Managing University Intellectual Property in the Public Interest (2011) / Chapter Skim
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3 Effectiveness and Accountability of University Technology Transfer Activities
3 Effectiveness and Accountability of University Technology Transfer Activities
Pages 43-58
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From page 43... ...
encouraging maximum participation of small business firms in federally supported research and development efforts; 3. promoting collaboration between commercial concerns and nonprofit organizations, including universities; 4.
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From page 44... ...
There has been somewhat less systematic research on the relative effectiveness of different institutional practices and arrangements with private research sponsors and even less work comparing alternative systems of IP ownership and management. The committee's own inquiries, through testimony in public meetings and a two-day workshop held on November 20-21, 2008, provided additional, although limited, sources of evidence, as did the survey of technology transfer offices conducted by Feldman and Bercovitz,92 for which this study provided partial support.
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From page 45... ...
It would be most useful to know the extent to which such disparities among universities reflect differences in the organizational structure, staffing, and funding sources of technology transfer offices and their relations with research faculty, centers of entrepreneurial education, and other controllable variables as distinct from structural factors that are hard or impossible to change (e.g., scale and specialization of research portfolios, public versus private status, presence of certain academic units, historical reputations, mission or niche, and geographical proximity to potential investors and industrial partners)
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From page 46... ...
The Scottish Higher Education Funding Council (or Scottish Funding Council) pioneered this effort in 2000 for the simple reason that it set up a separate funding stream to support university technology transfer activities and needed an appropriate framework to evaluate those expenditures.
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From page 47... ...
Only a fraction of faculty invention disclosures lend themselves to the formation of a stand-alone company. The head of a major university business school-based innovation center estimated that a robust university research enterprise including a medical complex and a highly ranked engineering school generates no more than six viable stand-alone business prospects a year.
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From page 48... ...
In widely publicized congressional testimony in 2007, one prominent information technology executive complained that aggressive university patenting, overvaluing of intellectual assets, and hence unrealistic licensing terms impeded both product development and universityindustry collaboration, encouraging companies to find other research partners, including offshore.100 Similar complaints have been repeated periodically, with some firms admitting that they prefer foreign to domestic university partnerships because academic institutions abroad are less insistent upon IP ownership and agreements are more quickly negotiated.101 A study by Thursby and Thursby of executives responsible for corporate R&D location decisions provided some 99 D Di Gregario and S
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From page 49... ...
Box 3A University-Industry Dialogue A 2006 joint project between the National Council of University Research Administrators and the Industrial Research Institute, facilitated by the Government-University-Industry Research Roundtable at NAS, resulted in Guiding Principles for University-Industry Endeavors. The authors recommended that universities avoid licensing future inventions, noting that licensing is often the most contentious part of negotiations.
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From page 50... ...
If the inventor aims to start a new company, his or her incentives are more closely aligned with the licensee, against the technology transfer office. These observations led Kenney and Patton to conclude that technology transfer offices tend to become revenue maximizers, neglecting some inventions with little profit potential altogether and ignoring some commercialization avenues for the inventions they do care about.
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From page 51... ...
2003. Assessing the impact of organizational practices on the productivity of university technology transfer offices: an exploratory study.
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From page 52... ...
NIH GUIDANCE REGARDING GOVERNMENT-SPONSORED RESEARCH RESULTS Of the federal agencies covered by the Bayh-Dole legislation, NIH has issued the most guidance laying out its interpretation of its role as a research sponsor in promoting transfer of federally funded discoveries to applications.
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From page 53... ...
The guidelines cite the Bayh-Dole objective of maximizing the use and wide availability of publicly supported inventions, especially research tools for which scientific research laboratories are the primary consumers. With regard to licensing terms, the guidelines support royalty-free nonexclusive licensing to all nonprofit research entities.
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From page 54... ...
This authority has been used by NIH only on rare occasions, such as the NIH Mammalian Gene Collection initiative and disease-specific knockout mice, due in part to the lengthy approval process within many agencies. In a few instances NIH has attempted informally to persuade university patent holders to change licensing practices or terms (e.g., with regard to the University of Wisconsin stem cell patents)
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From page 55... ...
A 2003 GAO report summarized the most recent data at the time: Few of the biomedical products that federal agencies most commonly buy appear to incorporate federally funded inventions. In 2001 the government had licensing rights in only 6 brand name drugs associated with the top 100 pharmaceuticals that VA procured and in 4 brand name drugs associated with the top 100 pharmaceuticals that DOD dispensed.
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From page 56... ...
iEdison facilitates and enables grantee and contractor organizations to directly input invention data as one means of fulfilling the reporting requirement. Since 1997, iEdison participation has grown to more than 1,300 registered grantee or contractor organizations supported by any of more than 29 covered federal agency offices.120 Use of iEdison, however, is voluntary for inventions and patents developed under federal funding agreements.
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From page 57... ...
The goal of technology transfer offices must be to advance the university's success in learning, discovery, and societal engagement and to facilitate the transfer of publicly funded innovations into benefits for society. In evaluating their individual technology transfer offices, universities must measure themselves against their own mission and yet recognize that they are part of a larger education and research enterprise.
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