Effective University Technology Transfer

“Technology transfer” is not so obvious an idea as it may seem. There’s technology transfer from developed nations to “developing” nations. There’s technology transfer from one industry to another. There’s technology transfer from applications in the military to civilian uses. There’s technology transfer from lab to manufacturing and from lab to other labs. There’s even technology transfer from universities to patent licensing firms–as Research Corporation used the term. Despite all these various usages, let’s ask what is involved in effective university technology transfer.

Here’s a decent working definition of technology transfer from a Senate subcommittee report from 1968: “the conscious process by which new knowledge is made available to others than those who generated it” (The Prospects for Technology Transfer: Report of the Subcommittee on Science and Technology to the Select Committee on Small Business United States Senate). Notice that this definition ends with “made available” rather than with “is adopted and used.” It’s one thing to advertise “new knowledge” and it is quite another to find people who have a use for that new knowledge and go on to use it. So we can push this definition a bit to include a better endpoint–when a technology is transferred, it is used by those obtaining it. We can also push on the idea of “process”–there’s no reason why technology transfer must involve a process. Sure, we can limit transfer to “conscious” (as distinct from unconscious, or more seriously, from accidental or spontaneous transfer) but “process” is also too limiting, too happily bureaucratic. We might say, then, that technology transfer is “an intentional activity by which new knowledge is made available to others than those who generated it and is adopted and used by those others.”

We should also ask what is involved in “new knowledge.” How long is new knowledge new? Does it matter? If you “generate” new knowledge today, and someone shows up needing that new knowledge next year, is it still new knowledge? If it is new knowledge to the receiving party, isn’t that enough? Consider, for instance, Everett Rogers’s definition of “innovation”–something perceived as new by an adopting group. For that matter, then, why should technology transfer be restricted to “those who generated it”? Does that mean that inventors must transfer their inventions, and if university patent administrators attempt to do so, that’s not technology transfer because the administrators clearly are not the ones “generating” the “new knowledge”? How about if the administrators transfer rights to a research foundation? The foundation clearly didn’t “generate” the “new knowledge.” You would think that a more workable definition of technology transfer would be the movement of “knowledge” from people who know it to people who don’t know it but use it when they get it. If they don’t use it, then we just have teaching of knowledge–all very well and good, like the crap Paul Simon learned back in high school or what James Taylor can’t remember much of at all.

If we work broadly, then, technology transfer is the deliberate movement of technology from a group that has it to groups that will use it, and do use it. Think of it as a form of effective teaching–not just that stuff is presented, but that those receiving the stuff put it to use. This broader sense of technology transfer does not depend on where some bit of technology was first developed, discovered, collected, invented, composed, or assembled. What matters is that someone knows how it works and finds others who want to use it, and do use it. Or, with institutional involvement, someone knows someone who knows how it works and that someone helps to find others who want to use it, and do use it.

A university imports technology as well as produces it. To restrict technology transfer to only the portions produced unnecessarily narrows the scope of technology transfer. While the portions produced within a university are distinctly the interest of those who have developed those portions, often those portions depend on other technology developed elsewhere. If those other portions are not openly available–such as behind a patent and available only for “non-profit research use”–then those locally developed portions are dead in the water–they can be announced, even published, but they cannot be transferred. The rights in these portions might be transferred–but not the doing of the technology. The rights in these portions–copyright, patent–can be traded on–so that someone else who is excluded from the other portions holds the rights and maybe can work a deal or invalidate the blocking rights or force a cross-license. But any of that sort of thing is down the road and definitely a less effective form of technology transfer.

Let’s then consider the attributes of effective institutionally supported technology transfer. First, and most importantly, effective transfer entails placing every technology managed. For every technology accepted for management, it should be transferred to one or more other people or groups who are prepared to use it, and–here’s the kicker–do use it. If no one wants the technology, then it should be let go, not institutionally managed for transfer. If those developing the technology want to use it, then the institution might work with them, either using institutional resources or set up outside the institution. That, too, is a form of transfer (from inside to outside, but not from a developing group to another)–but the institution does not have be in the middle to take ownership and then license the technology back to the developers. There’s nothing effective about adding all that complication and bother.

There are two immediate practice consequences of placing every technology managed or letting go: (1) there will be a widespread technology transfer practice that is not institutionally managed and (2) the institution must be selective to match the technologies it accepts for management with the resources and practices it has available to place those technologies.

(1). A university has many technology transfer efforts. Only some of them involve institutional controls or management, such as ownership of inventions or software or data combined with licensing and whatever else might go with licensing, such as services. This has always been the case. A university graduates students. University personnel publish and present and receive visitors–and visit–and collaborate and consult. They do deals with publishers and distributors, they do deals with companies they consult for, they slap public licenses on software code, they help their students start companies, and they start companies themselves. This activity often results in technology transfer. If the university itself does not have to spend money or become a bottleneck by demanding ownership, then from a cost perspective, such technology transfer is bound to be more effective than anything that’s institutionally managed.

One might go so far to say any institutional demand for ownership of inventions or works of authorship tends to disrupt on-going technology transfer. Sure, there may be instances in which someone has technology (gathered, invented, composed, etc.) and refuses to teach it to others who want it and will use it, and in those instances, an institution might have a reason to step in and request the opportunity to teach it to others, but generally, the imposition of institutional claims of ownership and control on technology interferes with unmanaged technology transfer.

In an open university, there will always be non-institutional technology transfer competing, as it were, with institutionally managed technology transfer. This is true, too, even when a university attempts to snuff out such transfer by making wildly expansive ownership claims on inventions and other such stuff. It’s just in these cases, the non-institutional technology transfer goes underground, becomes covert. People don’t participate and don’t report that they don’t participate. It’s police state dynamics, where law and order get used for repression, where the state is more important than the individuals in the society it otherwise might serve. We get then a formal technology transfer activity that gets an annual report and has administrators tallying metrics to show how wonderful things are, or at least how wonderful things will be real soon now, and an informal, shadow technology transfer activity that works without light, without administrators wondering how it is doing, or how their invention ownership repression is affecting non-institutional transfer.

One glib assertion by those advocating for institutional control of all technology transfer is that technology transfer is complicated and fraught with expense and risk and liability and university personnel are not capable of transferring technology on their own. This view is, largely, nonsense. Technology transfer in the form of teaching and publication is relatively straightforward. It does not have to involve patenting or tangled licensing agreements. In many ways, those claiming technology transfer is complicated participate in making technology transfer complicated. The complications come from asserting comprehensive university ownership, focusing on patent rights as the primary consideration in what to transfer, and defaulting to exclusive licenses as the preferred way to release patent rights. No doubt doing such things is indeed complicated–and fraught with expense and risk and liability–but these are attributes of ineffective technology transfer. That ineffective technology transfer is more complicated than university personnel can, in general, get on with does not mean that a university must demand ownership of all technology that might be transferred without university administrative involvement. It means, rather, that a university must be highly selective of the technology it does accept for management, so that it deals in only those bits that must pass through a complicated patent and exclusive licensing regime in order to be transferred.

The aim, then, for effective technology transfer is for the institutionally managed technology transfer to show great results so that in its areas of strength, it is attractive to be sought as a resource in those areas. Think, perhaps of a university press. A university press does not demand to publish every work that anyone in the university might produce. It does not even publish every work that someone might submit to it. And it even publishes works prepared by others who are not university personnel when the subject matter is well matched to the titles and production forms the press is known for and has the experience to do a great job with. A university technology transfer office is much like a university press, then. It won’t publish everything, and it won’t restrict itself to just university “inventions,” but what it does accept for management, it will–barring disasters–transfer.

University technology transfer will then compete with other forms of university-related technology transfer. People have to be at home with such competition and not use university policy or threat of employment actions or threat of discipline for “ethics” violations to force all technology into university management. People who cannot deal with freedom and competition create ineffective technology transfer policies and force technology into  ineffective technology transfer practices.

(2) Selection of what to accept for institutional management then becomes crucial. The dominant practice now is to take everything, paw through it for stuff that might make money (“has commercial potential,” “is patentable,” “supports economic development,” “can start a company”), and then apply standard practices for patenting, marketing, and exclusive licensing. That approach is ineffective. Most of what is taken is not placed. About half is patented, deepening the university’s determination to hold it until someone pays for that patenting–often $15,000 or more. In the technology transfer practice I started with in the late 1980s, a university did not file a patent application until it had found at least one company that had agreed to take a license. The sequence was–disclosure, marketing, and only then if the marketing worked out, patenting and most definitely licensing. Not–disclosure, patenting, marketing, and then maybe 20% of the time licensing.

This old-style approach was highly selective and used multiple screens. First, it was voluntary, so inventors self-selected for whether their inventions were well matched with patenting and with the use of an institutional patent licensing agent. Second, the university often had a committee that reviewed inventions to determine whether patenting was appropriate for the university–the nature of the invention, the circumstances of development, and effect of patenting on scholarship and the public, and the like. Then the patent development agent considered the invention–was it matched to the agent’s capabilities? Was it well documented? Did the invention represent a significant advance? Would any patent be enforceable? Research Corporation, the dominant university patent development firm in the 1940s to 1980s, had an acceptance rate of 10% to 15%–and that might represent then from 1% to 5% of the inventions made at a given university in a given year. Research Corporation then placed about 30% of the inventions it took under management.

You can see then that selectivity creates reasonable placement metrics. If one expands the incoming inventions, one must be even more selective. And there’s a huge problem. If one is all the more selective, then most inventors receive rejection notices. They work up a disclosure, complete forms, answer a bunch of questions, and then find out that no, their inventions are not among the chosen few. If a university aims to make the situation even worse, then it demands disclosures of everything. The volume of invention reports–far from being a sign of “innovation productivity”–becomes a sign of failure to be selective for participants in the university’s technology transfer program. More invention reports does not mean “more innovation” but rather “poor administrative judgment.” It’s the equivalent of bad commercial marketing, in which one attracts all the problem customers who eat up company time but don’t buy, or buy and return the product, or buy and complain. No one in their right mind wants 100% of a market. Hence, university administrators. Sigh.

A compulsory university invention (and whatnot) ownership policy creates a high volume of invention reports. Those reports swamp out the inventions that would be matched to the university’s resources, capabilities, and practices. One cannot easily find the matched stuff among all the noise created by compliance. Those invention reports too create a massive clerical and logistics problem. If one is handling ten inventions a year, then one can use a spreadsheet or a file drawer for the records. If one is taking in 200 inventions a year of all kinds, then one needs a data base and a data base manager and data base field consistency to cover inventions, works of authorship, software, tangible materials, data, other whatnot, and data base input and report generation and data base backup and security and access from multiple workstations–the administrative cost of volume increases exponentially, and most of the expense Indiscriminate volume is a great contributor to ineffective technology transfer.

While accumulating a large patent “portfolio” might sound like happy talk for professional investors, it is not a strategy for effective technology transfer. A few “winners” might pay for all the losers, but that’s merely payment to those that control the portfolio. It does nothing for the inventors of the technologies that are now called “losers”–those inventors get nothing and are out their time and effort, and their inventions are hung up with a university that does not even accept that the winners have paid the patenting costs of the losers and so will not return the invention rights to the inventors unless they pay those same patenting costs. It’s not right and it’s not equitable. But most of all, it’s rotten, ineffective technology transfer. Most stuff doesn’t get transferred in a university’s “portfolio” of inventions. In the Bayh-Dole era, universities have obtained over 120,000 U.S. utility patents. Most of those have not been licensed and of those that have been licensed, many of the underlying inventions were not transferred–the licensees did not use the inventions, did not make the inventions available to others to use. These license transactions were speculative rights deals–transferring control of rights to technology rather than transferring the technology itself. Again, that’s ineffective technology transfer.

To return to effective practices, universities must be way more selective in what they accept for management. The best approach to selectivity is to make participation in the institution’s technology transfer programs voluntary. In addition, a university should not accept any invention for management unless it has a practice plan to place that technology, and follows through on that plan. The best such plans, the most effective, will include non-exclusive licensing–even public licensing–for all making and using or the invention. Maybe there are restrictions on sales–such as to ensure quality or compliance with a standard–and maybe there are limitations to protect commons–such as terminating licenses for those who sue other uses for infringement of essential claims necessary to practice the licensed invention. Either play fair or stay out. That sort of thing.

Voluntary participation also means that those inventors (and creators of other other whatnot) have chosen the university to assist them. Having inventors (and others) choosing to participate is a huge contributor to the effectiveness of a transfer effort. Forming projects that assemble clusters of people working together to transfer technology (and maintain that technology in a transferable condition) also may improve transfer. Projects, too, provide a role for institutional support for technology transfer. Think of a project as a kind of company–a social discipline, really, a persisting collaboration with shared rights and financials–created under the rules of the university rather than under the laws of a state.

That others don’t choose to participate in institutional technology transfer is not a big deal. Their deployment of technology–even through indifference–is more often than not more effective than the university taking ownership of technology for which it is not suited, using expensive practices such as patenting, and which may not be worth the effort to try to place, patented or not, or which is so worthwhile that any fool of an inventor can place the technology without the intrusion of any fool of a university administrator. Every bit of non-institutional transfer that works contributes to the overall effectiveness of the university’s technology transfer program.


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