Special Issue: The Role And Contribution Of Multi-Institutional Technology Transfer Offices

This special issue of les Nouvelles is devoted to Multi-Institutional Technology Transfer Offices (MiTTOs). Our interest in this topic has its roots in a World Bank-RFP for a tech transfer capacity-building project in India. Two of us (John Fraser and Ashley Stevens) are part of a small team of consultants mentoring the seven biotech-focused regional tech transfer offices (RTTOs)covering India under the overall supervision of a leading Indian consulting company, Sathguru. Sathguru has contributed the article on this Indian network of RTTOs tothis special issue.

Research Corporation (and its 1986 reincarnation as Research Corporation Technologies [RCT]) is the oldest tech transfer organization in the world, dating back over one hundred years to 1912, though proactive technology commercialization activities (as opposed to management of existing patents) was not launched until 1937.

Canadian Patents and Development Limited (CPDL)1 was a Canadian agency tasked with promoting the commercialization of inventions and discoveries arising from government departments and agencies, as well as those disclosed to it by universities and other publicly funded organizations. The National Research Council of Canada (NRC) founded CPDL on October 24, 1947, as a subsidiary crown corporation under part 1 of the Canadian Companies Act (now Canadian Corporations Act). However, the NRC’s patent management activities had started in the 1930s when it formed committees in each of its newly formed laboratories to evaluate inventions that had been made. By 1931, it was filing and receiving 10 to 130 patents a year and starting to license some of them. During WWII, these activities were formalized in an Inventions Board.

There are two key episodes in the development of university technology transfer in the UK, both of which involve NRDC/BTG. The first involved the setting up of NRDC following the Second World War (1939–1945) and to some extent a reaction to the story of the commercial development of penicillin, one of the great research-based inventions from the UK, commercialized in the United States.

To write a history of German knowledge and technology transfer (KTT) is an exercise in humility. After all, we always seem to be running behind the United States, which started with the Bayh-Dole Act in 1989, the United Kingdom, and to be frank also behind Switzerland, France, and a few Scandinavian and other countries that are more entrepreneurial in their approaches to support development of inventions from academia into the market. Wherever German KTT slots in, it is not in the top tier. At the northern end we have recently seen an absolute highlight and success of possibly historic dimension. BioNTech, an mRNA start-up out of the University of Freiburg, which went on to develop a world-saving COVID-19 vaccine, showed the world that Germany can put ideas from academia into practice for the benefit of society and for the world at large. And it also shows that KTT is a global team exercise. BioNTech needed the agility, flexibility and vision of a big Pharma partner, Pfizer, for a COVID-19 vaccine to emerge. It also needed the commitment and patience of a family office. BioNTech would have not risen to its current format if they had not received substantial public funding to start with, and if they had not been financed by family offices (instead of the more common venture capital), thus escaping the usual time cycles of venture capital funds. After all, BioNTech was founded in 2008, 12 years before they had their first product on the market, and they started with an entirely different idea, with a vision to develop mRNA vaccines against cancer.

Australia was an early adopter of tech transfer at the individual institutional level, and there were several distinctively Australian aspects to its development:

University Patents, Inc. (UPI) was an experiment in doing tech transfer on a for-profit basis. It was incorporated in 1964 as an Illinois corporation as the exclusive licensor for the University of Illinois Foundation until 1985. It was reorganized in 1968 and then reincorporated in Delaware in 1971 and became publicly traded on the American Stock Exchange in 1973.

France has had a good reputation for its high-level publicly funded education through both ‘Lycées’ and a large network of universities and professional institutes. Professors and researchers, while public servants, enjoy considerable freedom of action and expression, ingrained in the French culture. University intellectual property (IP) belongs therefore to the state and its educational institutions, namely the universities and publicly funded research centers. Historically, knowledge transfer was primarily through publications, student hiring and consulting. Up until 2010, universities had relatively small administrative units responsible for research contracts with industry (the DMTT)1 and at times, protecting IP upon researchers’ request and providing licences to industry.

Washington Research Foundation was established in 1981 in response to the passage of the Bayh-Dole Act by three prominent members of Seattle’s business community who were friends of the University of Washington—Tom Cable, Bill Gates, Sr. and Hunter Simpson.

University Technology Corporation became operational on July 4, 1986. It was co-founded by Carl Wootton (previously the director of the TTO at Duke University), Stanley Fisher (co-founder of the law firm Oblon Fisher) and John Fraser. It was launched as a for-profit company and served as the exclusive licensing agent for five universities (Georgia Tech; University of Connecticut; University of Maryland, College Park; University of Iowa; and Kansas State University). The headquarters were in Durham, North Carolina with on-campus technology liaison officers (TLOs) at the member university campuses.

University Science, Engineering and Technology, Inc. (USET) was a fairly short-lived player in the for-profit tech transfer space. The company was founded in February 1986 by Maxwell Communications Corporation (MCC), owned by the colorful Robert Maxwell, a British publishing magnate who also owned Pergamon Press, MacMillan publishing and the leading British daily tabloid, the Daily Mirror. MCC’s initial investment in USET was $3 million. The company was headquartered in McLean, VA.

A year before China emerged from the Cultural Revolution after Mao Zedong’s death in 1976 and had to start creating a modern society and its legal underpinnings from scratch, the death of Spanish dictator General Francisco Franco resulted in the establishment of a parliamentary democracy under a constitutional monarchy, and Spain started a rapid journey from being a backward economy largely based on agriculture and tourism to its current position as the fourth largest economy in the E.U.

In the early 1980s, as universities were working out how to respond to the Bayh-Dole Act, the three major universities in the Research Triangle region of North Carolina—Duke, University of North Carolina Chapel Hill and North Carolina State University— were devoting minimal resources to tech transfer— half an FTE each at UNC and NSU, one FTE intermittently at Duke—and were behind their peers at other major public university systems.

The history of technology transfer in Norway goes back more than 100 years. Perhaps the best-known example is Professor Kristian Birkeland, a physicist at the University of Oslo. Birkeland was interested in electromagnetism and correctly predicted that the Northern Lights were due to electrical particles from the sun being funneled into the polar atmosphere by the earth’s magnetic field. He received no credit for this idea until the 1970s when spaceships allowed measurements to be made that showed Birkeland was correct.

A Tale of Two Eras: Before and After the IPR Act of 2010. South Africa’s technology transfer system can be divided into two eras:

TechLink is a Federal- and state-funded technology transfer (TT) center at Montana State University, operating as a partnership intermediary as defined by government legislation 15 U.S.C. 3715. From 1996-1999, TechLink worked with NASA TT, and since 1999, it has served as the lead Department of Defense (DoD) technology transfer partner, helping to develop productive technology partnerships between the private sector and the DoD laboratory system nationwide. In February 2019, TechLink formed an additional partnership with the Department of Veterans Affairs (VA) to help their technology transfer outreach and licensing efforts. TechLink also serves as a university connection to the high-tech sector in the state, region, and nation. TechLink currently has 42 full-time employees based in Montana and at government labs across the U.S.

Unitectra is the technology transfer office of the Universities of Basel, Bern and Zurich, the three big universities in the German-speaking region of Switzerland, offering research and teaching in a broad range of subjects. Unitectra is organized as a not-for-profit incorporated company wholly owned by the three universities.

In 1996, the University of Queensland in Brisbane Australia invested $5 million into its commercialisation company, UniQuest, with the long-term objective of increasing translation and commercialisation of research. With this funding, UniQuest implemented a commercialisation model that scaled over the next 15 years to 100 people commercialising exclusively for eight universities and public sector research organisations, with peak revenues of $100 million. Over 70 start-ups were created, which raised over $500 million, and 200 licences were executed and managed, including the licence for the blockbuster HPV vaccine Gardasil.

Technology transfer organizations (TTOs) first appeared in Japan in 1998. In the same year, the “Act on Promotion of Transfer of Technology Research Results from Universities, etc. to Private Business Operators” (commonly known as the “Act on Promotion of University Technology Transfer”) set forth the conditions for obtaining government approval as an “approved TTO.” In that year, the first four institutions as TTOs received approval under the Act.

Around the beginning of the 21st Century, the Montreal Stock Exchange determined that its IPO pipeline was drying up and that university spin-offs could become a strategic new stream for them. As a result, a university-sourced commercialization program was announced in 2001 with a $100 million provincial allocation over a five-year period.

The history of the development of Germany’s tech transfer structures (mainly focused on IP) has been addressed elsewhere in this special issue by Stein where he discussed Ascenion GmbH. Stein briefly mentions the creation of 25 Patentverwertungsagenturen (PVA or Patent and Licensing Agencies) starting in 2000. In this article we will discuss these PVAs in detail. They can best be viewed as multi- institutional tech transfer offices (MiTTOs) that primarily serve research institutions, universities and universities of applied sciences in their own federal state.

Oficina de Transferencia de Resultados de Investigación (OTRI) was founded in 2005 and provided tech transfer services to five important Chilean universities:

Dalton McGuinty, Ontario Premier from 2003 to 2013, has been the only premier in Canada who proclaimed himself, with no extra pay, Minister of Research and Innovation (MRI), a responsibility he later delegated after setting his imprint on a number of structuring initiatives. His impulse to bolster innovation in Ontario was unique and perhaps even ahead of his time. A science graduate himself, as he reviewed the innovation ecosystem in Ontario, Dalton McGuinty noted that his province, which is the manufacturing heart of Canada, was deficient in its ability to take advantage of the considerable publicly funded R&D it conducted. This was reflected in the Shanghai and OECD reports that were highlighting the excellence of Canadian research but the lack of correlation with in-situ innovation. So, the first step was to create a new department with its own budget. As part of the many initiatives it started was the encouragement of networks such as Communitech in the Waterloo area, M@RS in the Toronto area that became the site of an industry-university partnership and later of early stage VC funding, as well as the Ontario Society for Excellence in Technology Transfer (which morphed into ONSET, a grouping of all of the Ontario TTOs and one of the four Canadian TTO networks funded by NSERC).1 Funding was also allocated to the Ontario Centers of Excellence (OCE), whose profile was expanding as it provided funding for SME innovations. Those networks were also organizing events and platforms to exchange ideas and innovation opportunities.

The legal framework for Swedish technology transfer dates back to 1949 when the government introduced the legal regulation regarding ownership of university-based intellectual property in Sweden. The teacher’s exemption was introduced, which stated that if you are a teacher at a Swedish university, you have the ownership of patentable inventions in your legal capacity as a private individual. The reason behind this was to prevent commercial interests from influencing the teachers to spread their knowledge to the students. The teachers should not have obligations of secrecy, etc.; since the government has invested in their knowledge, it should be freely available (Sweden has free university education). In the following decades the teacher’s exemption developed into a researcher’s privilege following the reasoning that all university teachers are also researchers and completely disregarding the logical reason behind the legal construction.

Serbia was one of the first countries in the Balkans region to embrace the “innovation imperative”— the notion that successful participation in the global knowledge economy requires the ability to adapt and advance new technological and research capabilities that involve public and private collaboration.

In the early 2000s, the Corporacion de Fomentada de la Produccion de Chile or the Production Development Corporation financed more than 18 Incubators across the country on a competitive basis for an initial five years. Only a few were renewed afterwards. The lesson learned was that a local critical mass of people and opportunities was a necessary pre-condition for sustained, successful entrepreneurial activities such as an incubator or technology transfer offices for each university, etc.

Puerto Rico is well known for its biopharmaceutical industry with 11 of the 20 top global biopharmaceutical companies housed in 31 manufacturing sites in addition to 54 medical device plants on the Island.1 This cluster produces one-third of Puerto Rico’s GDP and one-third of the tax revenue, making Puerto Rico the largest exporter of biopharmaceuticals in the U.S. Universities in Puerto Rico produce the human capital capable of supporting the operations of the local biopharmaceutical industry by graduating scientists and engineers at every level and discipline. However, there are disconnects and gaps in the innovation ecosystem.

Innovation in India has surged, as evidenced by the surge in patent filing over the last decade. Incremental investment in R&D by public research and private enterprises to stay competitive are the driving contributors to growing patent filings. With increased patent filing by public research institutions, their aspiration to transfer technologies to the private sector has evolved over the decade. However, most institutions lacked proficient technology transfer professionals located in independent technology transfer offices. As a result, for several decades, Indian public research results were passed over to a central agency, NRDC, for pursuing technology transfer.

This special issue focuses specifically on independent, third-party, multi-institutional tech transfer organizations (MiTTOs), because MiTTOs are frequently the first step in establishing tech transfer from university labs in an industrial ecosystem. This special issue has reviewed MiTTOs in 16 countries, including countries with major university research ecosystems such as Australia, Canada, France, Germany, Japan, Spain, the U.K. and the U.S. One of the questions that we answer in this special issue is: “When was the modern system of the formal, legal transfer of university-based innovation created?” And most importantly, how and with what purpose?

The cognitive psychologist Barbara Drescher famously said: “The plural of anecdote is data.” In this article we step back from the individual cases described in the preceding articles to ask and attempt to answer questions about the history, business and funding models, strengths and challenges of multi-institutional tech transfer offices (MiTTOs). We try to draw broad conclusions, quantitatively wherever possible, supported by the experiences of the various MiTTOs described in the preceding articles.