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Evaluating academic technology transfer performance by how well access to knowledge is facilitated––defining an access metric

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Abstract

Why should research institutions engage in technology transfer? Some say it is about the money. Others say it is about public service and benefit. In the end, we measure what we value. If we only measure money, we confound the non-profit mission of the research institution. If we measure economic impact, the non-profit technology transfer office is often expected to become the economic developer, confusing real estate and business development with technology transfer, often without additional funding. These mission strains lead to overwhelm, fatigue, service shortcomings, and unhappy customers across all classes of stakeholders. This article suggests a return to center for academic technology transfer offices (TTOs) by focusing on a most important question for drivers of our present global knowledge economy––how well does a TTO facilitate access to knowledge protected by intellectual property of its faculty and institution? This article proposes that academic technology transfer performance should be evaluated by how well a TTO avails access to knowledge. Given that performance measures are also referred to as “metrics,” we call this preferred outcomes orientation an access metric.

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References

  • Association of University Technology Managers (AUTM) Annual Licensing Survey. (2004). http://www.autm.net/events/File/04AUTMSurveySum-US.pdf, portions excerpted and reprinted with permission.

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Acknowledgements

The idea of an access metric was seeded by many, but of critical importance was that human engagement which drives all knowledge—inquiry. Someone asked a great question. In 2004, in preparation for the Association of University Technology Managers (AUTM) Executive Forum, two Harvard University affiliated technology transfer directors, Stephen Atkinson and Joyce Brinton, had the good sense and aplomb to engage Derek Bok, then President of Harvard University and author of the book, “Universities in the Marketplace: The Commercialization of Higher Education” (Princeton University Press, 2003) in a discussion about academic technology transfer. President Bok posed the following question to engage thought leadership in the field: “Are university technology transfer offices evaluated on their ability to balance monetary and nonmonetary benefits?” This question became the topic of much subsequent discussion, more thought, and a vision statement for at least one university to define what best practice academic technology transfer must become. Johns Hopkins Technology Transfer office vision statement is as follows:

JHTT Vision The Johns Hopkins University (JHU) Technology Transfer office will master and lead best practice in academic technology transfer by leveraging JHU technology and intellectual property to maximize its value to society, both monetary and non-monetary. We will engage strategically with JHU stakeholders—faculty, industry, sister institutions, funding entities—to achieve this vision of knowledge stewardship as a component of social responsibility integral with the academic mission of education. Our success will be defined by how effectively we facilitate access to JHU technology, by our ability to be as resourceful as possible with JHU knowledge advances and research expertise, by our ability to balance monetary and non-monetary benefits of JHU knowledge advances, and by our ability to deliver value to stakeholders in a manner which preserves and advances the quality of scholarship at Johns Hopkins University.

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Correspondence to Jill Ann Tarzian Sorensen.

Appendices

Appendix 1: Academic Bill of Rights and Responsibilities

By: Donald A. Chambers and Jill A. Tarzian Sorensen

We, the people of and for the Academy, in order to form a more perfect cooperative with industry and government (collectively the “Parties”), establish justice and public benefit among us by the following tenets, which are intended to insure fundamental rights of inquiry, knowledge access, exchange and advance, to promote the general welfare.

  1. (1)

    Academy is a society of scholars engaged in advancing and promulgating knowledge.

  2. (2)

    The mission of the Academy is to share knowledge (teach), advance knowledge (research), to promote the public good by translating the benefits of knowledge in a manner which best serves the fundamental research and teaching missions of the Academy (public service).

  3. (3)

    Academic technology transfer facilitates the mission of the Academy by promoting knowledge sharing, advancement and use.

  4. (4)

    Promoting economic development through knowledge transfer serves the public good by translating the benefits of knowledge, provided:

  • the researcher’s right of academic inquiry is not encumbered in the technology transfer process

  • the public good is served through a licensing strategy that encourages broadest access to the technology, especially for medical uses and research tools

  • competition is encouraged within the bounds of the law.

  1. (5)

    The fundamental right of academic inquiry inures to the benefit of the individual scholar, as well as the academic community, regardless of individual academic standing.

  2. (6)

    In team-based research, where data sets and ideas are pooled, research norms shall drive research work product management, retention, access and use, and shall be honored above the desires of any individual of the research team.

  3. (7)

    All intellectual contributions to an invention or creative work product must be accounted for and duly credited, favoring access rights for all contributors. Those who do not abide by common courtesies of notice and use shall waive rights of use for third parties against whom they wish to assert proprietary interests.

  4. (8)

    The Parties shall make no law or establish any business practice which unduly abridges the freedom of speech and publication, or the right of any Party representatives to peaceably assemble, such as by holding seminars and conferences, to promote the progress of science and the useful arts.

  5. (9)

    No private property shall be taken for public use without prior written consent of that property owner and without just compensation.

  6. (10)

    No public property shall be used for private gain without prior consent and without just compensation for such use.

Addendum II

Managing an academic technology transfer office by honing efficiencies for conventional performance metrics

Essentially seven categories of activities or “status classifications” describe how to manage conventional components of a university intellectual property portfolio. Six of these relate to active inventions, one relates to inactive inventions—the things you either assign back to inventors or third parties, or allow to pass to the public domain. Of the active inventions in a portfolio, the six primary categories of activity status are:

  • New

  • Hold

  • Evaluating

  • Marketing

  • Negotiating

  • Contract executed (option, license, third party agreement sharing management or assignment for value requiring continuing monitoring)

Performance reports based on each status category form evaluation inputs for the purpose of planning and budgeting checks which, in turn, allow the manager to assess where resources need to be allocated to adapt or improve practice standards in the future.

1.1 New invention disclosures

New invention disclosures (“I” status, for purpose of performance tracking summarized in Table 2 above) submitted to a technology transfer office require specific management. An office might determine that every new invention disclosed to the office should receive a tracking number, an acknowledgement of receipt, sent to all of the inventors, with a copy to their department head or dean, and a notice of who is assigned to handle the disclosure. A prompt time period for doing this is usually two days, but may vary from office to office. New invention disclosures should not sit around in an office, so tracking activity for “I” cases helps to keep things moving through a management pipeline by clarifying what happens next and in what time frame.

1.2 Hold

Every new disclosure should be moved from the “new” category to the next action category as promptly as possible. In some cases, action is not possible because the office is waiting for something—additional information from the inventor, more data, a patent filing. In these cases, the technology manager should hold (“H”) the case for further work-up, communicating the rationale for that decision to the inventors, then timing follow-ups for tracking purposes.

1.3 Evaluating

The drive in a technology transfer office should always be to take action, so if there is no basis to NOT do so, as in to put something on hold for good reason communicated to the inventor, then the next action step is to evaluate (“E”) the technology. Technology evaluation often involves an assessment of whether or not to invest time, attention, or additional resources such as patenting the invention. The result of evaluation is a decision to move in one of these directions or to not invest in the technology. Many offices place time limits on and specific performance criteria for what comprises evaluation. For example, 4–8 weeks is considered a good standard for when an investment decision should be rendered from the time the invention was disclosed, even if the investment decision is to wait six more months until more data is generated.

1.4 Marketing

If an investment decision is positive and it is timely to publish information about the technology, marketing (“M”) activities are commenced. These can be active, such as targeting potential licensees and contacting them directly, or passive such as by posting marketing summaries to the internet and waiting for leads to appear. Marketing often takes months, but it still is possible to stage portfolio management to, for example, review status of “M” cases regularly, targeting a two year maximum, as an example, for pursuing marketing with no success before releasing a technology. This certainly will depend upon the technology and the relevant market(s). The point is more about framing service needs and expectations, then aligning resources to address those needs and expectations.

1.5 Negotiating

If marketing generates a licensing lead, the case status may advance to term sheet or license negotiation (“N”). Managers can use negotiation (N) status tracking as a tool for prioritizing their actions and to apprise stakeholders of the status of invention management. Often negotiation takes place on parallel track with other activities, such as continuing marketing. Designating a special category for negotiation helps to track this highest category of management priority and draw information from a portfolio database on contracts being negotiated at any given point.

1.6 Contract executed

Successful negotiations result in agreements executed (C). If a negotiation is not successful, the technology is returned to a marketing queue (M) or, possibly, released to inactive status. Once agreements are executed, the financial and performance terms should be summarized and managed in a way that coordinates compliance. Do not rely on the agreement to monitor itself, nor people to remember what is in each agreement. This is work better left to knowledge management systems. A quality record-keeping and reporting system will track and report on due dates, payments and performance milestones for the manager in an automated, predictable, business process-refined fashion. The more tasks walking around in a manager’s head or piled on their desk, the more vulnerable is your portfolio management.

These conventional metrics are only examples of standard IP portfolio management. Daily, monthly, weekly or quarterly portfolio reports will help technology managers and technology transfer office directors benchmark core competency licensing performance of the I, H, E, M, N, C basics. This represents operational baseline. If arranged properly, each manager can generate his or her own technology portfolio report in a format that is similar across office portfolios, allows for status classification trends analysis and performance benchmarking, communicates quantification of office performance regularly to stakeholders, builds understanding and expectations for service delivered by the office, and compiles relevant information for annual reporting purposes.

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Sorensen, J.A.T., Chambers, D.A. Evaluating academic technology transfer performance by how well access to knowledge is facilitated––defining an access metric. J Technol Transfer 33, 534–547 (2008). https://doi.org/10.1007/s10961-007-9038-y

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