have to purchase too much infrastructure in order to make the venture truly workable. The simpler solution for the company was to buy units from one of the other licensees. The royalties would be good news for our client, but we didn’t stop there.

After several discussions, we realized that the company’s humanitarian focus aligned well with our client’s R&D strengths. We also learned the company could provide our client with access to “real-world” test conditions that the lab lacked. Perfect! Rather than license technology, why not work in collaboration on a variety of R&D projects—well beyond the scope of the innovation that first drew them together.

So we facilitated discussions between both parties to craft an agreement that was favorable to all involved. It’s taken a lot of time, but in the end, the situation is truly win-win. Under the agreement, our client will receive new technology and testing environments from the company that will further its work, and the company not only will be able to realize its original commercial goals but has been introduced to R&D opportunities it was not even aware of before our interactions.

The lesson? Tech transfer is about developing a win-win situation for everyone involved, and that win is not always the first hurdle that you see. Look for the right fit not only for yourself but also for the party on the other side of the negotiating table. If a license isn’t the best fit for them, then it’s not the best fit for you either. Turning things into another, yet still productive, arrangement that may involve a completely different mechanism can still have value in many ways.

In this case, the decision not to pursue the short-term metric of a signed license has turned into a deal that will offer a huge impact to our client and possibly for humanitarian efforts in Third World countries where this green technology can be so beneficial. And all because of the choice not to sprint.

What’s your marathon story? Or can you share a sprint that didn’t work as planned? Leave a comment below or use our Contact Us page to send us your experiences privately.

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Managing Innovator-Prospect Interactions: Stories from the Field

By Jack Spain

Innovators can often be a huge asset when you are in discussions with a potential licensee. After all, they bring more knowledge and expertise about the invention to the table than anyone else. They also often are a good source of information about potential applications and target markets. But as we at Fuentek have learned over many years, one should never underestimate the strength of the connection between the innovator and his or her invention–and how that can help or hinder the commercialization process. Let’s take a look at a specific example.

We were working with a technology transfer office (TTO) on commercialization options for a technology that had achieved critical, high-profile use within the organization. In our early interactions, we had difficulty getting the innovator to commit time to meetings related to the commercialization efforts. We began to realize that the innovator was not completely on board with our efforts. We observed that he had a strong emotional tie to his innovation, seemed concerned that the TTO was going to give away the fruits of his decade of hard work, and had his own preferences for additional applications for his invention and was not open to investing time in exploring other commercialization options.

These issues became quite clear during our initial conference call between the innovator and one of our prospective licensees. The inventor’s negative feelings emerged as belligerence and even rudeness. It was extremely awkward and set back our efforts with the prospect.

Recognizing the need to proactively manage future interactions between the inventor and prospective licensees, we worked diligently to gain more buy-in from the innovator, leveraging technology awards as a means to enhance the relationship. These efforts paid off, and commercialization efforts have continued, with the technology having been demonstrated to several very interested prospective commercial licensees.

The lesson learned is: Always invest adequate time up front to get the innovators on board with your commercialization plan. Their support is critical to executing it.

Do you have specific strategies for gaining innovator support during technology marketing or commercialization efforts? Leave a comment below, or contact us privately to continue the conversation.