Cockroach Living in Technology Transfer

I didn’t intend to end up in university technology transfer, but I fell down a rabbit hole and here I still am. I have seen university technology transfer from both sides now. For 12 years, I worked for the University of Washington licensing program. I spent 6 more years at UC Santa Cruz. Then 3 years on a Ewing Marion Kauffman Foundation grant back at UW, but in the College of Engineering. And for 5 years since, I’ve been an independent consultant, as well spending a couple of years as a part-time lecturer at the UW Bothell School of Business.

At UW I started a group specializing in software and digital media. Eventually there were six licensing professionals and one office manager in the group. We handled “almost anything not in cages or fridges.” We worked across copyrights, patents, and trademarks. We did open source licensing and venture-backed startups, patent licenses, and whatever else. We created new approaches and tried them out–sole licensing (neither non-exclusive nor exclusive), make-use commons, source-available, affiliate-label marketing, subscriptions, site licensing, development projects before there’s any IP. We were mindful of money, but our goal was to provide resources for our principal investigators, programmers, and developers that they could not get readily for themselves, and took it from there. And we did make money–$3m to $6m per year, on a budget that didn’t get over about $750K a year–and that’s salaries, legal, ops, the works. So we made enough to cover our costs, but especially we helped groups get their materials out, and develop user communities that relied on our research and clinical tools. 

In 2002, I moved to the University of California, Santa Cruz to start a new campus-based technology transfer office. The campus was focused on bio-info-nano research, so that’s where we put our effort. I was also IP lead for the negotiating team that won a ten-year, $330m research contract with NASA Ames to operate a UARC, a contract research center in Mountain View, in the heart of Silicon Valley. I got to know well the NASA FAR Supplement, Export Control, and ITAR (all those satellites!). At UC Santa Cruz we also worked with major industry labs–HP, IBM Almaden, SAP, National Semiconductor–as well as with other area universities–Stanford, Berkeley, San Jose State. We were a part of the Bay Area Science and Innovation Consortium, and the northernmost campus in LARTA (formerly the LA Regional Technology Alliance). At UC Santa Cruz, I coordinated the work for what turned out to be a million-dollar distribution program for a design software package that moved from the Army to Ames to the UARC–and then out to industry to get used. That’s when I realized that technology transfer could be more like opening a bar tab than demanding a license. Technology transfer agent as bartender. If you know how to mix drinks, people will ask for more. Sadly, there are no university IP policies based on the bartender model.

At UC Santa Cruz, I also handled industry-sponsored research agreements, including state economic development matching grants from the Discovery Grant program. I had to figure out how to coordinate across UC sponsored research policy, patent policy, and copyright policy–all of which had different lines of delegated signing authority. I was the only person I knew of in the UC system at the campus level that had navigated all three of these delegations. We developed frame agreements to simplify multiple interactions with any given company–sponsored research, license, visitors agreement, confidentiality agreements, SBIR/STTR subcontracts, whatever. Once the frame was in place, any addition to the relationship was pretty much a one-pager.

Despite my differences with ATUM’s politics, I also put in many hours developing material for their Copyright program and for the Software and Digital Media licensing workshop. AUTM could never bring themselves to ask me to lead the software workshop, but while I was still a member of AUTM, whoever they did ask would show up on my email doorstep with questions and an invitation to contribute. I had only one condition–that the workshop include at least one talk by a faculty software developer, in which that person described what they were doing and what they wanted from their tech transfer support office. The developers of course spoke candidly, pissing off AUTM officials, who got themselves flustered at the disrespect for patents, the workarounds  to fussy university rules about “inventions,” and the general idea that with open source, developers didn’t much need institutional “commercialization” services nor the happy talk that often comes with it.

While I was at UW, I worked with UW Extension to create a IP Management certificate program. This was a three-quarter course that worked through patents, software, and licensing. The program ran for a number of years. The students were drawn roughly equally from engineering, law, and marketing, representing a number of the major firms in the area. One of the big events in the course was a week-long licensing simulation run as a forty person multi-player game in real time, during course time, and via email. As one player (from an industry licensing operation) mentioned during the debrief at the end, “This was as close to real licensing strategies as it gets.” When I moved to UC Santa Cruz, for four years I hosted a week-long training seminar on high-tech IP management in collaboration with National Chengchi University (Taiwan). Students in the workshop had attended a graduate law program at NCCU, and the top students–business execs, law students, and government officials–came on the summer study tour to the States. We ran variations on the licensing simulation, but compressed to two hours, and conducted in a mix of Chinese and English. There was more to learn, there, about how technology policy dialogue can differ among societies. There was a comparable lesson when I spent a couple of summers working with a IP training program in Mexico. There, patents, licensing, even the expectation of the ability to enforce agreements all were different from U.S. defaults.

If I knew one thing going into university tech transfer, it was that programmers don’t like to be bullshitted about the business side of their work. Perhaps that was because as a grad student, I was a university-based programmer, and we got a visit from the tech transfer office, with wonderful words about how we could make money by “commercializing” our software. She left, and we sat around and laughed at the bullshit.

The first document I put in my file when I started part-time at the University of Washington Office of Technology Transfer (I was still teaching literature and writing as a post-doc) was the GNU Manifesto. I figured it would be the touchstone for much of what I could do with software, not because the GPL was perfect (not) but because the GNU Manifesto reflected a mindset about software that did not require “commercialization”–it required reciprocal collaboration. That in itself was an important mindset to have, to be conditioned to understand and work with, whether relying on the GPL or the WTF or any other license. Along with this mindset came networked externalities, social network dynamics, the value of non-IP intangible assets (NIPIA–possessed, but not owned!), and the idea that perhaps goodwill and working relationships often mattered more than ownership and the value of exclusion.

At one point, one of our UW projects had about 200 industry sites paying about $4K a year for the relationship with a lab, for a year’s worth of updates, and the ability to talk directly to programmers when they needed help. Yeah, that project was generating $800K or so a year, but UW wouldn’t for a long time list it in their annual report as one of their top “licenses” (it was like, no. 2 or 3) because no license was more than a few thousand dollars. For a number of years, half or more of UW’s top technology licensing programs were our software and digital media and database projects. No “big hit” deals–but a whole lot of goodwill, working relationships with companies (and with legal counsel for those companies, too). At one point, having turned around a $10,000 transaction in 24 hours, a company purchasing agent thanked us and expressed the wish that the deal had been worth more, since it showed up so well in their own productivity metrics.

While working at UC Santa Cruz, I started up a conversation with the Ewing Marion Kauffman Foundation, known for their involvement in university entrepreneurship. I introduced them to the folks at Flintbox, who had built a back-end tech management package based in part on how we were doing things at the University of Washington (I served for a time as a volunteer on Flintbox’s advisory board). Kauffman had some discussions with Flintbox but eventually decided to build their own system, called iBridge, which they rolled out as part of what they called the Kauffman Innovation Network. It was fun to see the strategies we had been developing take shape as infrastructure, but it was also discouraging to see that people used both services to post “technology available for licensing” notices rather than using the back-office features to support collaborative projects anticipating multiple participants and wanting to scale.

Kauffman suggested I propose some work–which I did, but UC Santa Cruz could not figure out how to allow me to spend the money, so I returned it. Kauffman then suggested that I write grant proposal. I responded with the outline for a one-year planning grant for a project to develop new methods for university tech transfer, based in an engineering mindset rather than a pharma/biotech mindset. Kauffman responded by asking me to double the time period for support. So I worked up a two-year project that became the Research Technology Enterprise Initiative. We discussed where to park the project, and ended up back at UW, with a commitment to Kauffman from the UW president, provost, and dean of the College of Engineering. One of the results of that work was the Inventor Illuminator, which allows one to paste in the names of a research team and see quickly what patent work they have done with the USPTO. The code was written by Tim Pavlik, who in addition to being a grad student in engineering came with a professional background in patent search.

While working on the Kauffman grant, I had the opportunity to connect with folk working on innovation, and to do a bunch more reading on the topic. I looked at Shanzhai/Système D gray market economics. I worked through innovation work by Vannevar Bush, Jane Jacobs, Joan Roelofs, Eric von Hippel, Kevin Carson, Steven Johnson, Kevin Ashton, Matt Ridley, and Nassim Taleb, among others. Also cognitive work by Susan Cain, Brené Brown, Dan Ariely, Daniel Kahneman, Matthew Crawford, and Matthew Stewart. I read a bunch of work in ethics, history of business, and the history of technology. I spent time working with Mark Ganter and Duane Storti and their 3d printing and solid modeling lab in Mechanical Engineering at UW. I continued my work as an external advisor to Chris Newfield’s innovation study group in the NSF-funded Nanotechnology in Society at UC Santa Barbara, and my communication with Alain-Marc Rieu of the University of Lyon (Jean Moulin), who among his philosophical interests specializes in international policy issues pertaining to the culture of innovation. I also have spent time with Benoît Godin, who is at INRS in Montreal, who has assembled an impressive library–that fills two largish offices–on the literature of innovation as part of his on-going project to map the history of the concept of innovation, with particular reference to government policy, academic discussions, and economics.

Another of the results of the Kauffman grant, which eventually ran for three years, is this blog site, Research Enterprise. Back when I started this blog, I didn’t see any uses of “research enterprise” out on the web. Folks talked about research administration, research policy, even “research as an industry.” Now there are lots of uses of “research enterprise.” I can’t say that the blog has been the source, but it certainly was early on a wave of framing university research that captured both the collaborative economics as well as the prospect for commercial interconnects.

Throughout my work in university technology transfer, I have consulted and volunteered and helped out with strategies, licensing, and policy issues at a number of universities and federal labs. I’ve worked with perhaps 20 university tech transfer offices in some paid way–invited talk, contract consulting, advisor, training–and with a range of NGOs and foundations. Once I left working as a university tech transfer office, I have had the opportunity to work with research faculty, with entrepreneurs, with startups and small businesses trying to work out research or licensing deals with universities. In that work, I have had a chance to see the performance of university research and licensing officers from the industry and faculty points of view. That view has at times not been pretty, and at times simply shocking–bad faith, poor drafting, delays, ignorance of law and policy, inability to respond to reasonable requests. The past eight years, especially, have conditioned me to see university technology transfer from the industry perspective, but knowing a great deal about the university work conditions as well.

I’ve been writing articles for Research Enterprise since the fall of 2008, so coming up on eight years. In that time, I have produced over 700 articles (and I have another 30 or so in draft form that I haven’t got around to revising). In those articles, Research Enterprise has reported developments in university technology transfer, laid out ways to handle university technology, and challenged organizations (such as AUTM and COGR) and various universities on metrics and politics. Research Enterprise has worked through Bayh-Dole, its implementing regulations, and its federal contracting. I was part of a team (organized by Rene Kaswan, who was then at IP Advocate), that developed amicus briefs in Stanford v Roche that argued against Bayh-Dole as a vesting statute. Those briefs presented arguments that prevailed in the Supreme Court decision. The outline of some of those arguments got worked out via articles here at Research Enterprise.

As well, Research Enterprise has worked through parts of numerous university IP policies, past and present, examining how they work, if they work. I get emails and phone calls from folks who have read some article posted here. I write what they feel they can’t say from their positions, working for universities. At least if there’s an article, then they can point to it and raise an issue without having to make it appear that they are going up personally against the prevailing ethos of the licensing program, or legal counsel, or senior leadership. Perhaps that is a useful role, among others. There are decent ways to develop university IP policy, but most university policies I have worked through are pretty horrible documents–not just the drafting and inattention, but also the models of what ought to happen, and how people should be treated often, well, stink. Some administrators and university lawyers are no doubt made grumpy by critiques that call out their work–but then, who else does this, publicly? And if their work doesn’t stink, then why don’t they defend it? Mostly what happens is that something I’ve worked through–if it’s a minor document– just disappears from the web, lost but for saved copies and the wonderful Wayback Machine from Internet Archive.

There are a few other independent blogs on technology transfer around–notably Karen White’s Almost White Papers and Melba Kurman’s Technology Transfer 2.0 (which hasn’t seen a new post in some time). Yes, there are news services that report stuff, and there are discussions groups such as Techno-L. And there are academic articles–some even evidence they know what they are talking about when they discuss university tech transfer practices (but most take AUTM metrics at face value–sigh).

Research Enterprise is an independent voice that’s worked multiple sides of technology transfer. There’s not much out there like it. Call it the loyal opposition. Or call it a bit of analytical conscience for university programs that seem easily taken over by noble cause conniption and confirmation bias. At least for this part of its run, I have worked to put into words what I have worked out, realized, discovered, tested, and reconsidered in the broad practice of being part of chains of diffusion of new ideas, software, inventions, and other good stuff. What you read on Research Enterprise may not be the current mainstream mantras, but some of it once was mainstream (and should be again), and other of it ought to be added to current practice.

I don’t get paid by anyone for Research Enterprise. There are no ads. No donations or grants. Even when I was funded by UW and Kauffman, from 2008-11, no one suggested what I write or asked to review it. The editing is mine, with all the glitches, and so are the errors. That comes with the territory. The articles have held up well over the years. There’s not too much that has needed to be corrected or updated, other than broken links. In a way, that’s disappointing because it suggests not much has changed in those eight years. AUTM still apparently inventor loathes. Most university IP policies still stink. There’s still at university licensing offices an unreflective fixation on “commercialization” and exclusive licensing. Bayh-Dole still does the miserable work it has been put to–fragmenting university research technology, making the fragments subject to institutional ownership and overhead, leading universities into damaging institutional conflicts of interest, destroying America’s network of national invention management agents, and turning federally funded research results into the grist for monopoly speculation. We can surely do better than this.

What have we learned, then, about university tech transfer, federal regulations, IP law, and university IP policies and practice? I’ll take that up in another article.

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