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Getting the Word on Time: Tech transfer gives early feedback on inventions

January 2006--When Jef Boeke arrived here in 1986 fresh from a postdoc at MIT, he had already applied for a couple of patents stemming from his graduate and postgraduate work. He loved Hopkins from the start, but one thing disturbed him. “With the exception of a few people like Sol Snyder, the academic elite here was not very supportive of tech transfer. There was a strong sentiment that this was not a good use of a faculty members’ time.” Resistance to the commercialization of discoveries was particularly strong in the basic sciences, Boeke says.

To respond to the frustrations of scientists like Boeke, Hopkins surveyed its researchers to find out what bothered them about the tech transfer process here. Inventors charged that they didn’t get timely feedback and felt they didn’t have any influence over what happened to their applications once they got into the pipeline for patents and licensing and technology transfer agreements. Vice Dean for Research Chi Dang and other University officials decided that Hopkins tech transfer needed new direction and brought in Jill Sorensen from the University of Illinois at Chicago.

Sorensen encountered lingering traces of nostalgia for a time before phrases like “report of invention,” “provisional patent” and “licensing agreement” became part of the research vocabulary. “People will smile and say, I have to tell you that I don’t like any of this business,” she says. Sorensen doesn’t flinch from the implied criticism of her mission here. “I’m reassured when people express concerns rooted in conventional scholarship because I’m looking to honor and preserve that,” she says.

Acutely aware of faculty concerns, Sorensen enacted sweeping operational changes, most of them centered on improving communication with scientists. In December 2005, the rechristened Johns Hopkins Technology Transfer began rolling out InfoEd, a new data management system.

A review committee bases decisions on four criteria, Sorensen says—ownership, protectability, market potential and level of development. “The goal is data-driven business analysis telling us whether or not it is worthwhile for us to make investments in marketing, licensing and patenting our inventions,” she says.

In the past, the tech transfer office would file a preliminary patent for every invention reported that often would “sit in the patent office for a year with the inventor kept in the dark about its progress,” says Boeke, co-chair of the Technology Opportunity Program, a faculty group promoting and pursuing tech transfer on campus.

Now, if the reviewers don’t feel the invention has a solid chance of attracting a licensee willing to fund the full patent application—which can cost tens of thousands of dollars—the faculty member is free to ask his department to file the preliminary patent or to personally assume the costs.

“It gets fast feedback to the faculty inventor,” Boeke says—and that’s very important, as “most of us haven’t been trained in the fine points of economics and the realities of the business world.”

Take the experience of geneticist Hal Dietz. He took a discovery before the Alliance for Science and Technology Development, a group of industry volunteers who come to campus twice a year to listen to presentations by faculty entrepreneurs and offer their advice on the marketability of faculty inventions. Dietz presented data showing that Losartan, a drug currently used to treat high blood pressure, has the ability to block the molecular  mechanism driving the symptoms of Marfan syndrome, a disease that he has been studying for decades. The Alliance agreed to help him move his work to the marketplace.

“As a novice to the world of trying to patent and commercialize scientific discoveries, I needed that kind of input,” Dietz says. “It let me know that this was something that could and should be pursued aggressively.”

Recognizing that researchers often need financial support to bridge the gap between making a discovery and commercializing their product, the Alliance offered grants up to $50,000 for any scientist who has previously presented to the group.

 “We’re really supportive of Jill’s efforts to clean house and make major changes, because major changes were clearly needed,” says Boeke. “Everyone is very hopeful.”

Deborah Rudacille

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