Marcel Mongeon

Tech Transfer is Dead!

Long Live Industry Engagement!

By Marcel D. Mongeon

Recent funding cuts for technology transfer are providing an opportunity for research institutions to focus on a more important objective. Technology transfer came to Canada from the United States after the Bayh-Dole Act was passed in 1980 allowing institutions to own any resulting inventions. Previously, research results made with US federal funding were public domain and free for anyone to use.

There was an inherent contradiction in putting research results into the public domain. Because there could be no exclusivity, business was reluctant to invest in clinical trials or market development. Bayh-Dole changed this paradigm, encouraging development investments in legally protected research results.

The Association of University Technology Managers (AUTM) began tracking various metrics, including the number of patents applied for and licensed, the income arising and the number of start-up companies formed. This is what technology transfer became — seeking patents and finding customers for them by way of licences or the creation of companies.

In Canada, rather than adopting the term ‘technology transfer', it is much more common to find ‘commercialization' or its French translation ‘valorisation'. A federal expert panel on the commercialization of university research reported in Public Investments in University Research: Reaping the Benefits (1999). A more recent expert panel on commercialization was released in 2006 in People and Excellence: The Heart of Successful Commercialization.

In Canada, ‘commercialization' has become synonymous with technology transfer. The tri-council Intellectual Property management (IPM) program and the corresponding provincial and regional programs supported the hiring and training of those who could learn the intricacies of patents, licensing and spin-off company formation. The establishment of regional networks and their collective activities through ACCT Canada have led to a well-defined profession of technology transfer professionals.

But there is a fly in the ointment.

Despite a long history of working with businesses in collaborative research projects, the research contract function in Canadian research institutions was being marginalized at the same time the technology transfer function was growing. Many universities organized their research support offices by separating responsibility for technology transfer from research agreements.

Although there may be various local conditions that militate in favour of such changes, the skills involved in the negotiation of research collaboration agreements with industry are similar to those required for patenting, licensing and spin-off company formation. By splitting the functions between multiple offices, institutions force an inefficient allocation of resources.

Paradoxically, the perceptions of Canadian business in dealing with universities, colleges and research hospitals has deteriorated over the same time that technology transfer has been growing. The 2006 expert panel report suggested that business needs to increase its collaborations at the beginning of the research process rather than at the end point. In other words: we need more research collaboration agreements and fewer patent licences.

A recent international study notes that the patenting/licensing/company formation paradigm (i.e. technology transfer) may be getting in the way of successful university-industry interactions. This should not be a surprise to anyone. After all, a focus on patenting and licensing puts institutions and companies in adversarial roles which they would be lessened if they were working on a collaborative research problem.

Institutions are now at a threshold forced by reallocations in tri-council funding. The IPM program is finished and nothing is replacing it. Provincial and regional programs are also ending. Many skilled people will be out of work as the funding for their technology transfer salaries ends.

Research institutions do not need to lose this valuable resource. The answer is found in just a minor shift in approach. It has been pioneered in Australia and is known as ‘industry engagement'.

The reality in Canada is that industry has never been approached by institutions in a coordinated fashion. Different people from fundraising, student internship, technology transfer and research promotion offices — not to mention individual researchers — fall over each other in approaching business prospects. Institutions spend huge sums in general research advertising without actually inviting businesses to partner with them and giving them a clear path to do so.

Research managers at these institutions can make things easier for business by providing one point of contact for all research purposes. Technology transfer, research communications and research contracts offices can be merged and coordinated; many do this under the title of ‘industrial liaison'.

After a physical reorganization, institutions could then review the metrics that they track. AUCC leads the way by reporting in Momentum on the ‘Value of industrial research contracts'. Coincidentally, of the six metrics used, this is the one that has grown the most. Other metrics such as ‘Number of researchers involved in industrial research contracts' and ‘Number of students with industrial research experience' would also demonstrate a commitment to the concept of industry engagement.

The final piece of the puzzle is to solve the perennial ‘battle of the forms' in negotiating contracts. Rather than every institution having its own favoured clauses and terms, a process similar to the Lambert Agreements in the UK could result in standard template agreements that business and research institutions could use with little additional negotiation required. Either Industry Canada or the research councils are best placed to catalyze and fund such a process. One hopes the benefits will be as obvious to them as they are to everyone else.

The death of technology transfer in Canada could be the beginning of a new era of industry engagement. A lot will depend on how research institutions respond to the challenges.

Marcel Mongeon is an intellectual property coach assisting institutions and companies with strategies to profit from their intangible assets. He is an experienced international speaker and seminar leader in business strategy, intellectual property management and negotiations.