From July 28 - July 31, 2019, I had the pleasure of attending the Association of Technology Managers (AUTM) 2019 Central Region Meeting. AUTM is a nonprofit organization dedicated to bringing research to life by supporting and enhancing the global, academic technology transfer profession through education, professional development, partnering and advocacy. AUTM’s attendance has been ever-growing since the passage of the Bayh–Dole Act in 1980, which, with respect to inventions made with federal funding, permits a university, small business, or non-profit institution to elect to pursue ownership of an invention in preference to the government.
The passage of the Bayh-Dole Act has largely been viewed as an enormous success for both the private and public sector. My colleague Oliver P. Couture, Ph.D., recently noted, “By allowing the public sector to assume the risk of basic research and keep ownership of their inventions, [the Bayh-Dole Act] allows the business sector to use the positive externalities generated from this research and the certainty of ownership to lower their risk and invest more in developing more products for consumers.”
Technology transfer can happen in a variety of ways, sometimes broadly and informally through the publishing of information, and other times more formally through partnerships or the licensing of intellectual property. The struggle that persists for many technology transfer professionals at universities and other government agencies alike is how to successfully reach and license their technologies to potential licensees. Finding the right licensee can result in a huge return, as favorable licensing terms on a transformative technology can help fund a technology transfer office and further research at a university for more than a decade.
Even The National Aeronautics and Space Administration (NASA) struggles with similar issues. Earlier this year, NASA’s Office of Inspector General published a report on NASA’s technology transfer process, finding one particular Center at NASA experiences poor technology transfer performance outcomes compared to the other NASA Center. This Center suffers from a lower percentage of licenses as well as delays in processing of new technology reports (NTRs) and patent applications. This Center’s technology transfer process was hindered by a lack of adequate controls and poor collaboration between its Technology Transfer Office and the Office of Patent Counsel, leading to many instances where the Patent Counsel did not use the standard review process for determining commercial viability of a new technology.
Universities technology transfer offices experiencing similar issues should look to this report for concrete suggestions on improving opportunities for licensing their technologies. The report, for example, suggests the NASA Technology Transfer Program Executive (1) examine Center-specific operations and enhancements to determine those that could be beneficial if implemented Agency-wide; (2) complete implementation of the two-party authentication system as soon as possible to minimize instances of offices bypassing patenting process requirements; (3) make needed changes in technology transfer processes or personnel; and (4) establish firm completion dates for outstanding action items.