Faculty Positions: Transferring Technology

California Instituteof Technology - http://www.caltech.edu Law Offices of Anne M.Schneiderman, Ph.D. - http://www.schneidermanlaw.com Massachusetts Institute of Technology - http://web.mit.edu Washington University in St. Louis - http://www.wustl.edu

Science usually depends partly on money. In the past, people generally thought of inventors and engineers as the ones with commercial aspirations. For example, Thomas Edison focused intently on patenting his work - earning 1,093 patents during his career. Now, many academic scientists patent their discoveries, and major universities sprout startups on a regular basis. To survive in today's commercial environment, scientists need help with legal issues and patent applications.

Discoveries often spur discussions of intellectual property, or IP. It represents a legal framework to stimulate innovation. Anne M. Schneiderman, a patent attorney who runs her own firm in Ithaca, New York, explains that IP covers many classes: patents, trademarks, and trade secrets, or proprietary information inside a company. “These categories of IP can be viewed like real property,” she says. “In the case of patents, you actually get a real deed that describes the boundaries of the IP.”

A scientist seeks a patent to protect the possible commercial applications of a discovery. Fred Farina, assistant vice president in the Office of Technology Transfer at the California Institute of Technology, says, “A patent gives its owner a time-limited monopoly, so they can commercially exploit their patented invention.”

Not just anything, however, can be patented. Milind Sant, business development director in the Office of Technology Management at Washington University in St. Louis, says, a patentable concept must be new, and it must not be obvious. Moreover, he says that the concept should be commercially useful and include some work that shows its potential. “This enhances the value of a patent application,” he says.

In some cases, an organization - say, a university - possesses the means to invent new ideas but not to commercialize them. That's where technology transfer picks up the process. Farina describes technology transfer as “taking an invention that is a concept and moving it to the marketplace as a product or service.”

In addition to monetary advances, IP and technology transfer can provide public benefits. “If someone invents something that could help people,” says Andrea Schievella, a technology licensing officer at the Massachusetts Institute of Technology, “what a terrible shame it is if no one does anything with it.” She gives this scenario: “What if somebody is collaborating with a medical school and comes up with compounds that fight cancer? If you don't patent those and have someone license them, no company will ever develop them.”

What Scientists Should Know

The interest in IP and technology transfer seems on the rise among younger scientists. “After talking to a number of them,” says Farina, “I find that many have the desire to do a startup of some sort. So they are more aware of IP and technology transfer than scientists were a decade or so ago.” Nonetheless, many scientists do not think along IP lines. “Some scientists still just want to publish results and give the knowledge to the public domain,” says Sant, “but many of the ideas that get published don't get developed.” Turning an idea into a public benefit requires a commercial angle, and that can slip away without patent protection.

How much a scientist needs to know about IP and technology transfer depends on who is being asked. Farina, for example, believes that scientists do not need to know all of the intricacies of these areas. Instead, he thinks that researchers can rely largely on a university's technology transfer office. If someone does not protect discoveries, though, trouble can arise. “We have to fight problems caused by scientists who are not aware of IP, and they publish too soon, which can compromise their rights.”

A patent, though, is not the only way to generate a product from a new idea. “Sometimes, a group prefers to keep something as a trade secret instead of applying for a patent,” Schneiderman says. “A patent is a bargain with the federal government in which the government grants you the right to have a monopoly on your invention for a limited amount of time - generally 20 years from the date of filing the patent application - in exchange for divulging everything about your invention to the public.” The federal government, however, does not enforce the monopoly right; the inventor, patent owner, or licensee bears the burden of enforcement. In some cases, companies prefer to guard the secret, use it, and hope that no one else ever discovers it.

The patenting process varies among universities, but here's an example. It usually starts with an invention disclosure form - basically a description of the invention or concept. Sant says, “Ours includes information about how the invention differs from existing technology and which companies might be interested.” Then, a scientist interacts with the technology transfer office to move ahead with the process. The process also varies between countries. In applying for a patent in the United States, Schneiderman explains, a scientist can take up to a year after presenting information at a meeting. “If you wish to apply for a patent in most other countries,” she says, “you cannot have released anything publicly before filing.”

Also, a scientist might turn to patenting for more than commercial reasons. For instance, science can breed businesses that fund more science. Sant says, “Licensing revenues from a patent come back to the lab so that scientists can do more research.”

Getting the Right Stuff

Many universities provide training on IP and technology transfer. At the California Institute of Technology, the technology transfer office runs regular seminars on these areas. At Washington University in St. Louis, the Office of Technology Management gives presentations and offers an eight-week course that covers issues related to startups. Also, a scientist can just arrange a meeting with a technology transfer officer.

Schneiderman also points out that some technology transfer offices post information on their websites, including invention disclosure forms and instructions on protecting a discovery. Scientists can also learn more from organizations, such as the Association of University Technology Managers ( http://www.autm.net ), the World Intellectual Property Organization ( http://www.wipo.int ), and the United States Patent and Trademark Office (http://www.uspto.gov), which provides resources for inventors ( http://www.uspto.gov/web/offices/com/iip/index.htm ).

In thinking of a patent, though, scientists should not see it as a roadblock to publishing. “We do not hold up publication,” says Schievella. “We work with you to get out the results but to protect them, too.”

A Career Transfer

IP and technology transfer professionals come from many backgrounds. Farina started as an electrical engineer. Then, he sat for the patent agent exam. A patent agent can put together a patent and push it through the process. In cases of patent litigation - enforcing the rights of a patent, for example - a patent attorney takes control. Either way, says Farina, “People usually just fall into this kind of work.” Coming from a scientific background, though, really helps. “It is actually required to sit for the patent bar exam,” says Farina.

Nonetheless, a background in business also plays a fundamental role. Schievella combined science and business to work in this field. She earned a Ph.D. in cellular and molecular biology, completed a postdoc, and then worked in industry. She turned to IP and technology transfer when a conference sparked her interest. Sant followed a similar course. After earning his Ph.D. in organic chemistry, he worked in industry as a medicinal chemist. Then, he moved to business development and earned an M.B.A. Schneiderman also came from a scientific background - nearly 20 years as a neurobiologist. Then, she went to law school, and she now focuses on biotechnology. “My scientific background is very important in reading and understanding the research behind a patent application,” she says. In addition, she points out that jobs for patent attorneys rise and fall with good and bad times for the technology industry. “Still, there are far more jobs for patent attorneys than there are for university researchers,” she says.

Mike May ( mikemay@mindspring.com ) is a publishing consultant for science and technology based in the state of Minnesota, U.S.A.

DOI: 10.1126/science.opms.r0600022