Scope of Advisory Group #7:
Strategic Assessment of the University Patent and Licensing Programs

Universities and industry increasingly engage with each other in a broad range of mutually beneficial research and technology transfer relationships. Given the variety of new and complex research relationships with industry, historical University policy guidance to faculty, students, and administrators concerning patent ownership and licensing arrangements is becoming less relevant and useful. Some have provided anecdotal evidence that current UC policies have actually inhibited industry-university partnerships and complicated the free exchange of ideas and researchers between UC and industry research laboratories. For UCindustry partnerships to flourish, both the mutual and divergent interests of the parties must be addressed in a clear and efficient manner for a broad range of research and technology transfer contractual arrangements, including: research collaborations and consortia among university, industry, and governmental participants; materials transfers both into and out of the University; technology licensing agreements "bridged" to follow-on research agreements; UC visitors working in industry laboratories and industry visitors working in UC laboratories; and other innovative arrangements with commercial partners.

Advisory Group #7 will review current UC intellectual property policy and guidelines and assess their relevance and appropriateness in the current environment.

Participants in Advisory Group #7:
Strategic Assessment of the University Patent and Licensing Programs

John E. Bowers (Chair)
Professor, Electrical and Computer Engineering
UCSB

Joe Acanfora (Specialist)
Associate Director, Office of Technology Transfer
UCOP

John L. Bishop
President and CEO, Vysis, Inc.
Downers Grove, IL

Don Carlson
Professor, Molecular and Cell Biology
UCD

Clifford M. Detz
Manager, Strategic and Collaborative Research
Chevron Research and Technology Co.
Richmond, CA

Norma Dunipace
Manager, Partnership Development
LLNL

Curt Gaines
Manager, Lassen Canyon Nursery Inc.
Redding, CA

Paul Gray
Dean, College of Engineering
UCB

Nora A. Hackett
Technology Liaison Officer
UCD

Dan Hutchinson
Director, Strategic Resources Initiatives
UCLA

Niels Christian Nielsen
Executive Vice President, Danish Technological
Institute
Tasstrup, Denmark

M. Lea Rudee
Professor/Coordinator, Material Science
UCSD

Stephen M. Sammut
Managing Director, Access Management Services, Inc.
Philadelphia, PA

Suzanne B. Sandmeyer
Professor, Microbiology and Molecular Genetics
UCI

Janna Tom
Campus Liaison Officer, Office of
Technology Transfer

UCOP
Candace Voelker
Associate Director, Office of Technology Transfer

UCOP
Frederic Wan
Vice Chancellor for Research
UCI

Report of Advisory Group #7:
Strategic Assessment of the University Patent and Licensing Programs

Overview:

In March, 1994 the University's Ad Hoc Technology Transfer Advisory Committee submitted its final report to President Atkinson. The President accepted that report, establishing the objectives of the University's technology transfer program as follows:

This Advisory Group concurs with those objectives, but also reaffirms that the enhancement of the research and teaching missions of the University of California continues to be the overarching purpose of University technology transfer programs. The Group believes that the central Office of Technology Transfer (OTT) and campus-based technology transfer offices must continue to direct their priorities and activities towards these objectives by developing long term relationships with industry through sponsored research agreements, collaborative arrangements, licensing of intellectual property, and other appropriate technology transfer partnerships.

Many changes in technology transfer have taken place since the current technology transfer policies and practices were formulated. These policies and practices will have to be re-examined and revised to reflect these changes. It is particularly important that the new policies and practices be more flexible and accommodate faculty input in support of the broad objectives of the University' technology transfer program.

Recommendations:

Comments on the Report of Advisory Group #7:
Strategic Assessment of the University Patent and Licensing Programs

The following analysis was submitted by

~ Nora A. Hackett
Technology Liaison Officer
Davis Campus

The March 1994 report of the University's Ad Hoc Technology Transfer Advisory Committee established objectives for the University's technology transfer program which directed more integration of the University-created technology into activities which would benefit and enhance the teaching and research missions of the University. While the Committee called for integration of these activities at both the central Office of Technology Transfer and the local campus offices, they did not designate a mechanism, nor time schedule, for integration of these administrative activities.

Much internal and external complaint about the University's inability to handle complex issues regarding private industry research funding and technology development derive from the inadequate staff placed to handle these complex issues. More staff of immensely greater sophistication is required to analyze and resolve issues of overlapping rights, desires, restrictions, financial benefits and possible liabilities related to private industry support. Specialized analytical staff is required to examine the confining and confusing policies of several sources including federal incentive support programs, state and federal conflict of interest requirements and consulting commitments. The University has placed inadequate resources at the campus and centrally, to provide administrators with the combination of skills needed to interpret and find resolution to these exceeding complex issues.

The relationships and potential outcomes of private industry support of research are often very different from those expected from funding from a governmental or non-profit source. Federal contracting policy regarding research funding requirements and obligations was defined, if complex, but could be interpreted at a local site with moderately skilled staff. A research project or collaboration with a non-profit, educational institution could be placed, without concern about what to do if the funding agency did not pay, went bankrupt, attempted to manipulate the researcher's project, terminated the project prematurely or sued for damages. A more experienced negotiator is essential for research projects supported by private industry.

It is essential to appreciate that the objectives and the requirements of a relationship with a private industry partner may be significantly different than university personnel have dealt with in the past. It is na´ve to expect that contracts negotiators and development personnel can adequately, and effectively address these new requests without sufficient resources and guidance.

Recommendations: