Posts Tagged: "Technology Transfer"

Patent licensing and technology transfer are cornerstones of modern economies, where the efficiencies of collaboration and division of labor do not require firms to be vertically integrated. The Wright brothers did not build commercial aviation, and yet commercial aviation was born thanks to the Wright brothers’ invention. Similarly, a car manufacturer can simply rely on communication technologies developed by telecom experts outside the automotive ecosystem to guarantee connectivity to its fleet and the corresponding massive economic benefits. This short article focuses on how risk – in the economic and legal sense – changes over time, and what this implies for patent licensing dynamics. Licensing negotiations are not static snapshots in time, they often evolve and change according to developing circumstances, case law, parties’ conduct, and many other factors.

Intellectual property (IP) is a “bridge to collaboration” between companies, and not just a “weapon of competitive warfare.” The U.S. Patent and Trademark Office (USPTO) launched an IP licensing marketplace, “Patents 4 Partnerships” (P4P), on May 4 that is a platform furthering this ideology. The P4P platform is initially being limited to technologies related to COVID-19 to address the ongoing pandemic. However, USPTO Director Andrei Iancu seems prepared to expand the platform to include other technologies, including artificial intelligence (AI) innovations and cancer treatments, based on interest and engagement during this pilot phase.

In recent years there has been a paradigmatic shift towards commercializing technology through startups. There is a universal understanding that university inventions are in early technology readiness level and need substantial development to be ready to go to market. Many universities have taken it upon themselves to fund some of the startups, sometimes co-funding alongside venture funds… The next frontier for this industry will likely be in the transformation of data-rich sectors using artificial intelligence (AI) and machine learning technologies. One area largely accumulating data is the healthcare sector. Medical knowledge is doubling every 73 days, yet we are barely scratching the surface of utilizing this data. With our computing power today and the new era of AI we are at the cusp of a healthcare revolution. Academic institutions are sitting on massive amounts of valuable data that is vastly underutilized, and research institutions will soon begin to recognize and develop healthcare data into the next revolutionary asset.

Hopefully, you’ve been fortunate enough—at least once in your life—to work for someone you really admired. That happened to me as a Senate Judiciary Committee staffer for Senator Birch Bayh (D-IN), who gave me the opportunity that changed my life. He turns 91 today… Bayh-Dole not only cut through the bureaucratic red tape strangling the development of federally-funded R&D; it marked a turning point in how patents were viewed in Congress. When I first joined the Committee, patents were considered tools for big business to stifle competition. Intellectual property fell under the jurisdiction of the Subcommittee on Antitrust and Monopolies. The Senate Small Business Committee was a hot bed of anti-patent sentiment.

After months of anticipation, the just released draft paper Return on Investment Initiative to Advance the President’s Management Agenda: Unleashing American Innovation signals that the Administration is serious about addressing a wide range of long neglected issues undermining effective technology commercialization.The paper, generated under the leadership of Commerce Under Secretary Walter Copan, who heads the National Institute of Standards and Technology (NIST), is “a discussion document”  based on feedback from a series of public meetings and written comments for improving the return on investment from $150 B spent annually on government-supported R&D… The suggested action is to “authorize scientists and engineers at Federal Laboratories to engage in entrepreneurial activities that support technology transfer and commercialization.”… The report effectively addresses a wide variety of problems in the system. Many have lingered for decades but the government lacked the leadership and the will to address them. It looks like that may be ending. That’s a good thing for American taxpayers.

It would be a tragic mistake to blame federal tech transfer underperformance on Bayh-Dole. Bayh-Dole needs no amending. Bayh-Dole demonstrates how secure patent rights are the lynchpin to society’s getting the greatest benefit from federal research dollars.

NASA will enter into a range of different patent license agreements from no-cost evaluation licenses up to exclusive license. The agency’s goal in licensing technologies is to reach the widest distribution possible for the commercialized technology. To some, it may seem unusual that exclusive licenses would be part of NASA’s licensing options if the goal was truly the widest distribution possible. “We’ll only grant an exclusive license if we believe that exclusivity leads to the widest distribution,” Lockney said, noting that there were a couple of examples where such a situation could play out. An exclusive license for the broadest possible distribution could make sense if the technology was being commercialized in a medical device and a single multinational company offers an incredibly broad distribution model; such was the case with a flexible insulating plastic material for use with pacemaker wires recently licensed by NASA with Medtronic. In other situations where multiple companies occupy the same market, NASA might grant an exclusive license to one company if it’s determined that, without the exclusivity, none of the firms could invest adequately in commercializing the technology.

Academic institutions and federal labs receive approximately the same amount of  R&D funding from the government, although universities have more money overall because of contributions from industry, states and other sources.  Still, the disparities in their licensing impact reinforces the implication from Sec. Ross that a top to bottom review of the federal lab tech transfer system is sorely needed.

Litigation finance in the university context is thus particularly valuable. Even for smaller matters, litigation finance shifts spend off the university’s balance sheet, allowing it to put its own capital to use in its primary endeavors: Education and innovation. For larger matters, litigation finance shifts risk from the university—which, despite its diverse technology portfolio, may have only a small number of claims with attractive litigation prospects—to an entity with a much larger book of diversified risk across uncorrelated claimants.

The biggest complaint about federal labs is it’s too hard to complete deals. Many federal labs must run pending agreements through byzantine departmental procedures. Companies wonder what’s taking so long and are surprised when negotiated points come back altered… One reason why universities outperform the labs is that many academic licensing officers come from the private sector. They understand the pressures companies are under to complete agreements.

A massive amount of intellectual capital gets created every day from $150 billion in annual research funding allocated to federal laboratories and universities in the United States. Unfortunately, most of that intellectual capital never makes it to the market and does not generate any ROI. Essentially more than 99% of the intellectual capital created at universities and federal labs are never protected and never gets translated to intellectual property, and hence those are almost never transferred through a license to a startup or an existing company. So, what happens to the majority of the intellectual capital that is not disclosed as inventions? That typically remains locked up at the university without access from the outside world.

Secretary Ross gave an unequivocal endorsement of Bayh-Dole specifically, and more generally saying laws need to be updated to address business and technology realities of today, and to enable more companies to license federally funded technologies and take advantage of federally funded research in order to launch high-tech start-ups, create jobs, and grow the economy. “Our practices, policies, regulations, and laws all need to be updated to assure that technology transfer commercialization in the large-scale production and manufacture of innovative technologies occurs within the US,” Ross said. “We must address growing trade imbalances by producing in America the innovative products that the rest of the world needs to buy.”

Today (TTOs) are increasingly being run by professionals who are experienced in startups, licensing, monetizing and have tremendous depth of technical knowledge in a variety of fields. But they are all waging a losing battle in an industry where 73% of the offices are losing money and an additional 16% just breakeven. It is not because of the efficiency of these offices, it is because of the underlying business model… But the impact of technology transfer on the US economy has been enormous. Since 1980 more than 5,000 startups have been created. From 1996-2013 technology transfer has contributed $518 billion on the US gross domestic product, and $1.1 trillion on the US gross industrial output.