Cutting-edge tech: a how-to guide for corporate licensing officers

Cutting-edge tech: a how-to guide for corporate licensing officers

Universities and government labs –especially in the United States – arekeen to transfer technologies intocommercial ventures. It can be tough,but not impossible, for corporates toengage with those organisations andfind those innovations

The US federal government spends approximately $140 billion each year on a wide range of R&D that is performed within its own laboratories, as well as at public and private universities (Figure 1). This significant investment yields thousands of patented innovations annually (Figure 2), which government labs and universities are keen to license to commercial and other ventures. Given the diversity of focus in the R&D – from control systems and pharmaceuticals to energy efficiency and nanotechnology and much more – most companies are given an opportunity to accelerate their new product development and/or improve their existing products and processes using these innovations. For example, a wide range of technologies developed at the National Aeronautics and Space Administration (NASA) can be applied to the oil industry (see box on page 21).

Many companies perceive barriers to engaging in licensing with universities and government laboratories. Looking past the reasons for these perceptions – whether real or based on commonly held misconceptions – one can readily see that licensing university or government innovations is by no means impossible; nor is it overly expensive. According to the annual licensing survey conducted by the Association of University Technology Managers (AUTM) for the fiscal year 2012, the 194 US institutions (more than 80% of which were universities and colleges) responding to the survey executed more than 5,000 licences and 1,200 options, and formed more than 500 start-ups that year. A 2012 Licensing Executives Society survey showed that average royalty rates for deals with academia and government IP owners were either comparable to or – in the case of government – significantly lower than the high-tech industry average (Table 1).

Given the potential for success, it is helpful to tackle the process of licensing university and government innovations strategically and efficiently by following some best practices.

Trends in university/government licensing

More and more public and private universities in the United States are streamlining, simplifying and accelerating their technology licensing. Several now offer ready-to-sign, no-negotiation licensing agreements for certain technologies in their IP portfolio, including Stanford and the University of North Carolina. This past spring, Pennsylvania State University became the first university directly offering some of its intellectual property for auction to the highest bidders. Some universities are pooling their intellectual property into cross-institution portfolios to increase its value and facilitate access for technology scouts, such as the Tech Transfer Talent Network in Michigan. (Other trends for the future were featured in “A vision of the future for non-profit technology transfer”, IAM 64.)

These trends are not limited to the United States. Several UK universities are participating in Easy Access IP (www.easyaccessip.org.uk), which “offers companies the opportunity to license university IP free of charge, using quick and simple one-page agreements”. Further, some non-US universities and foundations are partnering with US institutions to bring guest researchers into the country to develop new innovation, for which the host institution may retain the intellectual property. The following partnerships are examples of gaining access to additional research funding and US markets:

  • in France, Unité Mixte Internationale partners with the French National Centre for Scientific Research and Georgia Tech Lorraine (www.umi2958.eu/gt-cnrs-umi-2958);
  • in Qatar, the Qatar Foundation partners with the Carnegie Mellon University, Virginia Commonwealth University, Texas A&M University and many more (www.qf.org.qa/enroll);
  • in the United States, Jacobs Institute partners with Cornell University and Technion – Israel Institute of Technology (http://tech.cornell.edu/experience/jacobs-institute/); and
  • in Portugal, the University Technology Enterprise Network partners with the University of Texas at Austin, Massachusetts Institute of Technology, Carnegie Mellon University and others (http://utenportugal.org/global-innovation-hub/).

Figure 1. Value and allocation of US university and government R&D

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*The US Department of Health and Human Services (HHS) includes the National Institutes of Health (NIH)

Source: Federal Research & Development Funding: FY2013, published by the Congressional Research Service, December 5 2013 (www.fas.org/sgp/crs/misc/R42410.pdf)

Source: American Association for the Advancement of Science, R&D Budget and Policy Programme

(www.aaas.org/page/rd-colleges-and-universities)

Even the US government is getting in on the act. In late 2011 President Obama issued a memorandum calling for all federal agencies with research facilities to accelerate the lab-to-market timeline. Since then, a wide range of technology-transfer efforts have emerged from government labs. These range from $500 ready-to-sign licences/options from Sandia National Laboratory (https://ip.sandia.gov/) to the QuickLaunch tool from NASA, which offers standard, no-negotiation licences (https://quicklaunch.ndc.nasa.gov/).

Where to find their technologies

Given that US universities and government labs are eager to move their innovations into the marketplace, the logical question for a corporate licensing officer is: what technologies are available that are a match for our R&D/product line? Or, more to the point, where are they?

As shown in Table 2, a wide range of online databases serve as IP portfolio portals. A key option that is relatively new but growing rapidly is the Global Technology Portal (GTP) offered by AUTM. Launched in February 2012 (http://gtp.autm.net), it showcases academic technologies available for licensing. It also features university start-ups that may be good targets for acquisition since they have been incubating those very early-stage innovations. Designed to help facilitate licence agreements and collaborative research agreements, GTP currently has over 20,000 technologies from more than 1,300 organisations.

The White House’s Office of Science and Technology Policy is planning to develop a government-wide patent database that expands/centralises current databases. Until then, searches must be done at the agency level, although several agencies have centralised portals, such as the National Institutes of Health, NASA and the Department of Energy. There is no fee for using these sites.

There are also several commercially run technology portals, which are listed in the figure. Nearly all of these are searchable for free, although some may require a registration fee in order to post data.

Searching strategically

Experience conducting thousands of searches reveals several best practices to follow when searching online IP portals – or indeed searching patent databases or other online resources for cutting-edge innovations to address an organisation’s technical challenges:

  • Choose keywords carefully – move beyond the industry vernacular, since few university and government researchers use those terms when summarising their innovations. Consider brainstorming or other group-oriented activities with technology-savvy analysts to focus on what feature or capability is needed rather than how the need will be solved.
  • Start broad, then get specific – begin with the general need, then narrow the focus (eg, search ‘battery’ first, then ‘lithium ion’). If the results are limited, broaden the search using synonyms and roots of words to generate more results. In several related areas that can address the need, scanning the first few hits may spark alternate solutions.
  • Try another source – no single database or type of resource will be the sole means for identifying relevant technology/R&D. Apply these best practices for searching in multiple databases and even in non-IP sources (eg, peer-reviewed journal articles or conference proceedings). Social media also might play a role (see sidebar).
  • Think orthogonally – orthogonal areas of R&D and technology development may offer an innovative solution that has not been previously considered. For example, the ‘pump’ device added to Reebok shoes in the late 1980s was based on medical intravenous bag technology. Andrew Hargadon’s book How Breakthroughs Happen offers many other examples.
  • Consider the building blocks – the solution being sought may not exist as an exact match to the required criteria, especially if it is a new innovation. Be open to the idea of evolving the technology, perhaps with the research organisation, to meet the specific need.

Figure 2. Patents issued to US universities and government agencies 2013

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Source: US Federal Government Patenting Report, Part B, Granted 01/01/1977 - 12/31/2013, US

Patent and Trademark Office (www.uspto.gov/web/offices/ac/ido/oeip/taf/us_gov.htm)

157522.jpg

Source: United States Patent and Trademark Office Patenting Statistics 2013 (infographic),

Acclaim IP, January 2014 (www.acclaimip.com/2013)

This type of search might not yield the perfect technology – in part because of university and government perspectives on and approaches to innovation, as discussed below – but it will still provide valuable information. First and foremost, it reveals the leading organisations with the strengths and/or capabilities relevant to the specific technical challenge, enabling direct contact via their technology transfer office. These organisations might, in fact, have a very relevant technology that simply has not yet gone through the internal screening process and been posted online. In addition, the researchers might be available for collaborative/sponsored R&D to develop the needed technology, which is another growing trend among educational institutions. (Such collaborations are beyond the scope of this article, although Table 3 provides a recommended reading list.)

LinkedIn and other social media tools

Social media can serve as a valuable tool for identifying relevant cutting-edge technology, as exemplified in the article “Social media assists in new licensing agreement for a Temple technology” posted by Temple University in September 2013 (http://news.temple.edu/news/2013-09-27/social-media-assists-new-licensing-agreement-temple-technology). According to the news story, the university’s technology commercialisation office posted a researcher’s nanotechnology, which could be used in hydro-fracking, on the LinkedIn platform. A start-up company in Texas saw the posting, which led directly to a licensing deal.

With its focus on professional (rather than social) networking, LinkedIn has distinguished itself as the ideal site for this type of research. To leverage LinkedIn in technology scouting/sourcing:

  • join industry/market-specific groups to watch for postings of relevant innovations, questions and licensing opportunities (see Figure 4);
  • join technical groups relevant to the technical need to be addressed;
  • follow universities or government labs with relevant strengths/capabilities;
  • consider posting a request for solutions to the technical need; and
  • search for people and organisations that match the keywords and connect with them to ask whether they know of any solutions.

Other social media platforms, such as Twitter and blog posts, can be used as well. More best practices on using social media in technology transfer are available online (www.fuentek.com/insights-online-presence.php).

Oil industry struggles could be solved by NASA

The following is an excerpt from a post which appeared on the Fuentek blog (www.fuentek.com/blog) on June 10 2010

As we continue to hear about the deteriorating conditions in the Gulf of Mexico and await word as to the exact cause of the BP oil spill, I am reminded of the many innovations emerging from NASA that can help the oil industry – indeed, almost any industry – tackle their most complex technical challenges.

As far back as 1998, NASA was testing with the use of human hair to soak up oil spills, as reported in Technology Innovation magazine.

We at Fuentek are currently helping NASA’s technology transfer program make several pieces of intellectual property available for licensing – innovations that may benefit the oil industry:

  • NASA’s integral battery power limiting circuit technology is designed to limit the power output from a battery without compromising battery lifetime. This could be useful for offshore oil rigs and pipelines. (We blogged about this back in January.)
  • NASA’s ShuttleScan 3-D technology could be used to inspect oil pipelines for corrosion-related defects. (We blogged about this back in December.)
  • NASA has an advanced magnetorestrictive regulator and valve that could be used in oil-flow control machinery. (We blogged about this technology just last month.)
  • NASA is looking for partners to contribute to the development of a new surface acoustic wave (SAW) sensor array technology for obtaining multiple, real-time measurements under extreme environmental conditions. This technology could be used by oil refineries.

NASA’s Innovative Partnerships Program is tasked with making the agency’s technologies available to industry, universities, and other government labs for the benefit of the nation. NASA technology commercialisation successes are chronicled in Spinoff magazine.

Source: www.fuentek.com/blog/2010/06/oil-industry-struggles-could-be-solved/

Prepare to engage: know thy enemy

After a technology or researcher of interest has been found, the key to successful licensing with universities or government labs is to appreciate their perspectives, understand their processes and know their limitations. These organisations are very different from commercial enterprises, which mainly focus on the bottom line and strive to increase revenue and profits as well as to grow/expand markets. Universities (especially publicly funded institutions) and government labs operate at the other end of the spectrum.

In the case of universities (or other not-for-profit research organisations), their focus is on developing new and unique concepts and making cutting-edge discoveries. Their innovations are very early stage and have not had much implementation or even yet identified a product. Typically, they are working at the fundamental research stage and are rarely performing applied research. Historically, they have tended to look to start-ups or licences to established companies to continue development of their technologies. In recent years, their technology transfer offices and related offices/departments have increased their focus on gaining sponsored research from corporate entities, particularly as US federal funding has dramatically fallen in quantity and reliability (as a result of sequestration and government shutdown), which potentially could lead to more applied research.

The innovations emerging from government agencies tend to be more applied than what universities generate because they are fulfilling a specific need within the agency or within a mission. However, these technologies are not always aligned with market need, so they too may require additional development before they are ready to hit the shelves.

Both universities and government labs tend to be slow and cautious when it comes to their licensing activity. In part, this is a cultural difference, because they rarely, if ever, experience the first-to-market urgency that drives the corporate world. Sometimes the process is slowed down by rules and regulations. For example, exclusive licences of government-owned patents must be announced in The Federal Register 60 days before the agreement can be executed. Government efforts can be further hampered when politics and funding change. The outcomes of an election can shift the goals and priorities not only of research, but also of technology transfer.

A major source of deceleration for universities and government labs is tied to their having stakeholders rather than shareholders. Governments and universities have to be able to justify every licensing deal to their stakeholders – including in many cases taxpayers. They will be judged on whether they have done the right thing. For them, licensing is often a Catch-22, where they risk accusations of being too greedy with their terms while simultaneously being criticised for having given away valuable intellectual property. However, one advantage of their non-shareholder perspective is that the value a licensee brings to the deal can be more than simply financial. Universities and government labs value long-term relationships with companies or sponsored/collaborative research opportunities. Potential licensees would be well served to help universities/governments show the deal’s multifaceted value to their stakeholders as part of the negotiation process and partnering relationship.

Securing researcher-inventor buy-in

Because innovations emerging from universities and, to a lesser extent, government labs are so early stage, success with the licensed technology often requires (or at least benefits from) involvement from researchers. Yet commercialisation is not typically a priority for researchers.

With that in mind, here are several carrots a company might offer as part of a licensing deal with a research organisation:

  • Sponsored research – researchers will usually view funding for research as being of greater value than royalty revenue; therefore, sponsored research can be used to offset royalty payments. The research could lead to improvements for the product using the licensed technology or identification of a new solution or subsequent product, leading to new revenue generation for the company and content for publications for the researcher.
  • Equipment – the company may have equipment available for the researcher to use or to donate to the research organisation. This is helpful since funding to buy equipment is difficult to secure because research contracts often restrict capital purchases. For the company, donating equipment or access to it can provide an in-kind offset of royalty payments.
  • Press coverage – the research organisation likely will want to publicise the licensing success and its relationship with the company. The cost to the company of generating publicity is minimal, yet it can help stakeholders – that is, the administration, researchers and even the broader community – to focus on other value components of the deal (eg, that it helped to solve an environmental problem or was used in disaster relief) beyond royalty payments. For the company, the publicity surrounding its association with the research organisation might boost product sales.

Table 1. Average and median royalty rates by organisation type

Number of deals

Mean

Median

Academic

54

4.74%

5.00%

Aerospace/transportation

26

11.73%

7.25%

US federal labs

20

2.82%

1.50%

Information technology

9

4.68%

4.00%

All others

10

5%

5%

Source: Global BioPharmaceutical Royalty Rates & Deal Terms Survey, LES (USA & Canada), December 2012

(www.lesusacanada.org/newsroom/press-releases/2012rr)

Establishing the agreement: agree on business terms first

As noted earlier, many academic and government organisations now offer ready-to-sign licences that eliminate the need for negotiations. If those terms are reasonably acceptable, stick with them and do not attempt to tweak them, because doing so is equivalent to starting from scratch. However, if the value of the reduced time to signature is less than the value of revised/unique terms (or if a ready-to-sign option is not available), then negotiations are required and be prepared for months – not days – to get to signature.

For companies embarking on negotiations with a university or government lab, a two-phase approach is a highly effective method for recognising whether a potential deal is likely to succeed. The first phase focuses on the basic business terms of the agreement, while the more extensive commercialisation details are prepared in the second phase.

During the first phase, provide just the key details regarding the offer:

  • the invention(s) of interest;
  • company contact information;
  • the type of licence being applied for (eg, exclusive or field of use); and
  • the initial offer for royalty-rate schedules, upfront fees, yearly minimums and milestones.

Table 3. Recommended reading on R&D collaborations and sponsored research agreements with US universities and government labs

“Collaborating on IP: Six Things Every CEO Should Know about University Commercialization”

http://texasceomagazine.com/departments/collaborating-on-ip

“Evolving Partnerships: Academia, Pharma, and Venture Groups Adapt to Challenging Times”

www.sciencedirect.com/science/article/pii/S1934590912006546

“Free IP Circumvents the Nickel-and-Dime’ing in SRAs”

www.fuentek.com/blog/2012/02/free-ip-in-sras/

“Bringing Universities and Corporations to SRA Negotiations with a Letter of Intent”

www.fuentek.com/blog/2011/07/negotiating-sras/

“Forming R&D Partnerships: 8 Keys to Success”

www.fuentek.com/blog/2011/05/8-keys-to-forming-randd-partnerships

Focusing on the basic business terms of the offer early on enables the technology transfer office to recognise the potential value of the licence agreement quickly and whether the basic terms are in line with their interests. Then, negotiations can lead to agreed-upon business terms. However, if an agreement cannot be reached on the licence’s value, the company has not invested resources in preparing the next phase’s information – the commercialisation plan – and the decision not to continue negotiations occurs much faster.

Figure 4. Sample licensing opportunity post via social media

Fuentek_fig4.tif

Most universities or government labs will ask prospective licensees to submit a commercialisation plan with a detailed description of their expectations for the invention. This helps the organisation to justify the deal to its stakeholders. The plan often includes anticipated investment capital, information on resources available to fulfil the plan, a financial or annual report, an income statement related to the products or services that will utilise the licensed technology and a timeline.

Feel free to get creative

In any deal negotiations, success depends on both parties seeing the agreement as a win. When negotiating with universities and government labs, experience has shown that a creative approach can be exceptionally helpful in finding the win-win agreement.

For example, there was a technology that was somewhat unknown in the marketplace and therefore had a price point that was uncertain and would vary significantly over time and between buyers. A standard royalty structure with a fixed rate would likely have resulted in an unfair deal for both parties at various times. At lower price points, the royalty would cut dramatically into margins, making the deal unprofitable for the licensee. At higher price points, the royalty would yield such high margins for the licensee that it would undervalue the licensor’s contribution and merited revenue. The challenge was to develop a royalty structure that took price-point uncertainties into account, was fair to both parties and was easy to implement and track.

The solution was a gated matrix of royalty rates based on the average sales price in a given quarter. Variability in the sales price (and therefore margins) was reflected in a variable royalty rate. The higher the average sales price, the higher the royalty rate. Use of the average sales price eliminated the need for complex tracking and reporting. The licensee simply divided total sales for that product for that time period by the number of units sold. Both parties felt that the arrangement was fair and it was easy to implement.

Tips for engaging with technology transfer offices

Before you pick up the phone:

  • Be prepared – examine the office’s website and review the information it provides regarding its licensing process. Examples of these websites include NASA’s Glenn Research Centre (https://technology.grc.nasa.gov/licensing.shtm) and Georgia Tech (http://industry.gatech.edu/industry/license-tech/).
  • Be aware – become familiar with the IP portfolio and research strengths to identify other relevant technologies or capabilities of interest. Packaging or bundling multiple items into a single deal will likely be more valuable to the entity and an easier sell to stakeholders.

As you begin to connect:

  • Inquire – ask questions that will reveal additional opportunities to build a long-term relationship:
  • What are some of the key capabilities or technologies that you feel overlap with this need?
  • What funding is expected for researching this area in the future?
  • Have you ever worked with an organisation such as ours? Have you participated in other kinds of collaborations or joint ventures?
  • Are there funding opportunities that we can apply for jointly to further the technology’s development?
  • Do you have any papers or other materials on your organisation related to this need area?
  • What does my organisation offer that may be of special interest to research organisation overall or to a specific researcher?
  • Inspire – think creatively about the possibilities for engagement. Do not get too narrow too quickly.

As you head into negotiations:

  • Be patient – in addition to cultural and regulatory slowdowns, some technology transfer offices have very limited resources. Be clear about the timing requirements for closing a deal.
  • Be realistic – remember that most technologies coming out of academic and government labs will be early stage and will likely need further investment.

Take the long-term view

Remember that universities and government labs often value research activities more than licensing revenue. Therefore, look for opportunities to include the potential for long-term relationship possibilities in the agreement.

For example, a large commercial firm looking for a near-term solution to a technical challenge identified an early-stage technology that needed additional testing and development. Before a licensing agreement could be signed, a collaboration agreement was needed to enable a quick-turnaround technology demonstration effort.

As the parties began to negotiate that agreement, the company took a step back and considered how the technology might fit into its larger R&D strategy. The organisation’s R&D strengths complemented the company’s and therefore warranted a larger collaboration plan. The company is now on a path to new game-changing products that will be used to secure new business as well as poised for co-developed intellectual property. The organisation viewed this as a much bigger win than just the initial licence.

 In any deal negotiations, success depends on both parties seeing the agreement as a win 

Investigate before investing

New product development or process improvements sometimes require R&D investments. However, in some cases, existing sources of technical solutions can be found in university or government labs. These technologies present an opportunity to buy/leverage a solution more quickly and more cost efficiently than can be achieved through internal R&D or capability building. These organisations’ technology transfer offices provide an open and welcoming doorway into those IP portfolios.

Action plan

Before embarking on the process outlined in this article for pursuing technology transfer from universities or government labs, one must understand what technology is needed:

  • Solicit technical needs/challenges from the company’s division/product line managers, preferably before making investments to build up the capability internally.
  • Compare the identified needs against the internal portfolio to ensure that each need has not already been solved in another division – an essential step for large companies, but one that is often skipped.
  • Validate/confirm that each need to be addressed fits into the company’s overall strategy and that a sufficient market exists.
  • Write a brief summary of the specific technical need(s) to be addressed, including a list of associated requirements, such as performance characteristics, functionality and other specifications.
  • Prepare an overview of the company’s other areas of R&D focus to facilitate discussions with relevant universities and government labs.

 

Laura A Schoppe is founder and president of Fuentek, LLC

[email protected]

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