DRAFT At the 2014 LES annual meeting the workshop on “How to

At the 2014 LES annual meeting the workshop on “How to Start-Up or Re-Start Your
Technology Transfer Office” was an introduction to the elements of starting a new office or repositioning an existing office in light of some of the trends in technology transfer. Presenters
included Dr. Marie Talnack as moderator along with Mark Bloom, IUGI Sector Chair, and
Deborah Lickness, Manager, IP Market Transactions, John Deere. Each of the panelists
presented a different view of the mission of a technology transfer office from the perspective of a
university, a corporation, and a private, non-profit research laboratory. Viewed from these
different lenses, the mission, responsibilities, and activities of a technology transfer office vary
depending upon the type of organization the technology transfer office (TTO) serves.
Dr. Talnack presented an overview of three different eras of Technology Transfer Offices:
Compliance, Metrics, and Economic Development. The first era, Compliance, spans from the
passage of the Bayh-Dole Act for universities and Stevenson-Wydler for federal research
laboratories until the early 1990’s. The second era, the Era of Licensing Metrics, begins in the
early 1990’s until a couple of years ago. With the recession, universities have been called upon
to assist their regions in stimulating entrepreneurship, innovation, and economic development: a
new Era of Research, Innovation, and Economic Development. While technology transfer offices
have always participated in all of these activities, it is the shift in emphasis upon compliance,
metrics, and economic development that marks each era.
The Era of Compliance: With the passage of federal legislation universities and national
laboratories established technology management capabilities to comply with their participation in
federal contracts, grants and research awards. But this legislation was also designed to stimulate
the economy at a time when the filing of U.S. patents and research programs were at an all-time
low. Technology transfer offices represented both a responsibility to manage publically-funded
research as well as an opportunity. This was highlighted by Mark Bloom in his presentation as
one of a list of Dynamic Tension Points for TTOs at Non-Profit Research labs. He discussed the
reliance on the Bayh-Dole Act vs. fear of the legislation.
Upon the passage of the legislation there was much discussion about “how” to do what had been
mandated. The legislation was broadly written and while several large universities had already
established programs such as industry-sponsored research, there was still a large gap in our
knowledge of how to work effectively with industry and out-license technology.
With this annual meeting, it is important to point out that the Licensing Executives Society’s
existence for 50 years precedes the passage of federal technology transfer legislation. LES took
on a key role in education, support, and sharing of best practices in this early stage of the
profession of technology transfer officers. It continues in that role as the premier organization for
those in technology transfer and licensing at universities, federal research laboratories and
industry. Corporate TTO’s were learning the same lessons-alongside public institutions at LES.
Deborah Lickness discussed from the corporate point of view:
-Why would a company think of starting an IP Licensing Department?
-What should be considered by an operating company in starting an IP licensing department?
-How would such a department be staffed and what would be their responsibilities?
Technology Transfer offices were established, best practices institutionalized into university and
federal laboratory intellectual property policy, ways of conducting business standardized, and
professionals with diverse backgrounds in science, law, and management trained in the practice
of licensing. Thus, we entered into the era of metrics.
In the Era of Licensing Metrics technology transfer offices were tasked with identifying
‘licensable’ technologies and finding the highest bidder for that asset. Their metrics were simple
and straightforward: royalties reported to University Administration to justify the cost of their
office operations and offset the cost of research. Lickness shared the metrics for a corporate IP
licensing department. Not surprisingly, the main metrics center around licensing revenues as well
and a discussion ensued about TTOs covering their operating costs. Bloom discussed this Profit
Center vs. Cost Center Model for TTO’s as another Dynamic Tension Point. TTO’s entered into
reporting as compliance but also in large part to manage expectations about their efficiency:
licenses entered into, completed, annual royalties generated by each institution and ranked by the
largest royalty-generating institutions.
With licensing royalties institutions found ways to support the construction and maintenance of
laboratories, equipment, faculty salaries, graduate students, and industrial parks or accelerators.
This began the era of using royalties to not only offset the cost of operating a technology transfer
office but using royalties to support research programs and build critical infrastructure.
However, the rankings of the technology transfer offices generating the most revenues from
licensing showed a great disparity between the top tier research universities and everyone else.
Bloom pointed out that another tension is that financial success of TTO’s is driven in equal
measure by the skill of the TTO staff and by luck –what he referred to as “random faculty input”.
Thus, it is critical that your office manage expectations of stakeholders and understand how long
it will take to begin to generate licensing deals.
We have recently entered into a new Era of Research, Innovation, and Economic Development.
A Grand Challenge as again we are being asked to “do more with less” (Bloom). This new
emphasis for universities to participate in regional public-private economic development
partnerships results in large part to federal grant opportunities encouraging regional partnerships
and innovation clusters. An example provided by the Small Business Administration is the
following: “Successful proposals will include partnerships with and between industry, academia,
economic development organizations, entrepreneurial education programs, and training
initiatives and will reflect an industry-specific focus and collaboration.” But the question
remains, what role does the technology transfer office play in these regional economic
development initiatives?
This workshop introduced a much broader model of the technology transfer office in terms of
mission and long-term vision within its parent organization. Today’s Technology Transfer Office
is also being tasked with how they can contribute to local economic development. Universities
are innovation hubs and corporations are local citizens in regional economic development.
This workshop offered information and examples to assist in either setting up a new Technology
Transfer Office in this current environment or “Re-Boot” an existing office to transition services,
metrics, internal capabilities and staffing to meet the needs of this newest era.
Federal agencies are interested in partnerships between key institutions in a region. Partnerships
are easier said than done—there are among the players different cultures, agendas, missions, etc.
Where do you start? One place is the collaboration on new research which means the university
technology transfer office meeting with a corporate technology transfer office about newly
emerging technologies and how the “next big thing” (Bloom) can stimulate the local economy.
Discussed in the workshop from the point of view of universities, non-profit research labs and
corporate TTO’s was that each partner needs to evaluate participation in these new regional
economic development partnerships based upon the following:
-Roles/Expectations of the Partners
-ROI from Different Partner’s Perspectives
-Benefits to Each Partner
-Deliverables from Each Partner
From the various partner’s perspective, there are key differences in motivations, resources,
acceptance of risk, time commitment, and end goals for the partnership. However, all of the
partners could agree that such initiatives make sense when they offer the following:
opportunities for new areas of research and educational programs
help the institution or company grow
build new partnerships and new levels of relationships
provide a means of funding and sustaining new initiatives.