Archive for 'University Technology Transfer'
Michael D. Moberly May 4, 2014 ‘A long form blog where attention span really matters’!
Having been in academia for 20+ years, I found that most, if not all, university research (whether basic or applied) and the subsequent innovations – inventions produced potentially valuable, and certainly equally important intangible assets.
In early stage research, intangible assets often compliment and/or serve as supporting foundations to the invention – innovation and ultimately the intellectual property (IP), should that be the path and/or strategy the tech transfer office deems appropriate and worthy of the necessary resources. IP, after all, is what most technology transfer managers, faculty researchers, inventors, research administrators aspire often times to the chagrin of intangible asset strategists and risk specialists.
In far too many instances however, an inventions – innovations underlying and often facilitating intangible assets, particularly intellectual, structural, and relationship capital are overlooked, dismissed, or utterly overshadowed by the time honored and emotion laden predilection associated with acquiring conventional IP, typically the issuance of a patent.
Unfortunately, but quite realistically, today’s road to successful technology transfer is increasingly protracted, and strewn with costly and embedded with asymmetric risks of the type which can readily undermine asset value along with its competitive, attractive, and potentially lucrative components. Collectively, this suggests the prospects for developing the next high royalty generating Gatorades’, as was the case at the University of Florida are few and far between. Since U of F achieved this research feat in 1965, the landscape of the R&D environment as a whole, has changed significantly in terms of now being global aggressive, competitive, predatorial, and certainly winner-take-all.
But, that shouldn’t and doesn’t keep faculty researchers from continually trying!
After all, it’s an economic fact though, that 80+% of most university-based invention’s value and foundations for generating revenue, especially faculty researcher generated (university-based) inventions, evolve directly from intangible assets. This economic fact now makes it all the more prudent to factor into technology transfer processes, intangible assets!
Why?, because in most instances, intangible assets underlie, are embedded in, and are valuable by-products of scientific innovations. To consider intangible assets as after-thoughts or subordinate to intellectual properties relative to technology transfer invention assessments leaves potentially lucrative (licensing) opportunities and value on the proverbial strategic planning and negotiating tables!
Similarly, narrowly conceiving university research, inventions, and technology transfer processes through conventional IP (patent – licensing) only lens often diminishes our inclination to genuinely explore options for exploiting the potential value and competitive advantages generated fromintangibles already embedded in most every invention – innovation.
When intangible assets are overlooked or not properly factored into the technology transfer processes, their supportive and contributory role – value, and even possibly their defensive role for enhancing and sustaining the invention (research) and aspired IP will likely be irrevocably lost. Increasingly, this bodes well for global economic and competitive advantage adversaries who have the where with all to identify, acquired, and exploit (monetize) those assets for their benefit and profit at the rightful owners’ expense.
There are multiple other benefits that can accrue to university technology transfer teams and faculty inventors’ when they acquire an operational familiarity with intangibles which includes identifying, unraveling, and leveraging the intangibles associated with an invention versus lumping them or dismissing them into the ‘catch all’ goodwill bucket. In other words, intangibles can and should be integrated into an inventor’s technology transfer strategic plan.
So, with 80+% of an institution’s value and sources of revenue residing in intangible assets, every university inventor and technology transfer office should engage the intangibles now!
While visiting my blog, you are encouraged to browse other categories which you may find relevant. Too, I welcome your comments and inquiries at 314-440-3593 or email@example.com
Michael D. Moberly March 31, 2014 ‘A long form blog where attention span really matters’.
It’s all about sustaining control, use, ownership and monitoring the value, materiality, and risks to intangible assets, particularly intellectual and structural capital. And, when 80+% of most research evolves from intangible assets, i.e., intellectual and structural capital in particular, having an intangible asset strategist and risk specialist available can make the difference between exasperating ‘minimalization’ and exuberance!
Having served in academia for 20+ years myself, it’s certainly no secret that one distinguishing factor related to university-based (faculty) researchers (inventors) is that they generally have the opportunity to pursue – engage in research that reflects their academic interests which they have dedicated themselves. This generally involves multiple years of rigorously testing hypotheses which occasionally culminates in a patentable and/or licensable product with future commercialization potential.
Achieving this level of academic excellence, i.e., patentability is seldom a standalone activity. Instead, it entails developing and maintaining positive collaborative – working relationships between faculty researchers and TTO director and staff, both of which are essential components to achieving satisfying and optimistically lucrative (scientific) outcomes for all parties. So, faculty researcher (inventor) relationships with their universities’ Technology Transfer Office (TTO) can often be complicated and even contentious, but need not be so!
Competing in the global R&D environment…
Those familiar with R&D processes and what’s necessary to successfully move a scientific project along the continuum to reach patentability stage and perhaps commercialization in its market space recognize that most all R&D, be it university or private sector based, are competing in an increasingly intertwined, aggressive, and often times predatorial marketplace where boundaries have become blurred between domestic and international business allegiances, prompting, in many respects, well warranted risks and cautions which produce more challenges for institutions and investors insofar as distinguishing – assessing the most promising (patentability, commercialization) strategies within a particular field.
More specifically, and to be purposefully redundant, a fundamental concept that warrants more recognition by faculty researchers and university TTO managers alike, is that the broader research and development environment has truly become globalized, which in my niche of the world translates as being increasingly competitive, aggressive, predatorial, and often culminates in winner-take-all outcomes. Necessarily, the competition for researcher intellectual and structural capital competencies is quite intense, sometimes bordering on the fanatical.
Unfamiliarity, naiveté, or acting dismissively of the environment I have characterized here will (can) contribute to – exacerbate the growing array of problems and challenges insofar as securing and retaining strong defensive – offensive grounding in intellectual property, patents particularly. If, for example, a faculty researcher/inventor has the good fortune, skill, and necessary long term funding to develop a compound or device that ultimately can be readily circumvented and/or counterfeited. Herein lies unfortunately, an all too frequent problem in which one’s work ends up being exploited, not by its rightful owner, rather by predatorialy motivated economic and competitive advantage adversaries globally.
Needless to say, when such risks are dismissed or worse in my view, a feigning of unawareness or adopting a position which suggests it’s not their responsibility to elevate (risk) awareness within their respective (institutional) research community it’s disconcerting and demoralizing to faculty researchers – inventors. More so when they learn their work/research product will face challenges, legal and otherwise, which an institution may opt to not engage because the challenge is difficult, time consuming and very costly to effectively enforce or ‘win’. When such circumstances arise, as well as many others, one can be assured it will render a projects’ attractiveness to prospective licensees, investors, and/or commercialization opportunities to be less than might what otherwise be expected, in other words significantly minimized.
Strategic solution paths…
A universities’ technology transfer office is and should be the starting point for faculty researchers – inventors to disclose, or fully unravel, their invention and acquire the most current strategic counsel to ensure the most promising and worthy research, i.e., technologies are guided to their natural and hopefully lucrative and beneficial conclusions. A not infrequent personal – professional reality is that at some point during a projects’ disclosure, unraveling, and technology transfer process is the discouraging reality that that not all discoveries warrant patentability and commercialization.
A complicating factor, one which university technology transfer managers know all too well, is that a technology transfer process can take months, and in some instances years – to fully evolve and arrive at a point of final (university) recommendation or decision. For example, the issuance of a patent or consummation of a licensing agreement, are events which involve mergers’ of expertise, good fortune, good timing, and investor/funder interest.
But, it is not my intent to place the onus solely on TTO managers, rather, faculty researchers – inventors seeking a potential (public) break through or ‘turning point’ moment for their specific research, often times they are already acutely aware of the global competitiveness and predatorial nature associated with R&D environments in general. In other words, a faculty researcher will always find it in their interest to consistently engage in best practices insofar as effectively managing and safeguarding their research.
A university’s technology transfer office is typically where the expertise lies to convert inventions into commercially viable products if and when feasible. Faculty researchers and/or inventors need experienced and industry sector expertise to aid them in navigating, assessing, and offering recommendations on strategies that hopefully lead to patentability and/or commercialization which can come from intangible asset strategists and risk specialists.
Reader comments and inquires are always welcome at 314-440-3593 (St. Louis) or firstname.lastname@example.org
Michael D. Moberly January 7, 2013
University technology transfer units and faculty researchers are obliged now, more than ever, to think differently about safeguarding their intangible assets and intellectual properties…
The rules of engagement in the world of entrepreneurism and scientific/commercial R&D have changed largely due to the persistent, predatorial, and ultra-sophisticated threats and risks emanating from legacy free independent players as well as state sponsored intelligence and data mining entities which are unfortunately far too often misunderstood, naively discounted or omitted from information, IP, and intangible asset protection, risk management, and oversight equations.
Initiatives (programs) to effectively safeguard and manage these key assets need to be holistic, i.e., from start to finish, and include practices to elevate awareness to and otherwise mitigate this ‘always on’ global dilemma.
Most universities’ technology transfer landscape is now shaped almost exclusively by the development and flow of intangible products and services, i.e., the flow of information, know how, and other forms of intangible assets. Similarly, university and institutional value has literally shifted away from collections of physical (tangible) assets to collections of intellectual, structural, and relationship capital which have become valuable and standalone commodities for which sustaining control, use, ownership, defensibility and consistently monitoring value are essential to technology transfer, commercialization, and other monetization initiatives.
Universities, faculty researchers, and technology transfer units need to think differently about past practices and conventions! The laws associated with intellectual property protections and enforcements are largely reactive, not proactive, and typically apply after, and if, protected information asset (IP) losses, i.e. infringement, misappropriation, and/or theft have occurred and ultimately become known to their originator, owner, and/or holder.
For example, when research commences and if/when a patent may be issued, faculty researchers, research administrators, and technology transfer units are dependent on their (a.) respective levels’ of awareness to the assets’ vulnerability to loss or impairment, i.e., through compromise, infringement, misappropriation, and counterfeiting, etc., and (b.) willingness and resources to aggressively pursue suspected wrong doers in a timely and aggressive manner.
In other words, all university-based research in my view, is obliged to reflect today’s very real, persistent, and asymmetric vulnerabilities and threats. To achieve this, intangible asset protection and monitoring practices must be much more proactive and put in in place on the front end in order to sustain control, use, ownership, and monitor value, materiality, and risk. After all, in conventional venture capital forums, as well as the increasingly trendy and accepted (patent) auctions where much university-based research gravitates and brought to the attention of venture capitalists, key and prudent questions posed have to do with not just the proverbial ‘what’s your IP position’, but they drill deeper to assess the status, defensibility, and vulnerability of the research (intangible asset) product. Too be sure, it is imprudent, if not irresponsible to not have a compelling and authoritative response.
My blog posts are researched and written by me with the genuine intent they serve as a worthy and respectful venue to elevate awareness and appreciation for intangible assets throughout the global business community. Most of my posts focus on issues related to identifying, unraveling, and sustaining control, use, ownership, and monitoring asset value, materiality, and risk. As such, my blog posts are not intended to be quick bites of information, unsubstantiated commentary, or single paragraphed platforms to reference other media.
Comments regarding my blog posts are encouraged and respected. Should any reader elect to utilize all or a portion of any of my posts, attribution is expected and always appreciated. While visiting my blog readers are encouraged to browse other topics (posts) which may be relevant to their circumstance or business transaction. I always welcome your inquiry at 314-440-3593 or email@example.com.
Michael D. Moberly August 28, 2012
The difference between a patent and intangible assets is that an issued patent can be framed, while intangible assets are non-physical and are the real enablers of most every patent. Frequently, much to the chagrin of intangible asset strategists, intellectual property, i.e., patents particularly, are the presumptive ‘brass ring’ which a significant percentage of technology transfer managers, researchers, inventors, and legal counsel set their sights, sometimes for obvious reasons, and sometimes because quite simply, there is no intangible asset specialist -strategist in place to articulate alternatives.
I suspect, somewhat respectfully, that deference is routinely attached to patent (only) strategies based on the time honored perspective that an issued patent conveys ownership, certain rights, and is defensible under law, all of which it does. However, the costs associated with obtaining, maintaining, and defending a patent are escalating, making that tract increasingly out-of-reach for many inventors and innovation regimes, absent a fairly deep pocket of investment resources.
In today’s increasingly aggressive, predatorial, and winner-take-all global business transaction and R&D environment, patents, in my view, are in a fairly constant state of risk. Too, I might add, there is the widely held, but never-the-less mistaken assumption that an issued patent constitutes a deterrent to, or safe harbor from would be infringers, which it certainly does not.
Yes, it still remains very true that prospective investors, venture capitalists, and to be sure, large multi-nationals who may express interest in an inventor’s research, truly believe the proverbial ‘what is your IP position’ question is both relevant and important. At the 30,000 foot level, the answers to IP questions like that, can become deal breakers or constitute a significant duty of sorts levied against the inventor. But, in a large percentage of circumstances, and I say this with the utmost respect, there are comparatively few researchers – inventors working at the 30,000 foot level, rather most are working at the 4,000 foot level, with the ‘gatorade invention and royalties’ (University of Florida, 1965) few and far between.
Patents are expensive to obtain, to maintain, and to defend. And, even if the entire patenting process goes smoothly for an inventor, company, or institution, the patent still remains at risk and the inventor along with any number of individuals associated with the research and/or patenting process could stumble. That is, the research product could become entangled-ensnared in various legal disputes and challenges, fail to be effectively marketed, and/or resources being withdrawn to maintain the patent.
In far too many instances, I find the intangible asset offspring (enablers) of IP are being overlooked, dismissed, or overshadowed by the assumption that the time honored practice – strategy of pursuing conventional intellectual property, i.e., patent applications, provisionals, licensing, etc., are perceived as either the best or only option. Of course, I disagree.
To that point, an analogy may be in order. When one seeks the guidance of SEO (search engine optimization) firms to promote their website and/or blog, the business development – marketing officers’ lead statement will consistently be some variation of ‘we’ll get you on page one of Google’. The reality is, there is no guarantee that getting a website or blog post on page one of Google will produce the all-important conversions that many assume will come naturally. Yes, entrepreneurs can rationalize that all it takes is one good (the right) ‘conversion’ to kick start a company down the path to riches. But, reaching ‘page one of Google’ may not be all that a startup company really needs to achieve sustainable financial success. Instead, they are likely to be in need of a well-coordinated, focused, and specific strategy that effectively utilizes an array of internet resources and social media that presents many different options for exposure and conversion, not merely one!
So, for 2012 and beyond, inventors, researchers, companies, and institutions who engage in R&D, perhaps their initial call should not be to legal counsel, rather to an intangible asset specialists-strategist who can identify, unravel, and assess the enabling intangible assets and offer a variety of options and strategies that ‘fit best and work best’!
University Technology Transfer: Don’t Underestimate Intangible Assets As Valuable By-Products of Inventions
Michael D. Moberly December 9, 2011
Most, if not all, university research (whether basic or applied) and subsequent inventions produce potentially valuable intangible assets that compliment and/or serve as supporting foundations to the invention’s intellectual property. IP, after all, is what most technology transfer managers, faculty researchers, inventors, research administrators, and legal counsel initially focus, often times to the chagrin of intangible asset strategists.
In far too many instances, I believe, intangible assets are overlooked, dismissed, or certainly overshadowed by the time honored practice of university technology transfer processes of pursuing conventional intellectual property dominated strategies, i.e., patent applications, provisionals, licensing, etc.
Today’s road to successful technology transfer however, is increasingly lengthy, costly, and risky. The prospects of developing the next royalty generating Gatorade are realistically few and far between. But, that doesn’t and shouldn’t keep us from trying.
It’s an economic fact though, that 65+% of most invention’s value and foundations for (future) growth and revenue, especially faculty researcher generated (university-based) inventions, evolve directly from intangible assets. This economic fact now makes it all the more prudent to factor into technology transfer processes, intangible assets!
Why?, because in most instances, intangible assets underlie, are embedded in, and are valuable by-products of scientific innovations. To consider intangible assets as after-thoughts or subordinate to intellectual properties relative to technology transfer invention assessments results in leaving potentially lucrative (licensing) opportunities and value on the strategic planning and negotiating table!
Similarly, narrowly conceiving university research, inventions, and technology transfer processes through conventional IP (patent – licensing only) lens diminishes any inclination to genuinely explore options, i.e., extracting and exploiting potential value from intangibles embedded in most every invention.
When intangible assets are overlooked or not properly factored into the technology transfer processes, their supportive and contributory value and even possibly defensive role for enhancing and sustaining the invention and underlying intellectual property will likely be irrevocably lost. Increasingly, this bodes well for competitors (globally) who have the where with all to identify, and exploit (monetize) those assets for their benefit and profit but at the rightful owners’ expense.
There are multiple other benefits that can accrue to university technology transfer teams and faculty inventors’ when they identify and leverage the intangible assets associated with an invention versus lumping them in the catch all ‘goodwill’ bucket. In other words, intangibles can and should be integrated into an inventor’s technology transfer strategic plan.
In the current knowledge-based global economy, 65+% of an institution’s value, sources of revenue, sustainability, and foundations for future growth lie in intangible assets. Still, with that economic fact staring every university inventor and technology transfer manager in the face, identifying and exploiting their intangible asset by-products unfortunately still remains a hard sell!
While visiting my blog, you are encouraged to browse other topics/subjects (left column, below photograph) . Should you find particular topics of interest or relevant to your circumstance, I would welcome your inquiry at 314-440-3593 or firstname.lastname@example.org