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April 13, 2006

Faculty share some tech transfer experiences

Professors who have been involved firsthand with the questions of commercializing their research had an opportunity to discuss their experiences at the March 29 plenary event.

Lauren B. Resnick, director of the Learning Research and Development Center (LRDC), gave an example of how, in some cases, intellectual property can be disseminated widely without licensing to an outside firm.

LRDC’s Institute for Learning writes contracts with school districts to provide expertise to implement LRDC’s “nested learning communities” philosophy in schools.

With nearly $1 million in contracts last year, she said this is indeed commercialization. “It’s definitely entrepreneurial but it’s being done for now internally.”

Although LRDC periodically examines the possibility of forming a spinoff, for now it’s chosen to pass.

“So far, we’ve decided to stay in the University mainly because we want to ensure that the ideas, tools and practices that we are bringing our clients are absolutely up to date because of this continuous interaction inside LRDC and other parts of the University,” Resnick said.

“The University affiliation is very valued by our clients. They like that we’re not a company, that we’re a university and we have no idea whether they would like us as much if we were outside,” she said.

Internal concerns also are a factor: “We want to ensure we can work together,” she said, noting that faculty pull together and no one feels as though someone else is reaping a profit on their work. A spinoff could be added when more products and consulting services become more standardized, she said.

In a more traditional vein, electrical and computer engineering professor Marlin H. Mickle discussed his experience as a longtime participant in technology transfer. Mickle’s work in developing radio frequency identification devices (RFIDs) that can replace bar codes has drawn the interest of numerous companies, including startup Supply Systems, Inc., which licensed technology on printing polymer antennas for RFID tags and for connecting antennas and other elements to a silicon chip.

Another startup, FireFly Power Technologies, Inc., licenses Mickle’s energy harvesting technology. And medical applications of the technology, including deep brain stimulation, vagal nerve stimulation and others, are at various stages of licensing.

Mickle noted that academic entrepreneurship can present potential conflicts of interest in terms of excessive commercial reliance on industry to support research and the potential for that to dictate the direction of research, or the potential for universities to show favoritism in funding faculty enterprises.

“That’s really not where this has been turning,” he said of the idea that universities are “making a financial killing” on technology transfer. “It’s been turning into community development and economic development,” he said.

Mickle sees great opportunities for professors who find commercial outlets for their research.

Commercial partnerships can fund equipment purchases that might be impossible if requested for pure research alone. They also provide business community exposure that “offers you an education that you’ll never be able to get within the University,” he said. And personal risk in the investment is minimized.

“This is considered to be the last place in which you can be in business without actually having to make the capital investment,” Mickle said.

Former Harvard and Carnegie Mellon University professor D. Lansing Taylor, who has 15 patents and experience with several startup companies based on his technology, said the role of academia in society includes not only education but the advancement of knowledge, the communication of that knowledge and the use of that knowledge to improve the community.

Universities tend to dominate their communities, said Taylor, now chief executive officer of Cellumen, Inc., adding that he thinks institutes of higher education owe something to the people of the surrounding community.

Although he believes there always has been an entrepreneurial base within the academic community, the traditional environment has been changed in the past quarter-century, in part due to the 1980 Bayh-Dole Act, which allowed universities to commercialize intellectual property that was developed with federal funding.

“There have been more of the interests and in some cases pressure to patent inventions to assist in licensing inventions to industry, spinning off companies from the university, spending a sabbatical in an industry laboratory or environment as opposed to an academic one and serving on industry or corporate advisory boards,” he said.

“It’s fair to ask, are we going from a publish-or-perish environment to a patent-and-prosper? Are we trading tech transfer for open sharing of knowledge? Are we creating unnecessary academic conflicts of interest? Are we changing unnecessarily the culture of the academic community? And does all of this cause a de-emphasis on education?”

Those questions on whether commercial activities are out of place in academia should be addressed by faculty and administrators, he said.

Prior to Bayh-Dole, some important research that was paid for by the public was never brought to market. “With the growth of funding from the federal government from the ’50s, ’60s and into the ’70s, there was a tremendous increase in the amount of important research published but it did not benefit the public because pharmaceutical industries and companies just didn’t pick up things that were in the public domain because it was just too much of a risk,” he said.

“The key change that occurred was that universities were allowed to obtain patents and commercialize research with the goal being the benefit of the public.”

An unintended side effect: “There were also benefits to the university and the faculty,” he said. A focus on ethics, established rules and procedures and transparency is critical to avoid real or perceived conflicts of interest that may develop, he said. “I think with this kind of approach, serious mistakes can be avoided while getting the most out of an opportunity.”

There’s personal satisfaction in bringing basic research to a practical level, but there’s also the potential for financial gain, which Taylor thinks is “just fine.”

Although his path is not for all academics, “I think we’re not on the slippery slope, but I think commercial entrepreneuring as part of the academic experience can be very rewarding to those who wish to take the ride,” Taylor said.

“It can greatly help the faculty, students, the university and the community and it’s something I think the right subset of faculty of the university can and should take part in.”

—Kimberly K. Barlow

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