A lot of effort appears to be going into creating “technology available for licensing” lists as commercial services. This is pitched as a way to “market” university “technologies”. The competition is to create the list with the best features. The come-on to technology transfer offices is that using such a list is a best practice, and implicitly offices that don’t use a commercial list service are doing a poorer job of “marketing” their technologies. Behind all of this is the idea that the role of a technology transfer office is to get invention disclosures, patent some portion of them, and “market” them for commercial licensing. What could be simpler? I call this the “little linear model” to distinguish it from the “big linear model”.
The big model says: basic research leads to applied research leads to development and commercial products. Benoit Godin has shown that the big model arises from economists’ misapplication of lists of kinds of research in early NSF reports. Beyond this, it’s just a claim, albeit one that is embedded in things like the Federal Acquisition Regulations. The real problem is that people who believe the claim really try to make the big linear model “work”. What’s of course totally odd is that the federal government has no programs that I can think of that actually would apply the big linear model. There is no set of basic research centers, for instance, that are partnered with applied research centers that in turn are partnered with development shops to punch up prototype commercial products. There are calls for collaboration, and networks that partner various groups to compete for federal funding, and consortia that require industry participation to retain funding, but nothing that would say out and out, we are working the big linear model.
The small linear model, by contrast, is just pip of the big one, trying to use patent rights to leap from basic to commercial and get private investment to back fill the costs to do the applied workup and product development. The small linear model says that life begins at invention. The technology transfer starting point is the invention disclosure and the big early pitch into research labs is to get them to disclose. This is called “training”. It’s really immersion in office propaganda. Done really well, folks get excited in a way that makes one smile. Done poorly, everyone sees through it but are stuck at the suggestion to do otherwise will lead to ethics violations, legal fees, and bureaucratic overload. At disclosure, the technology transfer office swings into action, assessing the commercial and patent potential of an invention and making a decision (whether to manage or not). Mostly, the decision is to manage (tech transfer offices can’t let go), and in maybe one half to two thirds of cases, at least a provisional patent application is filed. The office then turns to the next challenge: find a commercialization partner. That’s where the commercial list folks come in with their “value added, high visibility, this is where your commercialization partners look for really good technology” pitch. Nothing could be further from the truth. O.K., well maybe that alien squirrels drive tractors in Iowa cornfields on days named after norse gods would be further.
Really, though, the small linear model isn’t even so cool that it could arise from the misconceptions of economists. At best it’s a replay, with hugely consequential lapses, of a more sophisticated approach to research-originated patents. Nearly all university technology transfer offices offer some version of the small linear model on their web sites as a description of the “technology transfer” process. Only such widespread repetition could preserve the dignity of it. One hopes it’s just there because someone demanded it be there, and that in practice folks do a lot of other things they aren’t allowed to broadcast.
What is really going on in the small linear model at the point that a technology transfer office has filed a provisional? First, for all but the best funded, the primary concern is, how will we ever recover the patenting costs? This will become much more central if the application moves from provisional to full utility, when the cost goes from sub $1K to $5K to $10K or more. For this, it appears that the best approach is to get out there and find a commercialization partner–at least one willing to cover the patent costs (and they pay patent costs only when they get to think of it as their own–exclusively licensed).
In the days before provisional patent applications, many technology transfer offices did not take title until they had tried to find a commercialization partner. They would prepare a non-confidential summary to make broadly available, but use a secrecy agreement to show interested folks what they were holding, pending a formal patent application (and its costs). The prospective partner reviewed not a patent application so much as the technical records that documented the invention–the disclosure, pre-publication manuscripts, data, the research team, and the like. You didn’t file unless you had a deal in hand. If there wasn’t commercial interest in 90 days or so, things were pretty much up. If the research team published, there was a year clock on filing, and foreign rights were lost immediately in most jurisdictions. There was no point, really, in a list of technologies because folks weren’t filing on everything. What you had was a lot of leftovers, and a relatively few patents that had got through the process but deals had fallen through, or were licensed non-exclusively. Where schools had sizable licensing income, they could afford to file “speculative” patent applications, without an immediate commercial partner. Provisional filings made this even easier. Hence, posting stuff in lists starts to make some sense, if you have a backlog of stuff, which most offices have.
Aligned with wanting to market stuff as soon as possible to recover patent costs is a concern that if a license, especially an exclusive license, is signed, other companies will protest that they did not have an opportunity to negotiate. This is a real fear, especially if the license is to a company with university connections–started by the inventors, say, or one that is a big sponsor of research at the university. The office needs some form of public notice to show that others didn’t come forward, even when the information was available. Worse, there is the concern if the company does not have tight university connections, that if public notice isn’t given, then the company doing the complaining would be one of those, and the technology transfer office would be accused of pissing off a major sponsor, major donor, or important faculty and administrators who wanted their piece of action. Finally, and all the more worse, for any company that is interested, an office always hopes there might be another somewhere more interested so there can be some bidding to show that the consideration for the license was at the best market rates available. These are all the downsides of the upside–that a license might really happen. But really, this is rare stuff.
There is a fun advantage to public notice, as well. If a company knows about your patent, and infringes it anyway, well that’s willful infringement and treble damages. Any way one can get a company to bite in a documented way puts the ratchet into what can happen. Thus a public list, especially if it’s subscribed to by companies, can be a great way of upping the ante for a failure to license. Given that most technology transfer offices are predisposed to exclusive licenses, that ante remains for any lucky company that comes away with first rights to enforce plus sublicensing rights. In this way, a list helps “add value” to the patent right, at least, by raising litigation damages. Of course, doing so also signals companies that litigation is an option for universities, and one in the full hug of the small linear model will say something like, “if we don’t enforce our patent rights, they won’t be worth anything”. Which of course isn’t quite true, but sure sounds good.
A second concern arises based in the cold realization that nearly all the patents in the portfolio are unlicensed, or licensed into moribund situations in which not much at all can be said to be happening. Very few patents create a significant revenue stream, regardless of the “marketing”. The second concern then is how to persuade the inventors that the licensing problem is anything other than the technology transfer office’s efforts–especially, that there wasn’t any commercial interest (for any of a number of reasons), though the office did everything it could (within the limits of best practices). To do this, the office needs to make a show of marketing the invention. That’s where the list folks see their point of entry. By presenting as “best practice”, the list folks shift some of the burden of “marketing” from the office to the list. It’s okay. There’s nothing particularly wrong with this, once one has accepted the small linear model.
Putting “technologies” on a list is a little monument to 10% hope and 90% CYA. Next to nothing ever happens off a tech available list. One could offer a free lottery ticket with every office visitor and get more action–and at a lower overall cost. These lists have much more overhead than may be obvious. It takes work to prepare a “non confidential summary”. For really good ones, some offices have budgeted as much as $2K per. It takes even more work to move from an NCS to the kind of mark up needed for lists–fields, keywords, importing, uploading. And then there is the maintenance of the information–patent applications filed, status, new related disclosures, publications, possible negotiations, and the like. It’s very easy for a listing to be stale in a matter of months, and if it isn’t, then it was likely stale to start with since nothing at all was happening worth updating. Oddly, this leads to the unexpected outcome that the most interesting technologies in a list are those that are stale in a few months because the office has too much load to keep their listings updated and shifts its priorities to other things, like working up new related developments. But no list will mark stuff as interestingly stale, so it really isn’t all that helpful. The point is, these lists are not like an MLS for real estate. The intangible assets reflected in a list should be changing, should be dynamic across the state of the technology capabilities and the state of the intellectual property claims that develop along side. Thus, as a marketing instrument, a technology available list is remarkably prone to being uninteresting to active entrepreneurs and industry technologists compared to maintaining direct connections with labs having a reputation for leadership in an area of interest. For technology transfer offices, participating in a list means adopting the premises of the list–especially the small linear model–and devoting the resources to keeping the list updated. In essence the office services the list even though its primary business arises elsewhere, adding to its own overhead, but making the justification that the list does 90% of the good things one needs: give public notice, make a show of marketing, use an external best practice, and demonstrate the lack of commercial interest wasn’t the fault of the office–it was technology not ready, inventor expectations too high, a funding gap, or a lack of innovation capacity in industry. Yeah, those things.
Where to take this? Should a technology transfer office not list “technologies”? Not give notice? Not make an effort? That’s a false dichotomy. It’s not a matter of listing vs. hiding/indifference. That’s just the marketing angle for the list managers. Are there better ways to “market” technologies? For instance, by including contact information and intention in the acknowledgment caption of published articles? But even going through this still participates in the small linear model, that somehow the first thing to do is advertising, that that’s what marketing is. We know our four p’s of marketing suggest at least there is a much broader scope than just the promotion p–product (what it is you really have–usually not a “technology” but a “bit of something”) and position (or placement–the conditions under which the product surfaces and for whom) matter more than promotion and price when it comes to research-originated stuff (whether early stage or otherwise).
More so, one can ask whether getting beyond the small linear model might be healthy for university technology transfer offices. It may be that it’s entirely inappropriate for a research-based technology transfer effort to begin with “invention”. And it may be that for most research, the conditions that lead to a decision of any particular inquiry are way more important for the assets that develop along the way–data, software, insights, capabilities, collaborations, testbeds, reports, and yeah, inventions–than is the articulation of any invention stripped of these other matters. Putting an invention out in a list all but yelps, “Hey, look, we stripped this thing out of a research lab and now it’s primary value is to scare the bejesus out of anyone who imagines that we’re desperate and will license to the first speculator who shows up, with diligence obligations to make us rich and so might just have to come after you as a contractual obligation, we can’t really help what they might do, it will be a commercial decision you know, so the best thing to do is to step up and take a license and that way we’re all happy, no one gets hurt.”
The small linear model makes tremendous assumptions about research environments. It may be that these assumptions are gratified only often enough not to look ridiculous. That is, research ideas and data and tools flow into and around research endeavors. The thing that arises is connected to these, by people, by attribution, by sharing technology, by competing against technology and intentions. The patent strips all this, creates an exclusionary threat, and establishes a monetizing interest that is direct (a license one pays for) rather than indirect (an interaction that advances other interests, such as further research or placement of students or recognition).
We may say then, that it is grossly unfair to criticize a technology transfer office for not “marketing” a “technology” hard enough. It may be that the technology transfer office has no business “marketing” anything, if that means advertising it. Further, whatever marketing that might happen might better wait until a “market” is developing for a given technology–and that the technology transfer office could better turn its efforts toward what it takes to create such a market. It may be that from a positioning perspective, a technology could be much better seen arising through publication than from the technology transfer office. Or at the lab’s web site, or through a professional organization such as IEEE or ACM, or a mention in Wired or Business Week. It may be that a research-originated invention is best never becoming the lead asset in a relationship–that what should be marketed is talent and commitment and capability, and not a patent right that goes with.
All these “may bees” don’t impress the small linear model crowd. They have no other way of viewing what they do, and do not feel the need to spend time getting at the distinctive role asked of patents under federal research policy, or how different forms of inquiry might lead to different management of intangible assets, or how one form of intangible asset (invention) might benefit from, say, lack of ownership claims more so than from establishment of those (patent) claims. The may bees are realities, however. The biggest problem for the small linear model is that it is so limited in its application. The small linear model has going for it simplicity, the seemingly rational idea that innovation logic should follow chronology (we start with getting out to look for inventions, and then get disclosures, and then assess for potential, and then file, and then license, and then share royalties–that’s how innovation happens!). Technology listing services not only play to this, they have a vested interest in preserving it. The moment the model flies apart, they are toast.
What to do? If you are a university inventor, then don’t buy into the small linear model. (This does not mean, don’t follow policy). It will get you mostly bitterness, and it’s an empty pleasure to be proven right on a negative. If you are a university administrator, focus on those things that advance research toward public use–even if those uses are research uses by others. Remember that federal policy is “to use the patent system to promote the utilization of federally supported inventions”. It doesn’t say, monetize or commercialize or productize–though these things are allowed. The focus is use, so the benefits of that use are available to the public. This a goal that the small linear model loses sight of quickly. This is also a goal towards which the small linear model has virtually nothing to offer. At best, it argues that by seeking commercialization partners and generating money, it advances the public mission of the university. The technology list folks say–“we can help here. We can provide a marketplace for sellers and buyers. We can deepen the commitment to the small linear model. We can make a living in this space.”
There is no indication that improvements in technology lists will result in major improvements in the performance of the small linear model. There are ways of creating social spaces in which technology advances and opportunities are created. This does happen, and broadcast of lists can play a role. But for these to happen, people have to step back from the small linear model and get a sense of perspective. That’s a great challenge.