jane-muir
1 February 2014Patents

Tech transfer: interview with Jane Muir

The Bayh-Dole Act, passed in 1980, transferred ownership of government-funded inventions from the state to the academic institutions where they were made, allowing universities to take charge of commercialising their innovations.

The Act gave rise to the establishment of tech transfer offices in universities around the world, which were tasked with handling licensing agreements and forging relationships with different companies.

An effective transfer office can be a valuable asset—the Cohen-Boyer family of patents, which cover a method of gene splicing, yielded Stanford University and the University of California, San Francisco about $255 million in licensing fees, while Columbia University has collected $790 million off the back of its patents covering a method for inserting DNA into eukaryotic cells.

WIPR spoke to AUTM’s president-elect Jane Muir to find out how the Association of University Technology Managers (AUTM) is helping universities achieve their potential.

What is AUTM’s role in the industry?

AUTM is the body for university technology managers. That said, a significant portion of our members are industry representatives.

How does AUTM support the universities?

For both industry and universities, AUTM strives to provide networking and educational opportunities to bring all of its members together so they can learn about each other’s needs and potentially identify opportunities to collaborate.

Why is effective tech transfer so important for innovation?

In 2012 there were more than 24,000 new discoveries disclosed to US universities. Without effective technology transfer professionals working to help facilitate moving these discoveries from the laboratories to the marketplace, many of them would not become the life-changing products that we all enjoy.

How is tech transfer evolving?

Technology transfer is a relatively new profession that is continuing to evolve. It is becoming much more integrated into many facets of the university environment. From entrepreneurship to economic development, technology transfer is becoming recognised as integral to many different aspects of the university mission.

In the US especially, more public universities and in particular land grant universities are assuming more within their mission for economic development.

Hand in glove with that are the startup companies that are often licensing university technologies and creating jobs, so there’s that whole aspect of entrepreneurship, whether at the top within the various colleges or different unique models and programmes that are designed to help foster entrepreneurs hooking up with university technologies.

"That legislation was created on the principle of using these research discoveries to improve the human condition. That is the true measure of technology transfer success."

Also, at the top level within universities, the whole aspect of tech transfer has tremendous visibility. Along with that visibility there’s emphasis being placed at the various colleges. I think that has also had a role in making tech transfer more integrated.

What challenges will you face in your new role as AUTM president?

As president of any organisation, you try hard to raise the bar and leave it a better organisation than when you took the helm. I will be following some amazing past presidents so will have to work hard to continue to build on their momentum.

What immediate challenges are universities and tech transfer offices facing? Are these challenges changing in any way?

Technology transfer is evolving at an amazing rate and AUTM must evolve if we are to remain relevant to the membership and to those empowered to affect the future of our profession.

Our evolution must advance the core values of the organisation by emphasising membership, professional development and advocacy. The academic technology transfer profession has gained worldwide recognition from university administration, government officials and economic-development organisations.

As a result, resources, funding opportunities, and potential collaborators have increased to support our critically important activities. AUTM’s leadership must build on traditional partnerships and also be creative in developing new collaborations to leverage these resources and maximise our impact.

What role, if any, can non-practising entities  (NPEs) play in tech transfer?

NPEs bring with them some very unique challenges—it’s unfortunate that some of the patent legislation that’s being discussed in Washington DC is putting universities into that NPE category—we certainly have some concerns about that legislation.

I’m sure NPEs can play a role in tech transfer but we, as universities, typically would not license technologies to them. In fact, when we do license technologies, we typically put developmental milestones in our licensing agreements to ensure that nobody is licensing the technologies purely for litigation purposes. Those milestones are also there to ensure that [our licensees] will be developing and commercialising the technologies.

Has the America Invents Act changed the tech transfer environment?

Because of the [one-year] grace period, the America Invents Act is certainly having an impact on how universities look at patents and their patenting strategy.

How can universities maximise the worth of their inventions? How can they ensure their tech transfer offices are capturing the value of their inventions?

As the higher education mission expands to include innovation-based economic development, we at AUTM must help others understand there are no simple shortcuts for commercialising early-stage academic inventions. The process is fraught with nuance and complexities. We must partner effectively to ensure that those who deploy resources work in a collaborative manner with AUTM to make well-educated decisions that build on the best practices currently in place, and create new best practices by bringing fresh perspectives to the many challenges we face.

The true value of these inventions is not measured by metrics such as the number of licenses or patents but rather by the number of lives that have been improved by the research discoveries that have become products that cure diseases and make the world a better place. In the US, our profession came about as a result of the Bayh-Dole Act of 1980; bipartisan legislation that gave universities the right to take ownership and the responsibility to proactively protect and seek out commercial partners.

That legislation was created on the principle of using these research discoveries to improve the human condition. That is the true measure of technology transfer success and many such stories can be found in the AUTM Better World Project.

What new tools are available to allow for effective tech transfer?

AUTM created the Global Technology Portal; a free service where universities can post descriptions of their technologies and commercial partners can identify those that they may be interested in licensing. In addition, AUTM now has a Partnering Forum at the annual meeting that facilitates meetings between interested parties and a pitch competition where university startups can pitch to interested investors.

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