University Technology Licensing Offices: Love 'Em or Leave 'Em?

described why a promising academic doctor at Stanford left to start his own company. This is not, by any means, the first time we have heard about doctors or doctors-to-be leaving clinical medicine for “all-in” entrepreneurship, nor the first time we’ve heard debated whether that is a good idea or not.

One reason I've heard more than once from both faculty and community stakeholders is the difficulties working with a university technology transfer (OTT) or Office of Technology Licensing (OTL), such as the one at Stanford.

University technology licensing is big business and growing. (Here is how much it grew in 2015.) Yet, the barriers and disadvantages of working with a university OTT/OTL can sometimes lead faculty to conclude that it would be better to work without them, and, sometimes that requires adjusting their university employment arrangement or leaving all together. Here are some pros and cons to consider:

1. Who owns the IP? In most instances, it will be the university, if faculty used substantial resources to discover and/or develop the idea, invention, or discovery.

2. Is your OTT interested in moving your idea forward or will it relinquish the IP rights to back to the you?

3. Is your idea patentable? Do you have freedom to operate? And have you made public disclosures?

4. Is your idea technically feasible, and how far have you come in developing it?

5. What are the funding requirements for your idea and is continued affiliation with the university an asset or liability, eg, access to NIH grants or SBIR/STTR grants and contracts?

6. Do you have the personal motivation to continue on the faculty or the ability to adjust your employment status to your satisfaction?

7. What is the OTT hassle factor? How much pain or satisfaction do you get from working with them?

8. What is the revenue share and downstream licensing split and is it enough to justify working with the OTT?

9. Is your university savvy in dealing with biopharma, medtech, and digital health research, development, and deployment?

10. Do you need clinical colleagues and access to existing clinical networks to test and validate your idea?

11. Is it beneficial to have access to student and trainee talent for little or no money?

12. Have you assembled an entrepreneurial team with a sense of urgency that can move your idea

forward?

13. Are other academic partners a help or hindrance?

14. Are university and practice plan policies and procedures more anti-entrepreneurial than supportive?

15. Is your boss, department chairman, or dean supportive of your entrepreneurial efforts?

16. Are you early or late in your academic career and what are the risks and opportunity costs of leaving or staying?

Academic technology transfer offices, like all things sick care, are undergoing change and reforming themselves to be more responsive to technology commercialization and licensing stakeholders. Some don't think they are moving fast enough and want to reform the Bayh-Dole Act. They argue that “Bayh-Dole shifted the incentive structure that governed the research and development path of federally funded inventions by allowing institutions to own inventions resulting from federally sponsored research and to exclusively license those inventions. The Act also requires the institution to establish patent policies for its employees, to actively seek patent protection and to encourage the development of their inventions. Beyond these basic requirements, the legislation leaves a great deal of discretion to the institutions. This flexibility has been both a source of strength for Bayh-Dole and a weakness. Many of the issues that are identified today as negative consequences of Bayh-Dole can be traced to the institutional policies structured to optimize institutional benefits and income, rather than to the Act itself.”

University faculty entrepreneurs have to consider many factors when they are deciding to love the OTT/OTL or leave them and the university, and no one situation is the same as another. Either way, the challenges of bringing an idea to patients are substantial and, consequently, require careful thought before jumping ship.