(Invited) Is Commercialization of Intellectual Property in an Academic Environment Feasible?

Johna Leddy; Bill Leddy

doi:10.1149/MA2023-01271770mtgabs

A career in academics is in some ways at odds with commercialization. The priorities of an academic institution are publish or perish. Yet, the path to commercialization embeds either patents or trade secrets. Many in academics do not acknowledge patents as academic achievement. For a variety of reasons, university laboratories are not established to build the demonstrations needed to promote commercialization. Universities support patenting but are not equipped to facilitate commercialization of research, especially research based on sophisticated, fundamental ideas. Because of the constraints of the academic environment, ideas are driven to patents before devices are demonstrated. Yet the Bayh Dole Act provides that federally supported research be commercialized with any profits returned to the universities and inventors. These constraints create a barely navigable matrix for the academic inventor. When financial constraints reduce the University's support of patents, ownership is transferred to the inventor. This creates complexities in IP management with the University and increases cost to the inventor. However, it also creates opportunity. To commercialize the existing and evolving IP, a small business was formed with family. And now we maintain the patents, write grant applications restricted to the personally held IP, promote the IP, and try to bridge the chasm to commercialization. Startup success is elusive under the best conditions with experienced founders that understand both the technology and more importantly the business need. Founders typically have a working system and industry contacts before attempting to launch a new venture. Founders spend most of the time selling to investors and early prospects. New ventures started by academics have none of these advantages. They often have a great idea but no commercially viable prototype, no industry contacts and no connections to investors. They do not understand the amount of time spent on fundraising, and lack the skills and desire to raise funds. Commercialization of university research is more difficult than starting with nothing outside because university life is a full time job with many constraints. Investors are not interested in part-time CEOs. They want full time commitment and focused dedication. Investors are not interested in dealing with university administrations and procedures. Successful commercialization requires three roles: Business person that understands the market opportunity Subject matter expert that can defined a solution to the problem Product manager that can translate between the other two and build a working system. A successful combination of these roles in coordination is required to build an investable business that can attract the capital required for commercialization. Academics can provide the subject matter expertise but engaging successful business people and product managers need to be found outside universities. Finding these connections is difficult but friends and family, industry organizations, and angel investment networks can provide some paths. University business schools and administrations should facilitate these connections with vetted business people. Universities should have an investment pitch competition put on by professors with patent portfolios each semester. Universities can invite investors to view the commercializable research that is being developed within the university. This is a non-trivial undertaking but can be done virtually to reach a wide range of investors across the country. Very few US universities have provided successful paths to commercialization. These most famous, well funded, private universities attract most of the investment interest. A few worked examples coming from other universities will encourage the appetite for future investment.

(Invited) Is Commercialization of Intellectual Property in an Academic Environment Feasible?

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