First let me say that in my opinion having a “debate” on pros and cons of express licensing doesn’t go far enough. The discussion should also include marketing technologies outside of our personal networks and why we haven’t fully embraced the technologies available to us for doing so. Also, a definition of what folks think “express licensing” means, would probably narrow the scope to a manageable level. Plus, asking the folks from tech transfer offices to weigh in on this doesn't make sense. So few of them have a clue about how to effectively and efficiently tackle express licensing that you couldn't fill a closet much less a ballroom with those who could speak intelligently on the subject.
As a primer or maybe a “fight-starter,” I would suggest that we are really debating the difference between inefficient methods and efficient marketing and licensing practices.
I find myself writing this, having spent the last two-and-a-half years having thought, ate, breathed and slept "express licensing" and, in broader terms, Marketing University I.P. on the Web.
SO, with that having been said...
The problem is, express licensing isn't really the issue. The real issue is the effective use of tools to market available technologies. The reason that express licensing doesn't work and hasn't really caught on for most universities has little to do with the licensing part of the equation. Instead the issues reside in the reality that folks can't find the technologies that we have available for licensing.
The Bayh-Dole Act recognized the incredible potential of university inventions, yet a staggering number of promising technologies remain untapped; The economic and humanitarian benefits unrealized, because of the gap in getting inventions noticed and into the hands of companies with the development funding necessary to nurture these vital innovations and discoveries. Connecting companies with viable licensing opportunities remains the most significant challenge along the research-to-deployment continuum.
The typical marketing and licensing model, for US Technology Transfer offices, relies heavily on inefficient marketing techniques and constantly cultivating professional relationships with industry contacts. I am by no means asserting that we should not cultivate strong industry relationships, but employing this methodology means that when a researcher produces a new invention or makes a breakthrough discovery, the ability to successfully commercialize that intellectual property is often directly tied to the resources available to the technology transfer office and the personal contacts of the technology transfer professional assigned to marketing that technology. Common sense dictates that if you are an overworked portfolio manager in a tech transfer office, juggling dozens, if not hundreds, of intellectual property disclosures, you are more likely to dedicate your time to ideas that will have huge, obvious, monetary pay-offs, rather than trying to shepherd inventions with less obvious commercial potential through the morass of red-tape and paperwork that accompanies most transformative ideas, coming out of pure research or academe.
The tech transfer industry, as a whole, hasn’t kept up with the staggering advances in electronic marketing techniques and search engine optimization strategies, over the last decade. Because of thsi fundamental truth, the only viable option for transferring the latest technology to someone who can turn it into jobs, growth and money for your university, lab or hospital, is sending more emails and making more phone calls, all-the-while eagerly waiting for serendipity to smile upon your efforts and leaving you hoping that the new technology is at the perfect intersection of innovation, need, ability, resources and the right person actually knowing the other right person, so they can engineer a meeting. In short; in the tech transfer world, it has always been about how much money you have and whom you know, rather than how good your idea is; but money is tight and “hope” is neither a sound strategy nor a successful tactic.
Because of this omnipresent paradigm, Technology Transfer Offices have fallen far behind the rest of the business world when it comes to utilizing the most helpful and transformative communication tools at their disposal; Web Marketing. One of the effects that this deficiency in professional and organizational development has, is that technology transfer professionals, and specifically those who are tasked with marketing intellectual property, occasionally operate on differently communication levels than those with whom they are supposed to interact.
The typical TTO - marketing person spends her time making phone calls, sending emails, and trying to figure out how to get the contact information for completely unqualified leads at monolithic companies. Meanwhile, most of the jobs created in the United States, and most of the folks making revolutionary economic and societal changes, based on untapped ideas and elbow grease, are never going to hear about the wealth of amazing technological treasures available to them, because they aren’t part of a giant machine that churns out a new product once every ten years.
Entrepreneurs; those far more likely to turn innovative research developments into practical business products, don’t spend their days waiting for someone in a tech transfer office to call them. Additionally, it is arrogant and naïve to think that corporate researchers and product development engineers have time to visit every university website; trolling the ivy covered depths of neglected discoveries. The folks that will lead the nation and, specifically, the area’s most affected by the current economic distress, won’t do so by trudging through acronym-laden technology descriptions, jargon filled abstracts and indecipherable static files, meant more for their peers than for someone who might turn their work into a commercial venture.
The reason the future of technology transfer for public institutions is so cloudy is that most new technologies, even the most exciting, promising and commercially viable ones, can only be found by an extremely persistent individual, who knows precisely which technology he or she is looking for; has somehow discovered the website where the information is stored; understands how to navigate through academic databases, journal publications and patent searches, to ultimately find enough information to lead them to someone in the Technology Transfer Office. Even if one successfully runs that gauntlet, what follows is a significant investment in person-hours required, by both the potential licensee and the Intellectual Property owner, to facilitate the sharing of information, process paperwork and complete several manual steps in the data gathering and licensing process.
Many Technology Transfer Offices, particularly those located in economically distressed regions, think they cannot afford the resource expenditure necessary to fix this problem or, even if they can, don’t know where to start, so they continue to use outdated and inefficient means to reach potential licensees. These Technology Transfer Offices have been taught to believe this business model will lead to licensing, commercialization, and job creation. The unfortunate reality is that inadequate marketing strategies, antiquated systems and inappropriately used software applications simply do not provide most tech transfer offices with a reliable mechanism to reach beyond their own personal networks, or outside their own geographic reach, to garner unsolicited leads. The absence of adequate education and training targeted to the unique issues and circumstances that technology transfer offices face, and a lack of specialized technology development for this small niche industry, make it incredibly difficult to create an environment for potential licensees to even find viable licensing opportunities.
Efficient Licensing
The problem that I have with most folks that think they are doing express licensing is that they STILL NEGOTIATE! It is as if we think it is our job to negotiate.
Imagine if your TV broke. You would have a problem that needed a solution. Because we have trained licensee’s to think a certain way about buying (licensing) stuff from us, If you were buying the TV from a Target store, as if it were University IP, it might go something like this.
You/licensee: walk into Target and say to the manager “I would like to buy that TV.”
Store/Technology Manager; “Great; That TV is $539. How would you like to pay for that?”
You/licensee: “Whoa, hold up big fella! We are going to have to negotiate. I said I like the TV, and it does all of the things I need a TV to do, but I am not thrilled by the packaging; Especially the tape on the box. No, before I buy that TV, I am going to need you to make some changes. The thing is, I don’t really like the way it is packaged. I need you to send it back to China, and repackage it. Also, I need you to remove the tape with the red Target® logo on it and just use clear tape.
Store/Technology Manager; “Ummm. What?!”
You/licensee: “Yeah, if you do all that stuff, I will buy that TV for the exact same price that you have it listed at right now.”
Now, at Target, if the Store/Technology Manager calls security and has you (justifiably) thrown out, you can just got to another store. But it is highly unlikely that you will turn around, go back to your house and decide that it might be easier to get exactly what you want by just building your own TV. Even if you could, it would take too long and cost too much. But this is the crazy, contra-intuitive, sandbox that we in tech transfer find ourselves playing in every day.
If we just said: “Nope, we have a set of standards that we cannot stray from so, if you want it, here it is!” Folks would have no option but to accept it – or not. Either way we can justify our actions.
Does This Sound Familiar
Currently, when an individual or organization wishes to enter into a non-exclusive license agreement for the use of commercialized intellectual property with a University, a manual process must be undertaken whereby both the potential licensee and employees of the Technology Transfer office can expect to engage in an inefficient, and occasionally arduous, licensing process.
First, the customer must identify the product he wishes to license and either, contact the inventor for information on how to license the IP, or figure out for himself how to engage the TTO.
Then he must either call or email the appropriate TTO employee and wait for a response, after which they receive further instructions regarding the exact license parameters and the processes and procedures they must undertake in order to complete what should be a relatively simple transaction.
Licensing Non-Exclusives (Because Gerry mentioned it)
In the best-case scenario, using some forward-thinking TTO’s web site, a customer might be able to:
- Obtain a couple of paragraphs of background information, a simple set of license instructions and a downloadable copy of the license, from the website, which is usually in PDF form.
- The customer must then mail, fax or email several hand-signed copies of the license back to the TTO.
- They must, also remit payment for the license, either by mailing a check or via wire transfer (which has its own set of instructions and manual internal processes.)
In either case, several, steps must be taken to reconcile this transaction in the accounting process. In cases that I am familiar with, the check comes in then sits on a desk or in a basket for a while. When it is opened, someone stamps a date on it and begins to enter the transaction and customer data into some central accounting system software (if they are lucky). Sometimes, however, the info gets added to the TTO’s tech management database but there is a separate process by which the university and the TTO have to account for the money. In those cases, another step is added to the process which means that the check has to clear the bank, then a TTO staffer has to find and enter the details of THAT process into a different system before materials can licenses are approved and sent to the licensee.
Finally, upon receipt of the Executed License, the “cutting edge” University forwards an electronic copy of the reproducible materials and content to the licensee. If the licensed materials are something that must be boxed up and shipped, there is yet another set of procedures for fulfillment and shipping communication. and, of course, all notifications and shipping/tracking documents must then be manually entered then be tracked in your CRM or technology management system.
And what about export controls?
Our express licensing system has multiple levels of export control mechanisms. We can restrict information, access and ability-to-license for all technologies or even individual license types for a specific technology, based on IP address, country, state, physical address of the licensee and a bunch of other variables. So, for instance, someone in Afghanistan, could license the academic version of some piece of software, to use for research purposes, but not be allowed to even get technical information about the commercial or more developed versions of the same technology.
However, in most cases, using the “Old school ways of doing things, getting your hands on the technology once you have jumped through these hoops will take at best, a few weeks, and most often several months.
Let's Negotiate
Sadly, this is currently a “Best-Case” scenario for most TTO’s. Most often though, the customer, since she has already gone through the trouble of actually endeavoring to speak directly to someone at the Tech Transfer Office, says:
“Can we change the language in section XXX …I just don’t know if we can do it that way here at our company/ university/ hospital/ lab…,” etc?
To which the Technology Manager inevitably says “of course; just let me send that to our lawyers and make sure it is OK with them.”
This action triggers the customer to suddenly believe that if there are lawyers involved, maybe theirs should be too. 2 months later the technology, which could have been licensed immediately had there been a mechanism in place for doing so, is still stuck in legal terms-and-conditions purgatory and might never make it out.
This is, simply, a poor way to treat a customer who wants nothing more than to find a useful technology, learn more about it, pay for and execute a license and fulfill the order. The worst part about it, for the TTO, isn’t even the delay; the worst part is that you have trained another customer to automatically assume that the terms and conditions, that are included in the licenses that you promote, are arbitrary and that one would be a sucker if they simply accepted them. This is the same feeling one would get if one were to go to a used car lot and tried to buy a car. We all know how much folks love to negotiate…
