Recommended Rules of Engagement for University Tech Transfer

It is the opening day of AUTM’s 2007 annual conference in San Francisco, the largest gathering ever of individuals from around the world interested in university technology transfer. Academe’s role in helping to commercialize technology has been under attack during the past few years by multinationals complaining institutions are too difficult to work with, by those who think Bayh-Dole needs to be tweaked and by others within academia who believe the university’s fundamental mission and culture is compromised by increased partnerships with industry.

It is then quite timely that a small roundtable of some of America’s most successful universities at turning their faculty and student research into revenue streams for the institutions released a brief white paper outlining nine guiding principles or ideals for all university technology transfer offices to consider while pursing their common goal of helping the private sector to commercialize academic research results.

In the Public Interest: Nine Points to Consider in Licensing University Technology is penned collectively by technology transfer administrators at the California Institute of Technology; Cornell University; Harvard University; Massachusetts Institute of Technology; Stanford University; the University of California; the University of Illinois, Chicago; the University of Illinois, Urbana-Champaign; the University of Washington; the Wisconsin Alumni Research Foundation; Yale University; and the Association of American Medical Colleges.

Press accounts have referred to the points reverentially, in superlative terms. Commandments, at least one paper called them. Whether or not they deserve such lofty monikers, the nine principles (see below) are merely suggested as guides or shared values, not cardinal rules, the authors note. Each licensing opportunity “is subject to unique influences that render ‘cookie-cutter’ solutions insufficient,” the paper begins.

Nonetheless, the nine points warrant consideration by the larger TBED community, not just university tech transfer agents, if, for nothing else, to encourage discussion. They are:

1. Universities should reserve the right to practice licensed inventions and to allow other nonprofit and governmental organizations to do so.
2. Exclusive licenses should be structured in a manner that encourages technology development and use.
3. Strive to minimize the licensing of “future improvements."
4. Universities should anticipate and help to manage technology transfer related conflicts of interest.
5. Ensure broad access to research tools.
6. Enforcement action should be carefully considered.
7. Be mindful of export regulations.
8. Be mindful of the implications of working with patent aggregators. And,
9. Consider including provisions that address unmet needs, such as those of neglected patient populations or geographic areas, giving particular attention to improved therapeutics, diagnostics and agricultural technologies for the developing world.

The 17-page white paper, In the Public Interest: Nine Points to Consider in Licensing University Technology, is available as a PDF at: http://news-service.stanford.edu/news/2007/march7/gifs/whitepaper.pdf