What were the top ten notable events in 2010 in the world of university technology commercialization and innovation management? In no particular order, here’s what stands out for me.
1. The Bayh-Dole Act turned 30.
In an interview with Gene Quinn of IPwatchdog.com, former senator Birch Bayh described the essence of his goals in creating the Bayh Dole Act: “there’s something to be said for the private enterprise system and we think we ought to hook the private enterprise system up with the intellectual enterprise in our universities so we have the entrepreneurial skills of the free enterprise system and the intellectual capacity of our researchers, we meld those together.” At an AUTM-sponsored event in DC, I had the good fortune to hear former Senator Birch Bayh speak about how the Act came to be. Bayh described his and Senator Bob Dole’s bi-partisan efforts, back in the 1970s, to pass legislation that would make federally funded university research more commercially accessible to the tax-paying public.
Passed in 1980, the Act gave universities that conduct federally funded research the right to take title to any resulting patents as long as they were willing to patent and attempt to commercialize them – and voila! a new field was born. Since then, universities have done great work in getting university inventions into the marketplace. But as stewards of federally funded research, we can’t afford to sit still. Now, more than ever, we need to re-evaluate Bayh’s original vision, to “hook up the private enterprise system with the intellectual enterprise in our universities.” A great strength of Bayh Dole Act is that it doesn’t detail exactly how universities should get this done. We have lots of freedom within the current law. Although the legislation turned thirty last year, universities should not use a thirty-year-old technology transfer model.
2. Stanford vs. Roche.
Stanford’s lawsuit against drug company Roche will go to the U.S. Supreme Court. The outcome of this case, if Stanford wins, could result in the first-ever change to the original Bayh Dole legislation. Stanford sued Roche for patent infringement of three Stanford patents for monitoring the effectiveness of HIV treatments (these patents were developed with federal funding through the National Institutes of Health). Since the patents were invented by a Stanford employee, Stanford claims ownership. Roche also claims ownership since the same Stanford employee visited Roche’s labs to conduct research that led in part, to the patents in dispute. While visiting Roche, the Stanford employee signed a Visitor Confidentiality Agreement that assigned rights to anything he invented in Roche’s labs to Roche (not to Stanford). What’s being decided in the case is whether the Bayh Dole Act automatically makes Stanford the patent owner, or whether the inventing employee had the right to sign away his research to Roche.
3. The University of Utah unseated MIT as number one for new startup formation.
According to 2009 AUTM metrics, for the first time, the University of Utah spun off more new businesses than MIT or CalTech. It’s not an accident that in the past few years, Utah is spinning off more startups, signing more licenses, and capturing more industry and federal research funding. Utah is one of the few research universities that isn’t shipping its org chart, meaning its technology commercialization office no longer resides in the research administration division. Instead, Jack Brittain, Utah’s Vice President of Technology Ventures is the former Dean of the Business School; Brittain took charge of Utah’s tech transfer efforts about five years ago. I spoke to Jack last week about the changes at Utah and will write up our interview soon, but let me say here that Utah has set up a bold and forward-thinking approach to commercializing campus inventions.
4. Department of Commerce issued a Request for Information.
In March, the federal government issued an open Request for Information (RFI) asking for specific recommendations to improve the commercialization process at U.S. research universities. About 200 total people, businesses, government agencies, foundations and universities responded. So far, the Department of Commerce has offered no official statement, no plan to move forward with learnings from responses, or even a detailed summary of recommendations gleaned from the RFI. Hopefully, since 200 people and organizations put in a lot of work writing their responses, somebody will do something soon: the responses vary in quality, but are still a small goldmine of best practices and some intriguing recommendations.
5. University technology transfer strategies were mentioned in the Harvard Business Review.
(But not in the way most university tech transfer practitioners would have preferred). The good news was that university technology commercialization strategies were mentioned in the January, 2010 Issue of the Harvard Business Review. The bad news was that a lot of feathers were ruffled when the Review selected as one of its Top Ten Ideas, the Kauffman Foundation’s proposal to allow university faculty inventors to commercialize their own inventions. Basically, Kauffman proposed that faculty inventors should be permitted the option to side-step the services offered by their university’s official tech transfer office and do things themselves. Kauffman (and many other advocates of a free agent model) believe that a faculty-led approach would help unused university inventions find their way to use in new start-ups and new industry products.
6. A year of public changes for the U.S. Patent Office (USPTO).
Nothing earth-shattering, but in 2010, the USPTO made public attempts to reduce its patent backlog, speed up the patent examination process, and in general operate in a more accountable and business-friendly style. Since David Kappos, the Director of the USPTO, previously made it to the top at IBM, he’s probably good at turning battleships. The first regional patent office just opened in Detroit. It will be interesting to watch universities learn to work with regional patent examiners.
7. Myriad Genetics, the ACLU, and whether gene patents should be legal.
The ACLU, several doctors and cancer patients are challenging the notion of gene patents by suing Myriad Genetics and other defendants (including the gene patent owner, the University of Utah Research Foundation). Myriad Genetics creates cancer diagnostic tools using gene patents it licensed from the University of Utah Research Foundation; the patented sequences are associated with many types of hereditary breast and ovarian cancers. In March, Myriad and Utah lost the first round of the lawsuit when a federal district judge ruled that some of the patents being contested were products of nature, and therefore, not patentable. The case will continue on appeal.
If gene patents are declared invalid, universities and biotech companies will likely be affected. About 20% of our roughly 4,000 genes have been patented. Of this 20%, almost a third (28%) are owned by universities and 63% by private industry (data from a 2006 study led by Fiona Murray of MIT). This case, unlike Stanford vs. Roche, does not involve interpreting the Bayh Dole Act, but addresses core issues of ownership of genetic matter that could profoundly affect how universities manage their biotech inventions.
8. Pacific Biosciences, a university start-up founded by Cornellians, had a $200 million IPO.
(Disclaimer: I’m a Cornell alum, but I think this one truly was a genuinely notable event.) Pacific Biosciences (PacBio) is a leader in the race for the $1,000 genome and was one of the few successful biotech IPOs in 2010, raising $200 million. The Wall Street Journal selected the company as one of the most promising young firms. PacBio is a university start-up that’s based in part, on licensed Cornell technology developed by former Cornell post doc Stephen Turner (now co-founder and CTO) and Cornell professors Watt Webb and Harold Craighead. PacBio was founded in 2004, so it took six years of hard work to go public. Professors Webb and Craighead have been among Cornell’s most active inventors for years, so it’s nice to see their efforts paying off handsomely in the marketplace.
9. Re-authorization of the COMPETES Act.
The COMPETES Act is good news for those interested in innovative university research since the Act sets funding levels for the research that ultimately ends up in a university’s pipeline to industry. The re-authorization of the Act provides a total of $23.5 billion in funding for the National Science Foundation, $16.9 billion for the Department of Energy’s Office of Science, and $2.9 billion for the National Institute of Standards and Technology. The Act will fund $600 million to promote science, technology, engineering and math (STEM) education, and $1.4 billion for other programs. Related goals of the Act are to support transformative research in clean energy and to improve programs to help research discoveries be turned into new products, jobs, and companies.
10. Last but not least…
This notable event is not of broad interest, but to me, has been significant. In 2010, I became one of the lucky few to try my hand at owning my own consulting business. In the past few months, since leaving the confines of a university tech transfer office, I have experienced first-hand the critical importance of open discussion of the challenges facing our nation’s approach to university inventions. There’s not enough discussion amongst tech transfer practitioners on the topic, not because people don’t want to openly explore the issues, but because too many university research division administrators have chosen to circle the wagons rather than push for better methods. Being open to change does not constitute failure! If a profession doesn’t aggressively change itself, others will make the changes on their behalf, and that’s never a good way to go.
As we close up the year 2010, I’d like to thank the people reading this blog, your insights from the field, and your willingness to reach out and get in touch. Here’s to the under-celebrated tech transfer practitioners, the inventors, and entrepreneurs who battle uphill to do so much with so few resources. Cheers to the people who seek better business models for their tech transfer office, who think outside the box, and who don’t embrace common wisdom, but instead, have the courage to embrace change!
Melba Kurman writes and speaks about innovative tech transfer from university research labs to the commercial marketplace. Melba is the president of Triple Helix Innovation, a consulting firm dedicated to improving innovation partnerships between companies and universities.