Chapter 8. Understanding University Technology Transfer for Nanotechnology

Larry Gilbert and Michael Krieger

At first blush a straightforward process, commercializing the results of university research depends on many factors coming together "just right," and in a hospitable environment. Because the variability of the actors and elements in the process tends to dominate any idealized model of successful technology transfer, this article focuses the unique features of the components rather than the process per se.

Universities are a wellspring of nanotechnology discovery, with the dominant portion supported by the federal government as it puts ever-increasing public funding into nanotechnology grant and contracts programs.^[1] In contrast, corporate and other private developments are just thatprivate and substantially unavailable to entrepreneurs, investors, or others in the public. Combining this dichotomy with the fact that pursuing most nanotechnology ideas requires a level of capital investment and a team of scientific talent rarely assembled by the lone inventor, the research fruits of universities (which typically are mandated by federal funding to be made available for commercialization) present a central opportunity to entrepreneurs and investors for involvement in nanotechnologyto find discoveries to turn into viable commercial products.

The lab-to-market journeywhether involving nanotech or another technologyis generally referred to as technology transfer and is initially shepherded by a university's office of technology transfer (OTT) or licensing office.^[2] Idealized, that process is often characterized in terms of these major steps:

1.	A research discovery or technology advance is made by a professor or other senior researcher (the "invention").
2.	The invention is disclosed to the university's technology transfer office.
3.	That office files a provisional patent to protect associated intellectual property (IP).
4.	The office "markets" the invention to or responds to commercial interest from potential licensees that are willing to bear the cost of patenting the invention, developing the technology to commercial viability, and taking it to market.

Three caveats are in order lest this process seem overly straightforward and easy to execute.

First, the sequence requires that all the actors involvedthe people, companies, and institutionspull together, that is, cooperate to a considerable degree to make the deal, as well as the technical development, commercially viable. Any significant aberration, such as unreasonable licensing terms, stands to break the chain of steps needed to bring the discovery to market, or perhaps even prevent making it to the patent office. Second, discoveries also advance from lab bench to market shelf in other ways, several of which are described later in this chapter.

Finally, and most fundamentally, we put "markets" in quotation marks because it implies and represents the common belief that an OTT's market push creates technology awareness, interest, and ultimately license deals. In our view, this almost universal faith is misplaced: Although "push" marketing is done almost universally by tech transfer offices nationwide, we believe its effectiveness for sophisticated technologies is minimal, if not mythical, when compared with the "pull" of awareness created by a researcher's publications, professional presentations, former students, Web sites, and so on.^[3]

This chapter describes key facets, dimensions, and pitfalls of technology transfer that need to be understood by anyone hoping to participate in moving an attractive scientific or technology discovery into the commercial world.