All roads lead to… tech transfer?
By Hannah Dvorak Carbone, AUTM Board Director
Back when we used to socialize with new contacts, we’d inevitably all get the question: “So what
is it that you do again? ‘Tech transfer?’ Is that, like, IT support or something?” Surely, I can’t be the only one whose inbox gets spammed by people thinking I’m responsible for purchasing the university’s cloud computing services because my office has the word “technology” in its name.
Like so many of us, my path to a career in tech transfer was not a direct one. I work in the Office of Technology Transfer and Corporate Partnerships (OTTCP) at Caltech, an office that didn’t even exist when I started out as a doctoral student here in the 1990s. It was established partway through my tenure as a grad student, and my only encounter with it back then was one foray over to process an MTA for a research reagent.
Fast forward almost ten years from my graduation, after a detour into management consulting, and I was back in Pasadena looking for a job. Through my alumni network, I heard about an opening in the tech transfer office (OTT) at Caltech. I was intrigued: this seemed to be an opportunity to leverage my broad interest in science (wider than the necessarily narrow focus of my PhD work, and one requirement of my job hunt) and my exposure to the business world, while giving me the opportunity to learn about the domains of patent law and contracting.
I had a lot to learn, and I was fortunate to learn much of it from the late Larry Gilbert, a pioneer in the world of tech transfer, one of the founders back in 1974 of an organization then called SUPA – the Society of University Patent Administrators. Never heard of it? In 1989, the organization changed its name to one that’s more familiar to us all: the Association of University Technology Managers, now AUTM.
I became an AUTM Member almost immediately after joining OTT, attending my first Annual Meeting in 2008 in San Diego. I quickly discovered that the network of colleagues from whom I could learn about tech transfer went way beyond Larry, Fred Farina, and the rest of the team at Caltech. AUTM has been an invaluable resource in my professional development ever since, through both informal channels and formal programs.
Fast forward another decade to the present day. The universe of tech transfer, and my network within it, has expanded once again. Caltech’s OTT is now OTTCP, encompassing not just the patent prosecution and licensing activities of “traditional” technology transfer, but also including a dedicated corporate partnerships team. AUTM no longer represents only “university technology managers,” but a whole ecosystem of individuals and organizations engaged in the process of bringing innovations from lab to market. Last year, I was proud to obtain the RTTP (Registered Technology Transfer Professional) designation from ATTP. The global Alliance of Technology Transfer Professionals, ATTP, is an association of associations, bringing together technology transfer and knowledge exchange organizations from around the world (including AUTM as a founding member) to agree upon a unified definition of technology transfer, and confer recognition (through the RTTP designation) to those individuals who have demonstrated a sufficient level of achievement and competence in the field.
ATTP defines technology transfer as “a collaborative, creative endeavor that translates knowledge and research into impact in society and the economy,” with a focus on the key elements of partnership between different players in the innovation ecosystem, and the translation of research outputs into societal benefits. While perhaps still not clearly answering the cocktail party question of “but what do you actually DO?”, this nicely describes the breadth and scope of this work we’re all doing together.
I feel fortunate to have found my way into this field called tech transfer, and to be able to continue to support the field through my work with AUTM, as a panelist and moderator, volunteer committee member, and Board Member. I’m furthering my global reach and network through my position as the AUTM representative to the ATTP Board, collaborating with counterparts in tech transfer and knowledge exchange organizations around the world. I look forward to seeing many members of my global tech transfer network in person again at AUTM’s Annual Meeting in 2022!
AUTM-FLC Partnership Brings New Potential to US Innovation Ecosystem
Marc Sedam, AUTM Immediate Past Board Chair
Over the past 18 months you probably noticed that AUTM has talked more and more about the Federal Laboratory Consortium (FLC), the organization responsible for technology transfer and commercialization for innovations generated by the network of US federal laboratories. That’s because AUTM and FLC are now linked in a cooperative agreement that has the potential to accelerate and transform the outputs of federally funded research. With technology transfer in the spotlight more than ever, the critical impact of early-stage federally-funded inventions – and this partnership embodies the “rising tide lifts all boats” philosophy.
Some background: The FLC was officially created in 1986 via the Federal Technology Transfer Act amendment to the Stevenson Wydler Act of 1980, which was intended to help commercialize intellectual property from the Labs. Sound familiar? In many ways, the Stevenson-Wydler Act and Bayh-Dole Act are policy twins separated at birth. Both seek to leverage Federal investment in research; both promote the commercialization of research through public-private partnerships; both laws have benefitted society greatly by creating a policy framework that streamlines the engagement with industry; and both are operationalized through NIST. One key difference is that the economic return from the government’s $50 billion annual investment in public sector research (universities, hospitals, not-for-profit research institutes) is historically many-fold larger than from its $50 billion annual investment across the 300+ federal labs.
A key difference in federal technology transfer is the focus on partnership, often through a Cooperative Research and Development Agreement or CRADA. The same Federal Technology Transfer Act that launched the FLC also created CRADAs. These CRADAs are a primary focus for many federal technology transfer offices, as they create a public private partnership to conduct research that is focused on commercialization. While universities can create spin-offs, federal ethics rules make that difficult in federal labs. CRADAs allow for federal labs to work with companies to more easily launch new products.
NIST published a request for proposal on behalf of the FLC in 2019 looking for an organization to operate the Consortium. The AUTM Board believed strongly that the Association was well-positioned to help the FLC. The overall goal was simple—AUTM could help the federal labs increase their commercialization outputs with the significant side benefit of improving the engagement and understanding between federal labs and AUTM Members’ institutions. Over the summer of 2019, a focused team of AUTM leadership and staff created a proposal that took advantage of AUTM’s best-in-class educational programming, networking, and event management to meet the needs of the FLC. I had the fun part—running point on the visioning and the proposal narrative to try and reduce 40 years of AUTM into actionable tasks that respect the unique differences between federal labs and public sector research institutions, while amplifying the things we have in common.
We were thrilled when news broke that AUTM was awarded the contract to operate the FLC and then lived the adage “be careful what you wish for” when realizing that we’d only have 60 days to transition the operations from the previous awardee to AUTM. The burden of this task fell to the AUTM staff who, as usual, exceeded expectations. Since the award date we’ve worked hard to create more ways for Members to engage with the FLC, including content at the Annual Meeting.
Our goals remain straightforward—help our Members and the labs increase the quality and quantity of opportunities resulting from the $100 billion combined Federal investment in research and increase the number of triple-helix (not-for-profit research/industry/government) collaborations through building and maintaining long-term relationships.
In time, this relationship will allow AUTM and FLC to leverage our collective strengths to more impactfully and efficiently advance the fruits of federally funded research. Just as universities are working together even more closely than ever, this partnership also allows our universities, hospitals, and research institutes to work together with our federal lab colleagues down the block – or even on your own campus. You’ll see.
AUTM Emerging Members Program Seeks to Support Next-Gen TTO Pros in HBCU, MSI Space
By Almesha Campbell, PhD, Director, AUTM Board
July 14, 2021
Managing a small technology transfer office (TTO) is a challenge, but managing a one-person TTO is even more challenging – especially in the context of small, under-resourced institutions. For over 11 years, I have done just that – and at a Historically Black College and University (HBCU). I had to be creative and effective in an environment where technology transfer was not a priority. Additionally, the tools and infrastructure needed to succeed were largely unavailable, nor did I know what success looked like. Fortunately, a few months before moving into the role of IP Manager, I met someone who directed a TTO at another HBCU. I immediately connected with her and asked to shadow her for one week. Less than two weeks after that experience, I enrolled in AUTM’s Essentials Course
, where I met many young tech transfer professionals who are now greatly impacting the field.
According to the National Science Foundation’s HERD survey, only nine of the 107 Historically Black Colleges and Universities (HBCUs) have expenditures at or above $18 million. Low research expenditures may be one of the reasons why tech transfer has not been a priority for most HBCUs.
However, HBCUs are beginning to understand the importance of technology transfer and the funding agencies’ desire for researchers to commercialize their ideas and/or intellectual property. Efforts such as the NSF I-Corps Site program has provided a much-needed pathway for faculty and students to take their ideas from lab to market. However, only three HBCUs currently operate NSF I-Corps Sites, meaning most HBCU faculty and students have not been exposed to such programs. Additionally, most HBCUs do not have the human resource and/or physical infrastructure to facilitate such a site, so it is critical that HBCUs leverage partnerships with other universities to drive commercialization.
Recognizing some of the challenges Minority Serving Institutions (MSIs) face, AUTM set out to recruit these institutions to AUTM’s newly established Emerging Members program. The program’s intent is to increase the capacity of MSIs to operate TTOs, which will in turn help to train the next generation of tech transfer professionals in the HBCU and MSI spaces.
Eleven HBCUs have joined this new program so far. They are paired with mentors and provided with training on IP protection and commercialization. This program can very well help change the ecosystem for entrepreneurship and commercialization at HBCUs. The impetus is for HBCUs to develop a different perspective and recognize that developing an entrepreneurial mindset is critical in moving their research and discovery to a place that will elevate the value-add for their research enterprise and position the universities to sustainably drive the long-term impact of intellectual property.
While the Emerging Members program is a great step towards achieving some diversity in tech transfer, there are still other barriers to commercializing research at HBCUs beyond diversity, knowledge, and mentorship.
The United States Innovation and Competition Act (USICA) of 2021, formerly known as the Endless Frontier Act, recently passed the U.S. Senate. The bill authorizes $110 billion at the National Science Foundation for basic and advanced technology research over a five-year period. Among many other provisions, the legislation includes funding that will help build technology transfer infrastructure. The bill also contains some new research security reporting requirements which are of concern to universities.
The U.S. House of Representatives has passed a smaller version of NSF legislation which does not contain the tech transfer provisions. AUTM is supportive of seeing if some of the Senate language might be included in any negotiated final version of the legislation. AUTM supports additional resources for smaller institutions, such as HBCUs, who may have less-resourced TTOs.
USICA and FASTER offer great opportunities for the most highly resourced institutions to partner with HBCUs. Not only will this promote diversity in tech transfer, but it will ensure that a more skilled tech transfer workforce is at the forefront of helping America be the best in the world.
The Innovation Economy Requires a Well-Funded Tech Transfer Ecosystem:
It Appears Washington Agrees
By Ian McClure, AUTM Incoming Board Chair
June 16, 2021
Since the dawn of the Bayh-Dole Act in 1980, research institutions have been expected to produce commercial and societal impact from federally funded research without matching funding support for the necessary infrastructure. It is an unfunded mandate.
Technology transfer support from the U.S. federal government has been close to zero. As a result, institutions are largely left to fund technology transfer resources, forcing funding incentives that may be central to the university’s overall needs. This is a big reason tech transfer professionals often talk more about license revenues than products produced, jobs created, and lives saved.
The public and its elected representatives rely on universities and institutions’ research advancements and technological discoveries – especially those federally funded– to generate lifesaving and life-enhancing impact, unrelated to the income to cover any necessary costs of the process. Yet, intellectual property protection (IP) and technology transfer are required to advance innovation to market, and it is essential that ownership of IP and management of the technology transfer process remain at the institution where the innovation occurs – as the Bayh-Dole Act stipulates.
The proposed US Innovation and Competitiveness Act (USICA), formerly the Endless Frontier Act, could change that dynamic. In the Senate version passed last week, Section 2109 sets a precedent by mandating, for the first time ever in a federal bill, funding support for academic technology transfer infrastructure and capabilities at research institutions. This legislative endorsement that building research technology transfer strength in the country is worthy of overwhelming bipartisan support highlights the seismic shift in perspective related to the importance of research and effectuating its impact.
Section 2109 was initiated by a small group of technology transfer leaders, including AUTM. We called it the Focused Action Supporting Technology and Economic Response (FASTER) proposal, which was architected to advance research to market FASTER. The idea is that this funding is made available to eligible research institutions that opt-in. Opting in is important to counter concerns that an institution may not want any additional oversight or reporting responsibilities. Yet we should not shy from accountability. We have been able to preserve respect and trust in what we do for over 40 years. This is an opportunity to change the incentives to support our work, and what we can do through metrics that level-set expectations and even improve our own performance.
A central theme in FASTER, and hopefully in any final version of the bill, is to significantly broaden and diversify the institutions offering technology transfer resources to its innovators. We aimed to set aside significant funding amounts for small-to-medium sized research institutions (between $10M-$100M in research expenditures) as well as for Historically Black Colleges and Universities and other Minority Serving Institutions. While specific earmarks are not in the final Senate version, its language lets any institution submit a proposal for up to $1 million for technology commercialization efforts and resources. This is a game-changer for hundreds of underrepresented institutions that can, hopefully, provide services that will protect IP and offer education, partnering, and startup creation resources on their campuses with ideas and research findings that otherwise may only reach the public domain or a dusty shelf. Our Kentucky Commercialization Ventures program, which provides technology transfer resources to all our smaller regional universities and community and technical colleges, has proven that innovations exist with real economic and societal impact potential at these institutions. My hope is that this bill can help prove this everywhere.
The work has only just begun, with the House of Representatives next considering their version of the bill. If you believe, as I do, that this funding support is an enormous opportunity for innovators, our profession, and the public that relies on these technological and scientific advancements to improve their lives, it is important that you make your voice heard. Your Congressional representatives will be considering this bill for months to come, and this is a key element to effectuate impact from the increased spending on research and innovation. Watch for updates, supporting toolkits, and more from AUTM that may help you inform your administrative leadership and federal relations staff. We have an opportunity to see the largest increase in federal funding for our profession since 1980.
Ian McClure is AUTM’s Incoming Board Chair and is the Associate Vice President for Research, Innovation and Economic Impact for UK Innovate at the University of Kentucky.
Supply Humanitarian Aid, Don’t Waive Patent Rights
By Laura Savatski, AUTM Board Chair
May 19, 2021
At a time when health care access is crucial, we have become increasingly aware of the disparities and inequities that exist in developing countries and our own. This global pandemic has caused huge devastation that is felt even more keenly in the developing world, where access to clean water and basic medical care isn’t always available. Our supply chains have been stressed to the breaking point as governments fight for the same products. Despite a recent decision by the White House to support the waiver of patent rights, it is not access to patented technology that is the most pressing issue here, but broad and equitable access to health care for the sick, access to know-how, a workforce to aid a high-tech manufacturing process, trade protocols, and the sourcing of short-supply products to make vaccine.
Shortly after the COVID-19 pandemic became a global health crisis, AUTM leaders and Members discussed how best to encourage broad humanitarian access to technologies needed to fight the pandemic. The COVID-19 Licensing Guidelines
published in early 2020 and adopted by almost 100 well-known organizations outline a time-limited non-exclusive free license strategy to encourage the sharing of information and technology to develop urgently needed products. Companies have successfully developed vaccines in record time and received regulatory clearance for emergency use. Some of the vaccines rely on novel mRNA vaccine technology and patented ideas that have transformed the delivery of life-saving solutions.
Waiving patent rights ignores the realities that access to a patented technology is just a first step in a complex process. Many countries are not set up with manufacturing and trade processes to allow them to quickly scale up technology production to the level needed during a crisis. Furthermore, oversight into infrastructure safety and efficacy is not as well-developed in some locations, risking fraud and reducing confidence in the product. Even if well intentioned, waiving patent rights will not be enough to quickly and safely produce vaccines and other health products needed. In fact, by waiving protocols that protect the technology development, we may end up doing more harm than good.
Patents and innovation have close ties, and the existence of patent rights and a system to reward innovation contributes to more innovation. In countries without a strong patent system, innovation does not happen at the rate we see in countries with established intellectual property processes. Countries looking to develop their economies often start with a strengthening of their patent and trade offices. The United States, through its Constitution, created patents to encourage technological progress and the public dissemination of knowledge by securing a time-limited right to an invention as part of our foundation. This system has served us well in its hundreds of years, contributing to the development of vaccines, antibiotics, telecommunication, new materials, and many other transformative and life-saving solutions, often created in times of great need.
The recent global focus on COVID-19 vaccines and other products is a scary rollercoaster ride for many of us. We are in an incredibly difficult time, trying to balance patent rights with global health access. Much is at stake in getting the vaccines to everyone – the health of the world, economic stability, and our hope of a return to “normal,” just to name a few.
As practitioners, we know the patent system works to drive innovation forward. Think about where we would be without it. Would inventors share their technologies in a public document like a patent application, which gives step-by-step instructions for creation, if they could not protect the sizeable investment in development of the idea for the lifetime of a patent? Would they instead hold all this knowledge privately, stifling progress in their field and reducing the ability for those in need to get help? Would investors back the development of novel products if there was no return on their investment, which is what happens when the patent system cannot be relied upon to be predictably protect their investment? Universities may no longer partner on research discoveries with companies that produce life-saving vaccines if the patent on that discovery would be meaningless because those rights could be waived at any point. Think of how many innovations of the last few hundred years would have never come to light.
It is now, more than ever, that we need a strong and predictable patent system so that innovation is valued and incentivized to provide us with more access to technologies that can positively impact our health and our lives.
To save lives during this crisis, we should focus on critical issues of equitable access to medical care and vaccines in all communities, humanitarian aid through the supply chains that can provide what is needed where it is needed most, and the ramp up of investment in manufacturing capacity in more locations around the world, through established companies with proven track records of producing safe and effective doses. Making smart, thoughtful decisions throughout the entire process, rather than focusing on waiving patent rights just makes more sense.