Managing the growing volume of disclosures, patent filings, technology licenses, and spinoff activity is prompting some tech transfer managers to consider new tactics to handle more work without adding staff. Outsourcing is gaining interest as an option to shift service line responsibilities or IP portfolios to other entities, which may be located across the university or across the world. Texas Tech University in Lubbock is a typical example. Its Office of Technology Transfer and Intellectual Property, established in 1998 with a director and office assistant, initially was focused more on protecting than commercializing IP. In 2007, the university hired David L. Miller, JD, MBA, a serial entrepreneur, to manage the office. A year later, the department was renamed the Office of Technology Commercialization (OTC) and expanded to respond better to the needs of researchers, explains Amber Dean, associate managing director.
Although the OTC now has five full-time staff, “compared to other universities our size we are still relatively small,” says Dean. Nevertheless, the OTC has significantly boosted production, increasing invention disclosures from 31 in 2006-07 to 61 in 2008-09 and more than doubling the number of license agreements while nearly tripling revenues. The OTC accomplished that growth, in part, by outsourcing segments of the tech transfer process to “fill some of the gaps” in its knowledge base while maintaining control of the mechanics of licensing and commercialization, according to Dean.
Because business people rather than technicians staff the office, its biggest need is to evaluate new technologies for their technical merit and commercial potential. “Typically, we see about a third of our disclosures from our medical school, a third from our engineering school, and a third from our agriculture school,” Dean says. “Not one of us in our office has a particular background in those areas, so it was very important to find expertise in those fields to help us evaluate technologies.”
Serendipitously, Newton F. Hamlin, a managing partner with Austin, TX-based LGE Execs, had previously approached Texas Tech officials to discuss strategies to increase the school’s technology commercialization prospects. LGE Execs is a network of more than 75 former top executives — mostly retired CEOs, presidents, CIOs, CTOs, CFOs, and others — with a track record of running companies, leading business units, growing start-ups, raising capital, and spearheading mergers and acquisitions. Following Hamlin’s initiative, the OTC established a formal relationship to assess promising new technologies. When the office receives a discovery, the staff sends a nonconfidential summary to Hamlin, who reviews the technology or forwards the idea to a colleague. The reviewer provides the OTC with an “opportunity rating” on a scale of A-F, based on the projected investment needed to achieve certain milestones, timeline associated with those milestones, and potential challenges associated with the technology’s development. The review weights each technology using criteria such as market size, urgency of the solution for the market, and strength of IP protection. If the rating is strong enough, the OTC begins to explore the possibility of forming a start-up.
“There’s no charge, typically, for this type of review, so that’s a huge cost savings for our office,” Dean says, adding that outside consultants quoted the OTC fees of $3,500 and up per technology to conduct the same service. Once a technology receives a thumbs-up, the university licenses the technology to a start-up while Hamlin’s organization puts a management team in place and begins to raise money for a serious commercialization effort. A detailed article on TTO outsourcing strategies appears in the March issue of Technology Transfer Tactics. To subscriber and access the full article, along with a 3-year archive of tech transfer case studies, how-to strategies, and best practices, CLICK HERE.