Gather together; Technology Ventures Corp. is behind an agreement that will help investors build an intellectual property portfolio from research done

BYLINE: Kevin Robinson-Avila

Four national laboratories in New Mexico, California and Nevada have agreed to "bundle" their intellectual property to allow potential investors to license a full package of patents.

Lab executives and representatives from Albuquerque's Technology Ventures Corp. -- which facilitated the agreement -- said the Innovation Bundling Initiative (IBI) could speed up efforts to commercialize new technologies.

"The agreement is unprecedented in its depth and scope," said TVC President and CEO Sherman McCorkle. "Under the IBI, U.S. industry could now secure a dozen patents with two or three from each of the four facilities via one negotiation, thereby saving a year's worth of time and a phenomenal amount of expense."

The agreement includes Sandia National Laboratories and Los Alamos National Laboratory in New Mexico, Lawrence Livermore National Laboratory in California, and the Nevada Test Site.

The heads of tech transfer at each lab negotiated the agreement and approved it in May. The final legal documents were scheduled to be signed on August 24 by laboratory directors during a ceremony in Albuquerque to be attended by Department of Energy Deputy Secretary Clay Sell and most of New Mexico's congressional delegation.

Until now, each lab worked individually to commercialize its own technology, despite broad overlaps in research and development at all the labs. That meant potential licensees had to search for technology at each facility, then negotiate licenses individually.

"Now, the members of each lab can represent the other labs in pushing technology transfer," said Charlie Whitehurst, who directed TVC's efforts to forge the agreement. "This is the first time the labs have agreed to do this."

The labs have, to date, entered 2,190 available patents into a common database, Whitehurst said. They have gathered most of those patents into broad "clusters" such as nanotechnology, photovoltaics and water remediation.

The next step is to bundle patents for specific, overlapping technologies into single portfolios, Whitehurst said.

"The labs have a lot more patents, but these are the ones they have elected to put into the database so far," he said.

Brent Burdick, a licensing executive with Sandia's tech transfer division, said there are many related technologies dispersed among the participating labs.

"We're looking carefully at each cluster identified to determine specific overlaps that can lead to IP bundles," Burdick said.

Duncan McBranch, division leader for technology transfer at LANL, said the IBI will make new technology more attractive to industry.

"Nationwide, there is a trend to gather unique IP portfolios by pulling in intellectual property from various institutions," McBranch said. "By bundling our patents, we can make our technology much more appealing and powerful as an IP portfolio."

Rusty Schmit, president and CEO of Albuquerque-based Advent Solar Inc., which makes solar cells based on technology licensed from Sandia, said the agreement will generate interest among investors.

"It's always seemed odd to me that even though the federal government owned all the IP, you still had to go to different agencies to negotiate licenses," Schmit said. "It's cumbersome to try to keep up with all the technology coming out of the different labs. If all of it were bundled together, it would make the whole process a lot simpler."

Meanwhile, coinciding with the IBI signing ceremony, TVC released a report on its achievements since 1993 in support of businesses that seek to build new technology into marketable products.

During the past 14 years, TVC has helped generate more than $879 million in fresh investment, according to the report. It helped create 93 companies and more than 9,000 new jobs (see table).

This year promises to be TVC's most successful to date. In the first seven months of 2007, TVC has helped generate nearly $192 million in new funding -- more than twice as much as in all of 2006 and more than any other year since 1993.

"This is our best year ever," McCorkle says. "To the best of our knowledge, this is the single most successful program for technology commercialization and job creation in the nation."