Licensing efficiency of academic tech transfer

Universities in the US have engaged in academic technology transfer since before the Bayh-Dole Act – the legislation that deals with intellectual property arising from federally funded research – and make significant contribution to the economic and social health of the US.

The 2015 Licensing Activities Survey by tech transfer trade organisation the Association of University Technology Managers (AUTM) and biotech trade body the Biotechnology Industry Association provide impressive figures regarding licensing activity and the economic impact of academic technology transfer. The AUTM’s Better World project has a repository of almost 500 stories from across the world demonstrating the value of academic research. Also, the Association of American Universities has a repository of numerous studies attesting to the impact of universities on economies and the innovation ecosystem.

Each year the AUTM Licensing Activities Survey (ALAS) reports metrics for research expenditures, invention disclosures, licences, patent activity, number of technology transfer professionals and startups created. These figures show a steady increase in the overall activity – all numbers trend up driven by increased research funding. In 2015, more than 25,000 invention disclosures were received, almost 16,000 new patent applications filed and close to 8,000 licences and options executed.

Typically, the success of a technology transfer office (TTO) is based on performance indices such as invention disclosures received, licences signed, patent applications filed, patents issued and licensing income. With increases in these numbers each year, this article seeks to examine the licensing efficiency of academic technology transfer and determine whether there are better indicators of success and licensing efficiency.

Licensing is a complicated multi-year process that begins with assessing the innovation and prophesying its potential use and applications. While there is no doubt that academic technology transfer has a positive impact on the national economy and the innovation ecosystem, the question is, what is the efficiency of transferring innovations from universities to industry? Is licensing efficiency a measure of success? And can we improve the manner in which we transfer innovations?

Method

Data used for this analysis spans 14 years, from 2000 to 2014. The graph below shows licensing full-time equivalent staff (FTEs), total research expenditures, licences and options executed, licences to spinouts, companies formed, invention disclosure received and patent applications filed.

Income is not included in this analysis as licensing income is neither a direct measure of licensing activity, nor TTO success because the TTO does not control the technology after executing a licence. The responsibility for commercialisation falls on the licensee and is influenced by many factors. In other words, TTO success is determined by how many innovations transfer from academia to industry. The real measure of TTO output is the number of agreements executed – getting deals done.

Some interesting trends emerge from the ALAS:

• A significant increase in the formation of and licences to spinouts – almost doubling in 15 years.
• The total number of licences and options – exclusive and non-exclusive – which has increased by about 150%.
• Invention disclosures and patent applications filed have more than doubled.
• Gross licensing income shows a two-fold increase.
• Steady growth in research expenditures.
• The number of FTE increased steadily until 2009, when FTEs failed to keep up with the growth rate of research expenditures, which may be attributable to the increase in research funding as part of the economic stimulus bill American Recovery and Reinvestment Act (Arra) of 2009).

While these numbers reflect well on the profession, they tell only part of the story. Analysing the data from a different perspective provides additional insights into the performance of the profession. In the past, universities have benchmarked metrics by “per million dollars of research”, which makes sense from one perspective as more research leads to more invention disclosures and licensing activity. However, there are wide variations in research funding based on whether universities have medical schools or colleges of engineering. It is not an “apples to apples” normalisation. Further, it does not necessarily reflect the size or the licensing efficacy of the TTO as the office’s size is not necessarily proportional to university research expenditures.

One way to gauge the efficacy of a TTO is to normalise licensing activities to FTE to get a different perspective and new insights. Based on the ALAS definition, a licensing FTE is “involved with the licensing and patenting processes as either full or fractional FTE allocations … examples include licensee solicitation, technology valuation, marketing of technology, licence agreement drafting and negotiation, and startup activity efforts”.

The following analysis assumes that a licensing FTE is solely focused on the process of licensing and no other activities, such materials transfer agreements, industry sponsored research and so on. The following criteria were used:

• Invention disclosures per FTE.
• Total licences and options per FTE.
• Exclusive licences and options per FTE.
• Non-exclusive licences and options per FTE.
• Startups per licensing FTE.
• Total licences and options per invention disclosure.

General observations: measuring the output efficiency

The above metrics reflect the effectiveness of a TTO to reach out to faculty, the efficiency with which innovations are licensed and the efficiency of spinout formation and licensing which creates a baseline for determining licensing efficiency. Licenses per patent application filed was also considered, but it would not capture licences to innovations that do not require patents.

The data in the graph above shows some disturbing trends; overall it looks as though we are not doing any better in the rate of executing licence agreements in 2014 than we did in 2000. The total number of licences per invention disclosure decreased significantly over the past 15 years, as did the number of exclusive licences and options per FTE. There was a slight increase in the number of licences per FTE in 2014. There is an increase in non-exclusive licences and the number of spinouts per licensing FTE, both formation and licences. These new metrics provide an opportunity for robust discussion.

Invention disclosures: consistent over the years

Invention disclosures per FTE in the graph below should reflect the results of TTO outreach to faculty – the effectiveness of an office to convey to the faculty the value of the activities being undertaken by the office.

The average number of disclosures per FTE has remained relatively flat, ranging from 190 to 220, with an average of 205. This means that either the outreach to faculty is no more effective today than it was in 2000, that the relative TTO budgets have remained flat and we are just keeping up with the numbers of invention disclosures received, that TTO efforts are as effective now as they were in 2000, or that this is the saturation point. It also raises the question of whether we should try to decrease this number, by either hiring significantly more staff or decreasing the disclosure rate. This assumes that if the number of invention disclosures per FTE goes down over t
ime, it could result in increased licensing efficiency and overall efficacy of the TTO due to better quality of invention disclosures.

Invention disclosures per FTE provides a macro picture of a TTO’s outreach efforts and has at times been used as a surrogate measure for FTE caseload. To have a complete understanding of the workload and outreach efforts, additional information, such as the number of disclosures licensed, closed or being actively marketed, is needed. Categorising innovations based on classification such as actively marketing, licensed, requiring further research, released, not pursued, and possibly other classifications would help.

This type of classification requires some level of management, but without that additional information, it is hard to assess the nature of the invention disclosures and a licensing FTE’s workload. Each category also indicates what is needed to license the invention and the different levels of effort being expended. It would provide the detailed information needed for a better understanding of the pipeline of invention disclosures. Creating such a classification system may seem tedious, but it is quite straightforward.

Licensing: worrisome trends

The decrease in the rate of licences per FTE – shown in the graph overleaf – is the most disturbing trend shown by this data. Total licences and options executed per FTE trend down from 2000 to 2008 (by about 50%), increase slightly from 2008 to 2009, and then increase significantly from 2010 to 2014. The upward trend in licences per FTE from 2011 to 2014 is due primarily to a higher rate of non-exclusive licensing. There is, however, a steady increase in the rate of non-exclusive licences and options starting in 2008. The other notable trend is a nearly 30% decline in the numbers of licences per invention disclosure, which dropped from 2000 to 2008, and seems to have been holding steady since then.

The increases in licensing from 2011 to 2014 may be due to the end of the recession, which started in 2007, and corporate investment in new technologies. There is also a likely increase in innovation disclosures, such as biological materials, research tools, software and so on, that lend themselves to non-exclusive licensing, a lower reliance on exclusive licences and changes in patent law. Without additional information, the cause of lower rates of licences per FTE and per invention disclosure remains unclear.

Determining the efficacy of a TTO requires different types of data, such as Apio’s Licensing Readiness Level of the innovations being disclosed. Other types of data include tracking lead generation and marketing efforts, feedback and responses from potential licensees and tracking time taken by negotiations. These, when combined with the data collected to determine the caseload per FTE, would start to give a better picture of the licensing efficiency of a TTO.

Startups: steady increases

There is an increase in startup formation and startup licensing since 2003. Several factors play a role in this increase. There has been a steady increase in faculty and student entrepreneurs as an outcome of the recession – there is a documented increase in startups during recessions – with programs that provide education and support, greater funding opportunities and increases in student entrepreneurs. Also, universities have had high-profile startup success stories that increase the visibility of startups and highlight the impact of startups on the local innovation ecosystem.

The focus on startups was not limited to universities. State governments also recognised the potential impact of startups on the local innovation ecosystem. Many states and universities augmented their programs or created new programs to support startups. These include UStar, previously called Utah Centfres of Excellence program, Tech Launch Arizona’s SBIR/STTR government-funded competitive grant program, Cornell University’s Runway program, Advanced Industries Accelerator Colorado, and Startup Nasa to name a few. Some of these programs were established over 15 years ago. The increase in startup activity can also be attributed to the start of the recession, which has served to increase the emphasis on startups and their potential impact on local and regional economies.

Discussion: decreasing efficiency

The efficiency of transferring innovations to industry relies on two factors, the desorptive capacity of academic institutions – the ability to release innovations for commercial application – and the absorptive capacity of industry – capacity to incorporate innovations into product development. Within each of these factors, there are many elements that influence the interactions and efficacy of innovation transfer. An essential element of the desorptive capacity of academic institutions is the TTO, which is the formal channel through which licences, collaborations, joint research and so on are created. Are there improvements that can be made in licensing efficiency? Or, more broadly, how can we increase the desorptive capacity of a university?

The purpose of this analysis was to examine the data and determine whether there are new insights or lessons to be learned regarding the efficacy of licensing innovations from academia to industry. The metrics described in this paper were selected as they represent the outputs of a TTO, that is major components of a university’s desorptive capacity.

Invention disclosures per FTE have remained relatively flat since 2000. This means that the staffing level of TTOs is at least keeping pace with incoming invention disclosures. The general thinking in the profession is that 25 to 30 new invention disclosures a year should be the caseload for an FTE to be effective at assessing marketing and licensing innovations, using objective measures such as the Licensing Readiness Level or the Technology Readiness Level scale developed by space agency Nasa, .

A more accurate measure of caseload, and the nature of invention disclosures, would first require classifying the incoming disclosures in two major categories, those that do not require detailed assessment or intellectual property protection, such as biological materials, research reagents and copyrightable subject matter, and those that require detailed assessment. Further classification in the second step could use designations such as not commercially viable, seeking intellectual property protection, marketing, licensed and additional research needed, as opposed to development, because almost all university inventions require development.

This would create a system that would provide a more accurate picture of the caseload, nature of incoming disclosures and where to focus outreach efforts. This information can also be used by TTOs to allocate and request resources such as staffing. This process separates disclosures into three groups – those put on hold for further results, disclosures that are not commercially viable and disclosures that are commercially viable, are licensable or are actively marketed.

The trend of declining numbers of licences per FTE and licences per invention disclosure is concerning. The decrease from 2000 and 2014 indicates either a decline in licensing efficacy, changes in industry, less licensable invention disclosures, or all the above. This becomes even more a concern when considering the introduction of the easy access licence and quick licence concepts. The reasons for this decline are not readily discernible from the data. Th
ere may be several reasons for this trend which include:

• Complexity: Licences are increasingly complex to negotiate. This may be because both universities and industry are much more aware of what it takes to develop university technologies and this may lead to longer negotiation times.
• Volume: Given the mission of universities, TTOs must assess all disclosed innovations, a time-consuming process.
• Time: Innovations take three to seven years to license from the date of disclosure and there can be significant variations by industry.
• Startups: There continues to be a focus on startups, a trend that started 2008. This focus takes time and effort away from licensing and could contribute to an overall decrease in licences per FTE, especially if the FTEs are responsible for both licensing and startup licensing.
• Development stage: There may be increasing numbers of innovations being disclosed at early stages of development and therefore less licensable.
• Publishing: Disclosing innovations earlier due to pressures of publication. While there has always been a pressure to publish, this has been exacerbated with the advent of online publications.
• Licensable inventions and commercial viability: There may be an increasing proportion of invention disclosures that are neither commercially viable nor licensable.
• Reporting: Invention disclosures that are not commercially viable – those that are closed or put on hold – are not reported, so it is quite possible that the licensing rates of commercially viable innovations is increasing rather than declining.
• Expanding roles: FTEs may be dividing their time with other activities such as industry sponsored research, materials transfer agreements, economic development and business development if the TTO does not have dedicated staff for each function. Categorising TTOs based on these criteria may also shed additional light on these numbers.
• Administration: The number of individuals involved in participating, reviewing and approving agreements at universities may have grown and may include inventors, associate vice-presidents, legal experts and others.
• Expertise: TTOs may not have the right expertise to be effective in packaging and marketing the type of deal that is needed for the innovation to be commercialised.
• New models: Several universities have introduced “easy access licensing” and “quick licences” based on models developed at Glasgow University and University of North Carolina respectively, which require little or no negotiation. It may be that both universities and industry are more conservative in adopting these approaches.
• Industry: There may be a shift from licensing to sponsored research, collaborations and joint development.
• Risk: Industry is becoming even more risk-averse.

A more detailed assessment needs to occur to understand the factors that influence licensing efficiency. Currently, we lack the necessary the data for a complete analysis. Last, this may be the efficiency of the current system.

Startups per FTE are already trending up. This is in part due to dedicated teams devoted to startups and programs at universities that support faculty and student entrepreneurship. There is likely to be an increase in the rate of university startups based on increases in gap funding programs and, more recently, university venture funds.

Recommendations

The AUTM has collected data through the ALAS for the past two decades. Over time the nature of data being collected has changed to reflect some of the changes in technology transfer. It is time once again to reassess where we are and the type of data we need to reflect TTOs accurately. It is onerous to collect data on all TTO functions, especially as TTOs have a variety of responsibilities.

However, the licensing data currently being collected can be augmented by the additional metrics mentioned in this paper, which would not be hard to do. Having a classification such as actively marketing, licensed, requiring further development, released, not pursued and others, are most likely already being used. Updating the status may be onerous. However, carefully creating processes and procedures in a TTO can make that part of routine workflow. Providing consistency through defining these terms and collecting the information would provide greater clarity about the pipeline of invention disclosures and the numbers of commercially viable innovations that are licensed.

Therefore, the focus should be on identifying the right type of data to be collected with minimal additional burden on TTOs. Universities would benefit from the additional data and information as it provides a more accurate representation of academic technology licensing. The AUTM, universities and database providers can come together and take the following actions to standardise data collection and implement these changes:

• The AUTM can create standard definitions for classifying invention disclosures and disclosures status and an ALAS portal into which universities can automatically input data.
• Database providers can create the appropriate fields so that data collection is integrated into the workflow of the TTO and reports to and provides the data to the AUTM through the ALAS portal.
• Universities should create internal processes and procedures to collect the data easily.

The first and foremost objective in licensing innovations is to get the innovation out the door. Because of this, licensing staff should not fight for the perfect financial and non-financial terms. The licensing process is a way to establish a relationship with the licensee and due to the nature of the relationship, it is critical to get off to a good start. The objective should be to license the technology as quickly as possible. The most critical things needed to increase the rate of licensing per FTE are:

• FTEs dedicated to licensing. This team needs to be supported by expertise in marketing, finance and legal. The other activities of a TTO relating to industry sponsored research, business development, startups and so on should have separate teams.
• Staff dedicated to market research, lead generation, and marketing invention disclosures.
• Establishing goals for TTOs based on numbers of deals executed, which means streamlining internal processes and procedures.
• Allocating more resources to hire FTEs so that the annual case load for FTEs is manageable. More FTEs also means that FTEs will have more time to spend with innovators, resulting in a more informed faculty and student population and increasing the quality of disclosures.

Finally, there are other actions that can be taken to improve licensing efficacy, such as allocating resources to assess innovations, improve market research, educate faculty and enhance FTE expertise through hiring and continuing education.

If licensing efficiency is the measure of success, we need more information regarding the nature of invention disclosures with which TTOs have to work. In addition, will adding more FTEs make the process more efficient – or should we strive to decrease the numbers of disclosures, assuming that lower number of disclosures will result in higher-quality, in other words licensable, disclosures? What kind of targeted outreach is necessary to achieve this?

With this in mind, and after analysing and reflecting on the data, we end up with more questions. Why are these metrics trending the way they do? What do we need to change? Is there something we can we do to be more efficient and if so, what? Are more technology gap funds needed? Should universities be more selective in choosing the invention disclosures to take
forward? What resources will be needed to implement this approach?

We need more data, not less, especially if universities want to reflect the nature of academic technology transfer accurately. If we enhance data gathering it will create a better picture of the nature of invention disclosures in the pipeline for licensing efforts. It will also provide a way to track progress and quantify the process. These methods and metrics do not serve to compare one institution with another as there is no simple way to determine the nature of invention disclosures and resources allocated, to marketing, for example. Rather, these provide a way for TTOs to create management tools for self-monitoring and assessment.

Acknowledgements

I would like to thank Ray Wheatley, John Christie and Chris Noble for providing feedback during the writing process. I would also like to thank Kristin Rencher for her insights, support, pushing me to write, editing, and challenging me to keep moving forward.

This is an edited version of an article that first appeared on Apio’s website