Comstock's magazine 1217 - December 2017 | Page 46

n INTELLECTUAL PROPERTY
and based in Silicon Valley, took a bet on his idea and came
ing director of the school’s Institute for Innovation and
up with a chunk of the money. Shapland had connections to
Entrepreneurship. And the Bay Area Council report sug-
Y Combinator; most young university entrepreneurs won’t
gests Shapland’s isn’t an isolated concern. “Many feel that
be so fortunate, he says. Today Tule Technologies has seven
… the licensing process by definition restricts the f low of
employees and serves about a thousand farm fields around
technology into the economy; that the licensing processes
California.
can be cumbersome and constitute significant barriers
Dushyant Pathak, who started Venture Catalyst in 2013,
to commercialization; and that the revenue generated
says his team was just getting started when Shapland came
by licensing is, on the whole, too small to justify the re-
to them — they had no staff and few connections at the
strictions it entails,” it states. The report offers no specific
time. “We were converting a propelle r engine plane into
recommendations for changing the current system, noting
a jet-engine plane while we were f lying,” he says. Today,
that the process should be “as navigable and user-friendly
his team could link a promising spinoff like Shapland’s to a
as possible.”.
quality law firm that would defer payment until such time
The dual goals of tech-transfer offices may complicate
as the inventors were able to raise capital, he says.
efforts to make the process more user-friendly. Martin
“I’ve talked to UC representatives;
Kenney is a UC Davis professor
they asked for my advice,” Shap-
of community and regional
land says, and when he aired his
development who’s written
grievances, “again and again
widely on tech transfer.
they said ‘That’s a UC policy.’
“TTOs are often evaluated
They can’t change that be-
on how many dollars they
cause it conf licts with public
generate, and if they don’t
mandates that they generate
bring in enough, the state
revenue.” (The UC’s Office of
legislature says ‘fire them,’”
Innovation & Entrepreneur-
he says. “So if you’re a TTO,
ship declined to respond to an
your incentive is to bar-
emailed list of questions about
gain hard, to squeeze the
UC tech-transfer policies.
inventor and the licensing
“The UC is constantly examin-
company. And if I’m a big
ing its policies and practices
firm, I end up saying, ‘These
to achieve better outcomes for
guys are a------s and I won’t
all of its stakeholders, includ-
work with them again’ …
ing inventors, campuses and
So you see the conundrum
other institutions,” said Chris-
that TTOs are in.”
— Dushyant Pathak, executive director,
tine Gulbranson, who heads
It’s not clear that even
UC Davis Venture Catalyst
the office, as part of an emailed
after all their hard bargain-
statement.)
ing, tech-transfer offices pay
Shapland wanted a simpler tem-
for themselves. A 2012 article in
plate license with fixed terms that wasn’t negotiated and
Research-Technology Management magazine by a former
that erred on the side of the entrepreneur — that would
Penn State vice president for research noted that by 2010,
have cut his delays and costs, he says. He’s not alone
the school was spending almost a million dollars a year
— complaints about UC tech transfer go back at least a de-
more on intellectual property protection than it was earn-
cade. A 2007 article in The Scientist magazine described the
ing in licensing revenues. And 2014 research by Santa Clara
story of UCLA genetics researcher Barry Merriman, who
University law professor Brian Love on intellectual property
claimed that the school’s tech transfer office refused to
protection efforts at top universities indicated that schools’
move forward with a patent or license for an invention that
efforts to obtain and protect their high-tech patents yielded
Merriman says had a few interested companies.
a return of negative 3 percent.
Criticism of how long licensing takes is “fairly com-
(The UC’s Office of Innovation and Entrepreneurship
mon,” says Andrew Hargadon, chair in entrepreneurship
didn’t respond to a question about the net revenue of UC
at UC Davis’ Graduate School of Management and found-
tech-transfer offices.)
"No business
development person
in a startup company
who's worth his or her
salt is going to just
agree to something
without wanting to
negotitate it."
46
comstocksmag.com | December 2017