I sat down with Cartier Esham, Director, Emerging Company Health and Regulatory Affairs at BIO, to discuss BIO’s new survey on licensing trends between universities and companies, part of a larger process of technology transfer. BIO will release the survey at this year’s BIO Investor Forum Technology Transfer Symposium, October 28, 2009. You can learn more about by visiting www.bio.org/ip/techtransfer.
Let’s start at the beginning – what makes the process of technology transfer interesting to those who care about innovation in America? What does technology transfer have to do with getting products out to people who want and need them?
Developing research into products and technologies for use by the public is a long and complex process. In the biotechnology sector once a company obtains a license for a discovery they will spend up to or more than a decade and hundreds of millions of dollars developing that discovery into a commercially available product that also meets all required regulatory standards. Innovation, especially in the biotechnology sector, often requires that the public and the private sectors work together. Since enactment of the Bayh-Dole Act in 1980 – which gave U.S. universities the right to retain rights to inventions made with government funding – more discoveries are being moved out of the laboratory into the public and providing enormous economic, health, an environmental benefits to our citizens. Prior to this Act only 5% of publicly-funded research were ever developed into publically available products. It is imperative that we protect the laws and policies that have stimulated the transfer of technology and foster public and private sector interactions so that key discoveries in our laboratories are developed into products/technologies available to the public. We need to cultivate the dialogue among universities, the federal government and the private sector and work together to identify practices that will ensure the effective transfer of technology in the United States.
What’s so hard about making a deal about a technology?
There are always difficulties in public and private sector negotiations since while many of the goals are the shared some of the perspectives may differ. And really, there is no one size fits all approach. BIO recently conducted a survey among its members on technology transfer and in-license agreement negotiations. The survey showed that monetary terms was the most difficult part of the in-license negotiation process. We then asked several questions of our members on what types of payment structures they have for their license agreements and what metric they typically use to calculate value. We will be unveiling this survey during BIO’s first annual Technology Transfer Symposium in California on October 28th. It is our hope that by collecting this data we can facilitate discussions and collect information from the biotechnology industry and university and federal labs on best practices for in-license negotiations.
Licensing can be a pretty complicated process, from what it sounds like. You have lots of cooks in the innovation kitchen, so to speak… what wasn’t known about licensing that you hoped to understand with the survey?
I think one of the more startling findings of the survey is the lack of license agreements the biotechnology industry has with the federal government. Given that the Unites States has some of the best research facilities and premier scientists working on break through research in the health, energy, food and environment fields, it seems critical that we work to ensure this research – where appropriate – should not sit in a lab but be developed in a way that will benefit the public.
Final question: if you were an inventor of a stellar, unfunded platform technology, how would you approach today’s market, given these licensing trends?
A fundamental part of successful transfer of technology is finding the right partner – this goes for universities who seek companies to license their technology and companies looking for a specific technology that fits into their research and development pipeline. BIO would like work on how to improve communications between the public and private sectors on how to identify and find licensing opportunities.