The new realities for tech transfer

“There has been no impact on the flow of ideas. But there has been an impact on how [these ideas] are transferred into a commercial venture and on subsequent funding,” Charles Cooney, Professor of Chemical Engineering and Faculty Director for the Deshpande Center for Technology Innovation at MIT, told delegates at the annual US BioIndustry Organization conference in Chicago this week.

“The financial community is less willing to invest and follow-on funding is very difficult to find,” Cooney said. This is creating pressure to advance ideas further than in the past.

Gonzalo Merino, Associate General, Patents and Licensing Group at Columbia University, agreed. “We are taking a number of initiatives to increase efficient use of resources. We have limited internal resources and money, and using them efficiently is important in this economic climate.”

In one move to cuts costs and increase efficiency, students and recent graduates are being recruited to do marketing and searching. “They prepare memos on what the technology does and carry out prior art searches. PhDs do a remarkably better job than external services because they understand the technology, and they cost less,” Merino said.

At the same time Columbia is using offshore research organisations to do research and searching also. However, Merino cautioned there are legal issues to be finessed here, around export controls and the Bayh-Dohl Act, the US legislation governing the handling of intellectual property arising from publicly-funded research.

A second move has seen Columbia diversify the type and number of counsel it uses. It has moved from using three – very expensive – New York City law firms to a wider pool, including ‘mom and pop’ firms from outside the city. Lower costs aside, this has the added attraction of enabling the Columbia’s technology transfer staff to provide a more appropriate service, Merino said. “We can direct technology to the right counsel: start-ups can’t afford large law firms.”

However, he added that there are advantages to having the names of big New York City lawyers behind some patents, particularly in the case of disputes.

A third cost cutting measure has seen Columbia carrying out more frequent reviews of its portfolio. This has two objectives: to make the best use of the time available to market a technology before the university has to sink cost into it, and to make a clear and timely decision on whether or not to take something forward at cost inflexion points, for example, deciding if it is worth filing a firm patent one year after the provisional application was filed.

In parallel with improvements to internal processes, Columbia is making moves to increases the appeal of its technologies, by taking a multi-disciplinary view and bringing together related intellectual property to reflect the potential which digitisation offers to integrate previously disparate fields.

It does this by getting all technology transfer staff together at meetings so everyone has an understanding of what is happening in different disciplines. “We see the opportunities for many technologies and try to develop internal collaborations,” Merino said, adding, “In house counsel do this best, but they need a forum to interact.”

Funding proof of concept

The financial crisis has brought US technology transfer offices face to face with a problem of which European counterparts are only to well aware: the difficulty of funding proof of concept studies to get academic projects to the point where venture capitalists and other private funders are willing to pick up the tab.

The Deshpande Center is unusual in the US tech transfer, in being one of the few funding sources for proof of concept research. In Europe this gap in the technology transfer process is being addressed by public and charitable funding, for example Scotland’s Proof of Concept Programme; the Wellcome Trust’s Seeding Drug Discovery Programme; a significant number of university seed funds; the added investment that basic research funding bodies are putting in to advance drug compounds far enough in discovery to be ready to license to pharma and biotech; and in the UK by publicly quoted technology transfer companies, such as BioFocus plc and IP Group plc.

Funding apart, Cooney said the other imperative at this interface is getting scientists to understand the needs of industry. “The challenge is bringing [industry’s problems] closer to the academic community.” This is difficult because of the degree to which research money at US universities is encumbered by project grants from the National Institutes of Health and the National Science Foundation. “Deviate from that and you are not compliant,” noted Cooney. As a result, he said, “We’ve not been successful at bringing in definitions of the big problems [facing industry] and allowing [academics] to respond.”

One way in which the Deshpande Center addresses this mismatch between basic research and industry’s needs, is to involve business in the peer review of the projects which the Center funds. “This is very important in making faculty aware of what some of the opportunities might be,” Cooney concluded.