Patent reform could do terrible damage to our many successful programmes, says Columbia's tech transfer chief

Orin Herskowitz is head of technology transfer at Columbia University, one of the most respected and successful university licensing operations in the United States. His role not only means that he is plugged into the steady stream of new technology coming out of the New York institution, but also gives him a detailed insight into the burgeoning start-up community in the city and further beyond. IAM caught up with Herskowitz recently to get his views on the state of tech transfer, negotiating the ominous 'valley of death' and the need for balance in any new piece of patent reform legislation passed by the US Congress.

Can you give us an overview of tech transfer at Columbia and your various roles at the university? 

Each year, our office - Columbia Technology Ventures (CTV) - manages more than 350 invention disclosures emerging from Columbia’s research labs, leading to over 100 licences to industry and 15 new start-ups. These licences generate millions of dollars in annual IP revenue - historically among the highest across all US universities - which then goes back to the inventors and the university’s research programmes, funding even more breakthrough technologies. We currently manage 1,200 patent assets available for licensing, across fields such as bio, software and IT, cleantech, medical devices, imaging and new materials. Technically, my titles are vice president for intellectual property and tech transfer, executive director of CTV and adjunct professor in engineering and business, so along with directing the tech transfer mission at the university, I also teach, am a principal investigator on some translationally focused grants and have served as a board member or adviser to a number of innovation and entrepreneurship-focused initiatives in NYC.

New York has a burgeoning start-up community. How closely are you plugged into that group and how do you forge ties with it?

Actually, I first found my way to tech transfer via a case I led for Mayor Bloomberg’s office back when I was at the Boston Consulting Group, looking at ways NYC could become a stronger biotech cluster. As a lifelong New Yorker, married to a New Yorker, raising two New York kids, I am deeply encouraged by the progress this city has made.

At Columbia, we’ve always had a particular focus on start-up companies, but in my eight years at CTV we’ve gone from roughly six to more than 18 IP-backed startups each year. Many of Columbia’s 180 total tech transfer startups have ended up getting VC funding, going through an IPO, or getting acquired, which has been exciting to see. 

These days, we and many of our tech transfer peers are increasingly seeing start-ups become a critical way for exciting early-stage technologies to cross the so-called 'valley of death'. At a fundamental level, this valley exists where federal funding for basic research ends following the 'eureka' moment, but existing industry is reluctant to invest until the technology and the market opportunity have been validated. This is especially relevant for the tech industry, where for a variety of reasons the largest firms have shied away from pure in-licensing of patents and software, and instead focus on acquiring start-ups a few years down the road. However, we are increasingly seeing the life sciences industry also show a preference for start-up acquisition post-valley, especially for the riskiest but highest-reward opportunities. As evidence for this trend, look at the number of biopharma companies that have created in-house venture groups or become strategic investors in established venture capital funds, either to get an early look at deal flow or even with a 'build to buy' objective.

Accordingly, I spend a lot of time trying to increase the number and quality of start-ups emerging from the university. For instance, our office helps run two industry-specific technology accelerators (the Columbia Coulter Translational Partnership for medical devices; and the PowerBridgeNY clean energy proof-of-concept centre, in partnership with five other research institutes, funded by New York state). We also partnered with the NYC Mayor’s Office and New York University to found and run the New York City Media Lab, connecting NYC’s best-in-class media industry with local start-ups and university researchers. The Intellectual Property for Entrepreneurs class that I co-teach with Jeff Sears, Columbia’s chief patent counsel, features guest lectures from many of IAM’s frequent contributors and last year the class drew more than 150 students. Clearly, IP is a topic on the minds of many!

To highlight and analyse the role that start-ups play in the growth and strength of cities in general, on 9th June we are co-hosting an event with the Department of Commerce and the USPTO. I’ll be moderating a panel discussion including USPTO director Michelle Lee and Lita Nelsen, my equivalent from MIT, on the role of IP in early-stage companies. Secretary of Commerce Penny Pritzker will give the keynote, and we will also hear from the presidents of Columbia and Rockefeller universities, many successful serial entrepreneurs and venture capitalists, and federal, state and city government officials who focus on start-ups and economic development. 

Looking at Columbia’s tech transfer and what you know of other universities, how would you rate the health of the tech transfer sector?

When I joined the tech transfer profession nearly a decade ago, as an English major with an MBA and neither legal nor technology credentials, I didn’t really have any context for, or clear expectations about, what I would find. As I’ve learned the field, however, I have been extremely impressed by what I’ve seen at Columbia and within many of our peer institutions across the country. As universities increasingly realise the critical role tech transfer plays in getting life-saving and life-improving inventions from the lab to the market, we have seen an influx of experienced executives from industry, from venture capital, and from start-ups joining the profession. My sense is that for many - as it is for me - the chance to work in a 'double bottom line' environment, especially with the chance to make a real impact on society, is very exciting, more than compensating for the 'upside' we may be giving up by leaving the private sector. 

In addition, and unlike what I experienced in industry, research institutions are extraordinarily collaborative about trying to increase the efficiency and effectiveness of tech transfer across the country and around the world. We frequently work with our colleagues from MIT, Stanford, the University of California, the University of Michigan and many others to brainstorm new initiatives that would help us increase speed and transparency, in order to get more of these exciting university inventions to market even faster. Some of Columbia’s best programmes have emerged from these benchmarking activities.

So, in a nutshell: I think tech transfer is in general strong and hopefully growing stronger. However, some of the challenges impacting IP licensing nationally are also impacting university tech licensing, so the years ahead may look quite different. 

Give us a sense of how you approach the licensing out of new Columbia discoveries? Does it vary by sector? What are some the challenges it throws up?

Universities have many of the same challenges that our industry licensing colleagues face, but also have some that are unique. For instance, at Columbia, while our inventions have all emerged from the roughly $800 million in research funding across the university, they are usually extremely early stage at the point when they are disclosed to our office. However, unlike industry, tech transfer offices don’t have the luxury of keeping trade secrets, letting the research continue, and then making patent decisions down the line with more data. Because universities are rightfully focused primarily on the creation and dissemination of knowledge, researchers are incentivised to publish their research as early and often as they can. Accordingly, we, like many of our peers, will file provisional patents on over two thirds of the new inventions we receive, sometimes on only a few hours’ notice before the inventor presents the idea at a conference!

The early-stage nature of the research also drives our approach to licensing. In our analysis, we’ve found that new deals come from a wide variety of sources. In many industries, deal leads are often triggered by high-profile scientific presentations, by existing relationships with the faculty researchers, by presentations at conferences and by the relationships our office maintains with the technology scouts at the Fortune 500 companies. We also use outbound emails and calls to mid-sized tech firms, leverage our relationships with early-stage venture investors and rely on directly accelerating those technologies via some of the proof-of-concept approaches I mentioned earlier.

Beyond that, I think you will find that most universities can be quite flexible in their approach to structuring the deal itself. Most universities, including Columbia, tend to focus more on success-based terms, wherein our revenue incentives are aligned with those of the licensee. But we find that different companies have different expectations and requirements around deal structure, and it is exceptionally rare that a common ground cannot be found.

Many people would argue that recent court decisions in patent cases and proposed legislative reform have created a climate of uncertainty in the patent market – would you agree?

Indeed, 'uncertainty' is an understatement. As our colleagues in BIO, AAU, APLU, AUTM, and NVCA have all pointed out, the patent reform initiatives in Congress, and in particular the matters of fee shifting and joinder, could do terrible damage to the ability of universities, research hospitals, entrepreneurs and venture investors to bring early-stage innovations to market for the betterment of society. And even beyond patent reform, the unintended flaws with the inter partes review process, and the ensuing high kill rates even for strong issued patents, cannot help but create real concerns for all inventors and patent-based operating companies alike.  As Mark Lemley said last year on your blog, there is clearly a need for balance as our country sorts out the best approach for intellectual property in the future. We have both faith and sincere hope that our political leadership in Washington will find that balance!

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