IP-Based, University Technology Transfer: 30 Years of the US Experience through the Cornell Lens Richard S. Cahoon, PhD President, BioProperty Strategy.

IP-Based, UniversityTechnology Transfer: 30 Years of the US Experience

through the Cornell Lens

Richard S. Cahoon, PhDPresident, BioProperty Strategy Group

Former Director of Technology TransferCornell University

Adjunct FacultyInternational Programs

Cornell University

The Context • The social goal of directly linking university

intellectual assets to technology and economic development for social good

• The development of the IP-based university technology transfer model as the linking function:

the US experience (Bayh-Dole now 33 yrs old)• The global rise of the IP-based university technology

transfer model • Is this model universally applicable?

……..to Turkey?

Traditional University Technology Transfer

Publishing scientific/technical papers Producing graduatesTeaching science and technology coursesAdvising farmers through extension activitiesFaculty consultingAccess to library

IP-based University Technology Transfer is Unique

The Essence of IP-based University Technology Transfer

A contractually-based agreement between mutually-interested parties, for the purpose of commercializing university invention, that:

• defines boundaries of technology-IP and tangible property rights,

• defines rights and obligations of each party • describes a set of mutually agreed outcomes,

and a sharing of costs and benefits.

IP-Based University Technology Transferand its implications for:

UniversitiesMandated (in US)Part of mission to disseminate technologyFaculty and grad student opportunitiesEnterprise creation/economic development

Companies and investorsNew revenue streams from innovationStrategic cross licensingNew products and markets

IP-Based University Technology Transfer andIts implications for:

Governmentserves the public good to improve societyeconomic development, tax base increase

The Public a pipeline for innovative products and services

Countries international competitiveness

IndividualsIt’s a great professionIt can be lucrative

The Evolution of IP-based, US University Technology Transfer

pre Bayh-Dole (<1980)limited IP activity, no TTOs, no clear policyEarly Tech Transfer (1980-1990) simple patent administration, limited policy,minimal TTO, limited commercializationTech Transfer Growth (1990-2000) Rapid growth of TTOs, proactive IP mktg, start-upslicense income, IP policy issues and development Maturing Tech Transfer (2000-2010)big programs get bigger, most universities have TTOCurrent Phase: (2010+)innovation, challenges: in-house start-ups, “express licenses”, Bayh-Dole critics, “free agency for inventor”, etc

Evolution of Technology Transfer: the Cornell Experience

pre Bayh-Dole (<1980)No TTO, Vet vaccine patent/licensing since 1930sEarly Tech Transfer (1980-1990) The “Patent Office”, patenting, little marketingTech Transfer Growth (1990-2000) “Gene Gun” success, TTO growth, tech mktg, first start-ups, license income, IP policy development Maturing Tech Transfer (2000-2010)TTO engages in many licenses, start-ups Current Phase: (2010+)Improving the TTO operation, economic development, widespread acceptance of TT

The Cornell TTO exampleOver a span of twenty years:

3000 inventions submitted~1500 (50%) filed as patents

~750 (25%) licensed~650 (20%) generate revenue

Important: 50% of all Cornell’s patent expenses reimbursed by licensees

Compare: 95% of all US patents produce NO revenue!

How did we do it?

The single most important factor in Tech Transfer success:

Invention Triage

Some Lessons Learned from US (and Cornell) Experience

• Only half of inventions are pursued……. and only half of those are licensed…..

....even fewer produce products (& royalties)

• Often takes years to license an invention

• Usually takes years before a license produces “fruit”

• Most licenses generate less than $1million

• “Blockbusters” ($1M+) are rare, take a long time to develop, aren’t always obvious initially

• Tech transfer has become an integral part of the university mission

• The focus of university TT should not be $$• The raison d’etre of TT:

Technology development and disseminationService to faculty and administration

University reputation Economic development

The public good• Tech Transfer fits most naturally within the

university research enterprise

More Lessons Learned from US (and Cornell) Experience

• Tech transfer must be embraced by top administration

• Appropriate policy is essential• Institutional ownership of IP is necessary• TTOs need sufficient resources, especially

competent professional staff• The growth process of TT in an institution is a

crucible of issues and challenges

More Lessons Learned from US (and Cornell) Experience

• Enlightened incentives for stakeholders• Successful TTO professionals must have

balanced skill set (tech, law, business, etc.)• TT is time-consuming, rewards slow in coming• Technology marketing is essential• Don’t be surprised: controversy is likely and

litigation does happen

Thirty Years of IP-Based University Technology Transfer: more lessons learned

IP PolicyIndustrial Partner-ing Policy & Prac-

tice

TTO Structure & Operation

Invention Dis-closure system

Outreach, Inreach, PR, TTO mkt

Tech Evaluation & Triage

IP Management

Tech Marketing

License Practice

License Contract Man-agement

Technology Transfer

IP-Based University Tech Transfer: The Platform for Effectiveness

Viable technologyNovel and uniquecommercially relevant, economically significant, Significant advantage over alternativesProtectable with effective property right

mechanisms

IP-Based University Tech Transfer: The Platform for Effectiveness

• Institutional mindset that TT is valuable• Effective policy framework • Sound IP management • Contractual policies and templates• Competent TT professionals with right skill set• Institutional support for TT from top to bottom• Benefit sharing (inventors, institution, partners)• Build in financial stability for TTO

IP-Based University Tech Transfer: More Elements of Success

• The right attitude: more “good” deals…..

rather than……fewer “perfect” deals• Sufficient back-office infrastructure (IP

records, contract management, accounting)• Responsiveness by TTO• Diligent follow-through

• Successful commercialization and license income is a “lottery” function

• What is a TTO “success”? a signed contract with a competent commercial

partner that obligates them to invest sufficient money, time, and other resources to commercialize the invention

• Some university inventors will get rich, most will achieve modest or no remuneration

Thirty Years of IP-Based University Technology Transfer: more lessons learned

Thirty Years of IP-Based University Technology Transfer: more lessons learned

Significant, consistent (and patient) early investments in TTO and IP are required, often for many years

……….but, that investment will pay off

TTO-spawned technologies create products, jobs, economic development, financial benefits, enhanced university reputation, etc……

Thank you