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IP-Based, University Technology Transfer: 30 Years of the US Experience through the Cornell Lens

IP-Based, University Technology Transfer: 30 Years of the US Experience through the Cornell Lens. Richard S. Cahoon, PhD President, BioProperty Strategy Group Former Director of Technology Transfer Cornell University Adjunct Faculty International Programs Cornell University.

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IP-Based, University Technology Transfer: 30 Years of the US Experience through the Cornell Lens

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  1. IP-Based, UniversityTechnology Transfer: 30 Years of the US Experiencethrough the Cornell Lens

    Richard S. Cahoon, PhD President, BioProperty Strategy Group Former Director of Technology Transfer Cornell University Adjunct Faculty International Programs Cornell University
  2. 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?
  3. Traditional University Technology Transfer Publishing scientific/technical papers Producing graduates Teaching science and technology courses Advising farmers through extension activities Faculty consulting Access to library
  4. IP-based University Technology Transfer is Unique
  5. 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.
  6. IP-Based University Technology Transferand its implications for: Universities Mandated (in US) Part of mission to disseminate technology Faculty and grad student opportunities Enterprise creation/economic development Companies and investors New revenue streams from innovation Strategic cross licensing New products and markets
  7. IP-Based University Technology Transfer and Its implications for: Government serves the public good to improve society economic development, tax base increase The Public a pipeline for innovative products and services Countries international competitiveness Individuals It’s a great profession It can be lucrative
  8. The Evolution of IP-based, US University Technology Transfer pre Bayh-Dole (<1980) limited IP activity, no TTOs, no clear policy Early Tech Transfer (1980-1990) simple patent administration, limited policy, minimal TTO, limited commercialization Tech Transfer Growth (1990-2000) Rapid growth of TTOs, proactive IP mktg, start-ups license income, IP policy issues and development Maturing Tech Transfer (2000-2010) big programs get bigger, most universities have TTO Current Phase: (2010+) innovation, challenges: in-house start-ups, “express licenses”, Bayh-Dole critics, “free agency for inventor”, etc
  9. Evolution of Technology Transfer: the Cornell Experience pre Bayh-Dole (<1980) No TTO, Vet vaccine patent/licensing since 1930s Early Tech Transfer (1980-1990) The “Patent Office”, patenting, little marketing Tech 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
  10. 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?
  11. The single most important factor in Tech Transfer success: Invention Triage
  12. 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
  13. More Lessons Learned from US (and Cornell) Experience 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 dissemination Service to faculty and administration University reputation Economic development The public good Tech Transfer fits most naturally within the university research enterprise
  14. 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
  15. Thirty Years of IP-Based University Technology Transfer: more lessons learned 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
  16. IP-Based University Tech Transfer: The Platform for Effectiveness Viable technology Novel and unique commercially relevant, economically significant, Significant advantage over alternatives Protectable with effective property right mechanisms
  17. 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
  18. 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
  19. Thirty Years of IP-Based University Technology Transfer: more lessons learned 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
  20. 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……

  21. Thank you

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