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Ialways knew I wanted to study science, and it was almost
by accident that I chose to major in geology as an undergraduate at
Princeton University. Because earth science enabled me to study
biology, chemistry, and physics and apply them to solving
geological problems, my education was rather broad. As a graduate
student at the California Institute of Technology (Caltech), I
worked on developing a new method for measuring the low temperature
history of Earth's crust, a topic that forced me to learn about
instrumentation and engineering. After graduate school, I was
poised to pursue an academic career; however, like many students
today, I was unsure whether or not I wanted to work in academia. So
many colleagues had endured the endless chain of research positions
with no tenure track offers, and this discouraged me.
As a graduate student, I invented a golf club (my favorite
pastime) that was subsequently licensed to a start-up company. This
experience was not only my first tutorial on the intricacies of
patents and licensing, but was also an introduction to Mike Keller,
the chief patent counsel at Caltech. When I was looking for
alternatives to academia and industry research positions, Mike
suggested I apply to work at NASA's Jet Propulsion Laboratory
(JPL), evaluating their new technology.
Caltech manages JPL for NASA, and consequently, Caltech gets the
right to intellectual property developed at JPL. Because there are
more than 250 new inventions disclosed at JPL each year, they
require technologists whose primary function is to write technical
and commercial evaluations of the technology as it is disclosed. I
accepted a position at JPL and ended up spending most of my time
during the first year learning about electrical engineering,
telecommunications, applied physics, etc., both from the standpoint
of understanding the science behind the technology and trying to
determine its applicability to industry. I found that my broad
training in earth science was very helpful in acquiring a working
knowledge of new fields expeditiously. Moreover, the experience was
invaluable. Not only did I learn quite a bit of new material, but I
became somewhat conversant with the state of high technology in
this country. I have since been asked to consult for new companies,
and I sit on the scientific advisory board of a company in Virginia
that incubates new technology.
My original job at JPL has evolved into my present position, a
joint appointment as an associate in the Office of the Intellectual
Property Counsel and the Office of Technology Transfer at Caltech.
My work includes managing the intellectual property portfolio at
JPL, licensing technology, and working with start-ups spun out of
Caltech and JPL. Managing the portfolio involves choosing which
inventions are ripe for patent prosecution, directing outside
counsel in how to proceed with prosecuting our patent applications,
and taking a strategic look at the inventions in the portfolio to
assess technological strengths and weaknesses at JPL. Licensing the
technology involves negotiating and drafting license agreements
with companies, which will hopefully enable the companies to
develop new products and services that will stimulate the economy.
Because Caltech is rather start-up oriented (40-plus companies
since 1995), I have had quite a bit of experience working with new
companies, and I have had a unique window into what makes them
succeed and what causes them to fail.
The training of professionals in corporate or university
technology transfer programs varies significantly. There are
lawyers, people with business degrees, people with contracts
experience, and technologists. As it is necessary to know something
about all of these fields, I have had to learn patent law, contract
law, and basic business practice. However, I have found that my
technical background has been very helpful in connecting with the
inventors. This has enabled me to better communicate with them and
better serve as their advocate when it comes to commercializing the
technology. As a result, I believe that a person with a technical
background is well suited for a career in technology transfer.
While it can be rewarding and enjoyable, a couple of years of
technology transfer experience for a recent graduate can also
create new career opportunities. It is often difficult for
companies to find technologists/scientists with a working knowledge
of intellectual property law and business development. I have
greatly enjoyed my experience in technology transfer, and I would
encourage recent graduates who are unsure of what they want as a
career path to consider working in the field, for it may not only
be the start of a career as a technology transfer professional, it
may also be a stepping stone to new business opportunities.