Beyond the Breakthrough: Lesley Millar-Nicholson

On this week’s episode of the Talking Tech Transfer podcast, we talk to Lesley Millar-Nicholson, director of the Technology Licensing Office and Catalysts at Massachusetts Institute of Technology, about a bumper year despite the pandemic.

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Transcript

Please note that the intro and outro have been omitted.

Lesley Millar-Nicholson, thank you very much for joining us on the podcast today.

My pleasure.

To start with, maybe you can give us a quick outline and some headline figures of MIT TLO’s work.

Certainly. And thank you again for inviting me to talk to you. The MIT’s tech transfer office is one of the oldest technology transfer offices in the United States, maybe the world, and we have at our disposal many, many faculty who are highly innovative and therefore, our workload is extraordinarily high, particularly in comparison to some other universities. Just to give you an example of that, the office itself is staffed by about 48 people, ranging in areas of finance, patents, obviously inventions, licensing, marketing, federal compliance, and the like.

Last year in total, we received 864 inventions, which is the highest number we have received in our lifetime. We have a portfolio of over 11,000 issued or pending US and foreign patents. Just last year we had 432 issued, which again is a high, and we exceeded our targets, not that we have targets, but in our licenses and options, and had over 150 of those executed in the last fiscal year, which ended at the end of June. We saw out of those, 32 startup companies formed, which has been trending that way for the last couple of years.

Wow. That is certainly some big figures. 32, I do not know if that makes you one of the highest in the US as well for that, or certainly near the top, if not even globally.

Yes, I think there are a few people who have got really robust infrastructures. I have to say this is a function of the community in which we reside, the Boston area, the New England area, the accessibility to capital, to mentors, to other companies, and frankly the highly innovative nature of our faculty.

With 48 staff, we actually struggle to keep up with the work that we have. If there is anything I would say that we, that hurdles to overcome, is actually doing justice to all of the innovations out there. As you can tell from the size of the portfolio, that is a small company’s size of portfolio as opposed to a university’s portfolio that probably people range in the 10 to 15 or 20 US patents being issued each year, but we are adding over 400 each year, and we have to do justice to those. 80% of our inventions, approximately, are funded by the federal government, so we have compliance with regard to their need to see us getting those technologies into the marketplace.

It does not sound like the pandemic has affected your work, but has it? How has it changed at MIT?

Well, we were able, because we had an infrastructure for remote working, to pivot very quickly, literally over a weekend to working from home, which I am very thankful for everybody’s resilience in doing that, as I am sure many other industries and universities are. What we have seen is that email traffic has increased extraordinarily. Our accessibility though to faculty and others that we need to get in touch with over the last six months has, I will say, improved.

Obviously, they now have on their hands the need to pivot to online platforms for teaching. But if anything, our work has increased and in the space of your own home, depending on your environment, that makes it either harder or easier depending. So, it has been a journey, shall we say. We have tried to keep on top of things to make sure that everybody is thriving in their environment and if not thriving, surviving. Because that first and foremost was our most important thing, to make sure our staff were okay in what they were doing. But the work did not stop. In fact, as you can see from some of the numbers, actually in the last quarter, which was March through June, we saw our highest numbers of inventions and activity.

The one company that I saw come out of MIT recently was PathCheck, which is working on public health solutions that are open, interoperable, and privacy preserving. What struck me as unusual about that one was that it is a charitable organisation. I think it is a 501(c)(3), it is called in the US, and obviously some universities are exploring other types of spinouts such as social enterprises. Is this something that you could see happen more in the future, particularly in the age of a pandemic?

So, that is really interesting that you bring that up because, for a number of months, first, I will say that often the desire for spinouts obviously comes from the faculty’s interest in getting either technology to market or a mechanism by which to engage others in getting a technology to market. So, this was really a community effort and to the extent that the TLO and the Office of General Council enabled that to happen, the agreements that were struck, all of the technology behind this, or most of the technology behind this, is open source.

 So, I think one of the unique things about MIT is that you will see technologies go to market in very different ways, some of which are licensed through our office, some of which are going out through the open source mechanism, and some of which do not need to be licensed in any way because it effectively is a function of a faculty members intellectual interests and they just want to use their expertise and partner with others. So, I will say in the MIT world, you see many companies claiming, and quite frankly, they are affiliated to MIT in some way, but it does not necessarily mean they have licensed IP per se. So, to answer your question, we have seen this before and I think we will see more of it, but even some of the examples of how faculty and students responded to the pandemic with their desire to use their skills and technology to assist in the prevention or diagnosis or treatment of Covid 19. We have already seen some of that occurring.

We have seen eVent, which was the open-source ventilator, which had been created through a student programme back 10 years ago. We have seen the effort that was also done in Columbia and Illinois for face shields, and we did the same at MIT, where we enabled manufacturers to quickly do these disposable face shields. So, MIT is a have-at-it place and I think what we try to do is make sure that we have the tools and vehicles, shall we say, to enable those technologies or ideas or whatever it is to get into the marketplace. But it does not always centre around the licensing office. The Office of General Counsel or other parties might be involved if it is a collaboration agreement or there is no intellectual property or it is just about making sure we have an agreement in place to be clear about this is not MIT and this is how you use a name, but it is of MIT, shall we say.

In addition to being responsible for the tech transfer office, you are also director of Catalysts in the Office of Strategic Alliances and Technology Transfer. Can you tell me a bit about that as well?

Certainly. So, again, MIT is a place where you usually get more than one job, and I joined that troop last September. Over the course of a year before that a lot of work was done to try and identify ways in which we could improve and enhance the way in which we engage with corporate entities and others who want to sponsor research or engage with MIT. Anything from regular sponsored research to capacity building to different sorts of engagements.

So, this team was created, which we are calling OSATT middle. OSATT is the Office of Strategic Alliances and Tech Transfer, which we affectionately call OSATT. OSATT basically has under it the licensing office of which I am director. My colleague Karl Koster also manages the Office of Corporate Relations, which is the industry liaison programme and then we added three groups, Catalysts, Strategic Transactions Officers and Alliance Managers. That group of three effectively assist faculty in the process of engagement with entities who want to engage with MIT and their lab and sponsor research and move it through the cycle of, What is it you want to do? Are our expectations and needs aligned? Transacting the agreement through negotiation with the transactions officers, and then if it is a big enough or a complex enough agreement, also allocating alliance managers or identifying ways in which it can be managed in moving forward.

The Catalysts are my team. I have four of them, fabulous people, PhD backgrounds, engaged previously either in universities or industries and they basically are people who sit down with faculty to take them through that journey. It has been a tremendous learning opportunity for me, having come from the tech transfer side of things to really dig into the different ways that we can construct complex strategic engagement. We consider this a small startup in a very large organization. So, obviously we are dealing with all the tensions that come with that creation of a new entity.

Amazing. Sounds fascinating though. I look forward to hearing more. I think you said a year ago or something you started that, so early days still. This is my favourite question, and it is the one that interviewees hate the most. Can you give me an example of some cool technologies or spin outs that you have seen emerge from MIT? I know it is impossible to pick favourites, but perhaps a personal one.

You are right. I can understand. I am glad other interviewees have felt the same. It was like, Oh, that is so unfair. How can I pick one? And, you know, pick one, everybody else is going to go, Well, what about me? Well, two came to mind immediately.

One is just because it is cool. You said aligned with my personal interests. Well, those are varied, so I will not go there. But there is one company, which I am sure everybody will agree that one of the most frustrating things that you have is when you know that ketchup bottle, you cannot get the ketchup out of it at the end, or the last thing in the jar and you are like, I really want to get that. It is called LiquiGlide and it uses a coating. I am not a technical person, so I cannot tell you how, but it has a film that can go in a ketchup bottle to ensure that you get every last drop of your ketchup or your mayonnaise or whatever. I just think that is such a cool thing because so many people in my early days would say, Can you not find a way in which to? or, Do you see things at? And here we have it at MIT, a startup spinout called LiquiGlide that has done exactly that. So, that is one.

Then the second one, and this is something I am sure now with everybody with headsets on is going to appreciate more and more, and as we get older we lose our hearing. It is called Frequency Therapeutics, and it is a company that is, I think the lead project is working in regeneration of hair cells in your ear. Because basically as you have hearing loss as you age, it is the fact that you are losing those hair cells and they are not regrowing. So, I just think it is so cool and as I look at my parents and others who are losing their hearing just because of age, and then I look at the youth of today who have their headphones on and now we are sitting with headphones on, is that the chances of us all suffering this a little sooner is probably high.

So, I am hoping that everything that Frequency is doing in bringing that technology to market is going to be useful for everybody.

That is amazing. I think I am a prime candidate for hearing loss because my parents are both suffering from it. But the ketchup bottle is amazing. That is why I like asking this question because it usually brings out the very weird stuff that you would have never thought about. I do not think I have ever looked at a ketchup bottle and thought, a university will solve this problem.

Right. And just to clarify, I do not know if they have any deal with whoever does ketchup, but that is the concept that the film can actually get the last drop out, and I am sure there are many, many other applications that would be useful for that. But that is the best way to describe it. That is what it does.

I imagine there are applications in life sciences, industrial applications as well for that. Not just the ketchup up bottle. But yes, it sounds amazing.

Yes. Well, and if I can just ad lib here a little, I said I would not, but I will. One of the coolest things about tech transfer is that many of our faculty are striving to replicate nature. Nature has so many of the solutions to the problems that we are facing, and it is just such a fascinating process of discovery to work out how it is that photosynthesis occurs and how we can make that into something that can benefit society in different ways. I think that fundamentally is one of the driving reasons that being involved in this area is so fabulous. I am humbled every day in the work that I do in this area to see that occur.

It is amazing. Yes, even covering this from the outside, it is quite a fascinating field. So, I imagine being smack down in the middle of it and actually seeing these inventions come out in real time is amazing.

Yes. Absolutely.

You have been in tech transfer for a while. You ran the Office of Technology Management at Illinois for 10 years before joining MIT. I imagine MIT being MIT was a big reason for joining, but did you have any other reasons and what has the experience been like so far?

So, what the experience has been like so far, as I just mentioned, it is just a privilege. It is a privilege to work at MIT with all of the people, to have the support of the university and what we do. It is quite inspirational, as I mentioned, and to work with the licensing office staff and others around us who are completely committed to doing what we are here for, which is getting technologies into the hands of those who can develop them and have impact in the world.

What convinced me to join MIT? University of Illinois was fabulous, and in fact, it put me on the road to where I am at the moment, and I cannot ever thank the organization and the leadership there enough for the opportunity they gave me, including sponsoring my H-1 visa, which is no small order. It did not take much to convince me to join MIT. It was timely. I felt as though I had done, not everything I could, but I felt as though I was leaving the tech transfer office at Illinois in a fairly good space and the incoming leadership there was well ready to do that.

So, I have always found in life that when you are presented with a fork in the road, even if it is daunting, which it was, it was one of the most daunting things I did to actually even interview, because as you probably know, females often feel as though they are imposters and although I was potentially going to be replacing a legend, Lita Nelsen, it was not hard to decide to interview in itself, but when it came to it, it was one of the most challenging things I had ever done. Then when I was offered the position, I had to work out which path I was going to take to take on this well-established office. That in itself was quite overwhelming at times.

But I was ready for that challenge, and that is probably why I, as I said, it was not about convincing, it was about making sure I was ready and capable and took this journey with the support of my family, my wife, and at the time, a young daughter who is now 13 and I had all of that support to do that, and so we moved here in 2016.

Amazing. Even just going by the numbers that you mentioned earlier, I think you have really done it justice, and as you said, Lita Nelsen was a bit of a legend. So, it is big shoes to fill.

Well, I will say I do not think the numbers are anything to do with me. I think the numbers are a function of where we are at and the work of our licensing officers and patent team and finance team and compliance team and everybody in the office who works to engage with the faculty. I am hoping just that I am steering and providing inspiration, leadership and motivation to everybody who works in the TLO and that MIT feels supported by our office in a constructive way.

At the same time as dealing with the challenges it faces at the moment, whether it is covid-19, working from home, budget constraints, making sure that people are well served in the jobs that they are doing. They still have goals and professional development. Those are not small things, and we need to keep our eyes on those as well. So, again, I do not think I can take any credit for the numbers. We have a huge momentum, but I do want to make sure that in each and every day the staff that I work with feel supported and motivated to continue the same.

Spoken like a true leader. You have obviously been in tech transfer for a while. Have you seen any notable changes during your career in tech transfer?

It is such an interesting question because there are a couple of ways I could answer it. One is just the drive, and this is across the world, to see and improve on the number of female inventors engaging with tech transfer offices. My colleagues at Washington St Louis and Northwestern in particular have done some great jobs with great programmes and it is well supported by USPTO and AUTM, the Association of University Tech Managers. So, that has been something that I have been pleased to see.

I would like to see a greater representation of underrepresented minorities and black people in the leadership of tech transfer. I think we probably are not a diverse enough group. But another thing is that I have seen, and I think everybody has seen, I will say the switch to something, tech transfer plus. So, tech transfer offices typically are filled with individuals who have some business, legal, IP experience. What we have seen is that they have now become the hub for other things other than just, I will call it, pure tech transfer.

To clarify, I see MIT as a pure tech transfer office. We are doing everything associated with receipt of inventions and getting them evaluated, assessed, protected, and then working on negotiations and management of licenses and making sure that we are doing right by our joint owners and our faculty, et cetera, et cetera. But we are surrounded by our community, as I said at the beginning, of VCs and incubators and accelerators and mentors and all sorts of things. Other places are not. Often now you have seen the change of tech transfer offices from that pure function to that multipurpose function.

They have become the centre for business development expertise, for assistance in writing for federal grants across here, SBIR/STTRs in particular, they have become the place where leadership for an incubator or accelerator is sought. So, they have become this multifaceted tech transfer plus, I am making that term up, for a community, not just a university community, sometimes for their regional community or even their state community.

The work that Orin Herskowitz at Columbia has done for New York is quite amazing in building some great accelerator programmes. So, that means it becomes a different sort of organization. It has many, many talents and it can assist. Now, that is as long as you are hiring to make sure you have the right sort of people and that the same people, the 10 people or 20 people you have in your office are not expected to do all of these things and continue to do the pure tech transfer because behind that curtain, there is a lot of work that goes into maintaining portfolios of IP, et cetera. But that is I think the most significant change I have seen.

And as people look at forward-looking strategies they are trying to work out what it is they want to be in the future or what it is their university wants them to be and how they can assist in economic development or commercialization or creation of jobs or whatever their regional economic development strategy might be.

You said earlier you have a lot of jobs at MIT. Another one, you are also a member of TenU which is the transatlantic collaboration to exchange best practices. You are due to visit the UK in January, I think, on the invitation of Tony Raven over at Cambridge. Can you tell me a bit more about TenU and how that is helping the TLO do its work?

Yes, this is something that is in the early stages in terms of impact, but when I became director of the office at MIT, I had known Tony for some years and I knew that they had this group called SixU. So, he and I had been discussing, and always want to take advantage of relationships and see how we can enhance each other’s impact. We discussed ways in which we could expand that cross ocean to include initially MIT and Stanford, and then he wisely suggested also some other universities in Europe, and that included Leuven.

So, we have, I think, MIT, Leuven, Oxford, Edinburgh, Stanford, Imperial College, Columbia, we have brought them in, Cambridge, Manchester, and UCL in London. The idea was there are many groups that get together to share best practices, as you said, it was just to begin to compare and contrast and learn from each other about policy impact, government impact, ways in which we are dealing with things. Then other ways that we could enhance each of our learnings across, I will say, cultural boundaries, because obviously this needed some financial support engaged with NIST across here.

Oh gosh, I am going to forget the acronym for this, National Institute of Science and Technology, which is under the Department of Commerce. I am pretty sure I have got that wrong. But it is led by Walt Copan, and Research England, they too have joined in order to give us an enhanced boost with regard to being able to structure the infrastructure. The idea truly is to see ways in which we can engage across borders.

The sorts of things I mentioned are the sorts of things we are looking at. But this is fairly early days. We have regular meetings. We are hoping that some of them in the future will be in person and we are going to run agendas that allow us to integrate across offices as well if we can through, if possible, future staff exchange programs as well.

Amazing. I have been talking to the guys at Cambridge as well, so hopefully at the end of January if you are in the UK, if not, it will have to be Zoom, but hopefully we can check in and talk some more about TenU then. As a final question, an open-ended question, is there anything that we have not talked about yet that you are dying for the world to know?

I do not think so. I appreciate the platform to be able to thank all of the people that work with me for giving me the opportunity, but giving us all the opportunity, to get MIT technologies into the marketplace and to also share with others what we consider to be best practices, but also learn from them. That is a fabulous thing about tech transfer that you have seen one technology, you have seen one technology. It is a learning moment every day and that is what makes it probably the best job in the world.

I think those are good closing words. It has been as honour having you on the podcast. Thank you very much for taking the time out of your busy day joining us. And yes, I will see you on September 29th at the Digital Forum for our roundtable then.

I look forward to it. Thank you so much again.

Thank you.