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Technology Transfer

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What Is Technology Transfer?

Technology transfer is the process whereby inventions, discoveries, and other technologies developed at academic and research institutions such as Mayo Foundation are made available to the public by working with industry. Specifically, a technology transfer officer promotes the commercialization of an institution's intellectual property by transferring it into the hands of another organization-typically a company-that can do the product and commercial development. As the federal government funding of research has become more and more difficult to obtain, more academic institutions are looking to their technology transfer groups to provide alternative access to research dollars and income.

It is important to keep in mind that technology transfer is a process and not a single event. This process consists of many steps, starting with the disclosure of the invention or technology to the office of technology transfer. You can't develop a technology when you don't know that it exists. The step of disclosure is the one that is wholly dependent upon the investigator, although the technology transfer officer can facilitate the disclosure process by asking the right questions and by having strong interactions with the scientific staff.

Once the technology is disclosed to the office, the office must go through the processes of evaluating the technology and deciding whether or not it represents a patentable invention, making contacts with industry to evaluate company interest in the technology, establishing conditions of confidential disclosure with the companies that want to learn more about the technology, and with luck, finally negotiating a contract or license. This deal can range from setting up a collaborative research agreement between the academic scientist and a company, all the way through to a royalty-bearing license for a company to acquire all rights to an invention that it hopes to convert into a product. This process can take anywhere from several months to a couple of years.



The office of technology transfer at Mayo currently consists of six senior licensing professionals, each of whom has the authority to bind the institution in a contract negotiation. The aggregate professional degrees within this group are three Ph.D.'s, one J.D., two M.B.A.'s, and one Masters. Our group is supported by two licensing assistants, who assist the senior personnel in all aspects of the technology transfer process.

Mayo's office of technology transfer is a bit different from offices found in most universities, because it is run more as a business than as a service department. Our focus is on the financial bottom line, and we evaluate technologies based on their likelihood to return revenue to Mayo Foundation, not just based on their scientific excellence.

One policy that is notably different between our office and the standard university technology transfer office is that we do not patent every technology that is disclosed to us. Rather, we evaluate whether a patent is going to increase significantly the commercial value of the technology and we attempt to patent only in those cases. Part of the reason for this discrimination is that the cost to pursue patent protection can be very high, especially if you include the cost of foreign patent filings.

Determining the commercial value of a patent, which will be issued several years in the future with an unknown set of claims, is a bit like looking into a crystal ball. However, our office has built a successful reputation, bringing in slightly less than $12 million in gross revenue in fiscal year 1996.

How Did I Get There?

The training phase in technology transfer is likely to differ, depending on where you start your training. Because each of the technology transfer officers in our office at Mayo is really a senior position, there were no assistant steps that I could work my way through to move from junior to senior.

Rather, in my case, I was plopped down in the midst of an operating office and I was expected to begin making my contribution right away. In the first 6 months, I took a week-long review course for the patent bar exam to learn the basics of patent law and a 3-day licensing course through the American Management Association to give me an overview of the licensing process.

In truth, most of the learning process is an apprenticeship, in which you work with people who have experience in this area, learning how to ask the right questions and make the right decisions. Other groups that offer specific training in the area of technology transfer are the Association of University Technology Managers (AUTM) and the Licensing Executives Society (LES). In addition, local colleges offer a variety of business courses. You may also want to view "Techno-L," an online news group of university and industry people involved in technology transfer. This group has ongoing discussions about technology transfer topics, and it is a source of advice from colleagues around the country and throughout the world. It also provides information regarding changes in PTO (Patent and Trademark Office) policy and job openings.

Depending on your degree of worldliness when you first enter the business world, it is probably realistic to expect to spend at least 2 years developing your skills before you are comfortable in your new job, and another 3 to 5 years before you start completing multimillion dollar deals.

The promotion ladder, like the training process, will differ depending on your location. Some technology transfer offices may have a sequence of positions from assistant to associate to senior licensing person. The director of the section heads up the group of licensing professionals, but usually there is only one director per office.

The most common place to find a technology transfer office is within the university. These activities multiplied exponentially after the passage in 1980 of the Bayh-Dole Act, which contains provisions for the return of royalty income to any scientist whose federally funded research is commercialized. Prior to this Act, inventions and discoveries from federally funded research were required to be commercialized through the federal government-a process that was less than optimally effective.

With the passage of the Bayh-Dole Act, the field of technology transfer was born, as commercialization responsibility was shifted to the individual universities. Most institutions have technology transfer offices that were formed in the mid to late 1980s, and this continues to be an expanding field. An individual beginning in a technology transfer office at a university can anticipate a starting salary of between $40,000 and $60,000.

Industry also has technology transfer offices that reside within the business development department, in-license technology from either universities or other companies and out-license the technology that is being developed by the company itself. The technology transfer positions in industry tend to have a higher salary scale than those found within the university. In many cases, companies require that you have industry experience.

The Right Decision?

I have frequently been asked whether I have regretted the move out of the ivory tower into business. The answer has always been an unqualified "No!" Granted, I left the university at the peak of my career there, rather than at the beginning. Surely, the professional self-assurance that I had at that time aided me in the transition to an entirely new world.

Nevertheless, this new life has been challenging. But with the challenge has come very real excitement and reward, most particularly related to learning and expanding one's horizons. I have needed to become conversant with many aspects of business and patent law, financial analysis, and all sorts of science that was completely new to me. I was trained in and taught neuroscience, but since I work with inventors in all aspects of biotechnology, I have learned bits and pieces of entirely different fields, including immunology, bacteriology, parisito-logy and molecular genetics.

It is a reward to work with other scientists who are experts in their fields and who are delighted to share that expertise. There are days when frustration and stress make me ask what I am doing in this fast-moving and dynamic job. But the satisfaction of closing a deal and moving an invention into the public sector always provides the answer.
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