Issue



More than IP: Tech transfer for micro/nano commercial success


03/01/2008







Micro and nano tech transfer aims ultimately to result in product or process commercialization. And so the practice is subject to the general pitfalls of micro/nano commercialization.1 Dr. George Kachen, director of research and technology development for nanomanufacturing at the University of Massachusetts Lowell (UML), says, “Nano cuts across many disciplines and applications and as such it is difficult to detail their application spaces.” Intellectual property (IP) is a key component of successful technology transfer, says Kachen, and it is almost impossible to find IP legal counsel with the technical and application knowledge to properly support these efforts.

Dr. Harry Stephanou, of the University of Texas Arlington’s Automation and Robotics Research Institute (ARRI) and the Bennington Microtechnology Center (BMC, Bennington, VT), points out that the path to commercialization has been time-consuming for many MEMS devices1, especially compared to other electronic systems. Significant monetary payback for a licensee is drawn out accordingly. He also says design complexity and package and interconnect costs for MEMS devices must be addressed by a collaborative team of both sides of the tech transfer process—in what he calls “technology diffusion,” which he equates to a closed-loop development process. “Most technology transfer is open loop and as such, is inefficient. …You need to transfer something that works to maximize success,” he says.

Jack Vann, founder and CEO of Visi-Trak Worldwide (Cleveland, OH), followed the approach advocated by Stephanou with the University of Virginia (UVA) through an initial $150,000 contract co-supported by Visi-Trak and the Virginia Center for Innovation Technology. The two-year co-development contract required an additional three years and $250,000, which has created a new product—a magnetic proximity microsensor system. “Here UVA’s major contribution was the proprietary algorithm that provided the exceptional performance of the system. Visi-Trak’s contribution was to provide the system integration expertise and have a say in the selection of the front-end sensor technology.”

Dr. Sean Graves, VP of engineering and operations of the newly formed Visi-Trak Sensors organization, says the basis for the success of the tech transfer was to create a development team with the UVA researchers. This corroborates Stephanou’s assertion concerning the importance of a continuous process and closed-loop feedback during the development process.

Maximizing success

On technology transfer panels I have moderated, discussion of how to maximize a successful tech-transfer process is of particular interest. Keith Ritala, IP and industrial agreements manager at the University of Washington, provided additional perspective, stating that IP licensees need to do their homework and go shopping into the IP portfolios of sellers. However, the IP to be acquired must fit into an overall solution and be provided by a group that can make the best contribution from the perspectives of both technology and collaboration. And, as Stephanou and Vann note, the IP will need considerable value added by the licensor—and hopefully the licensee. Ritala says each party must clearly understand from the beginning the financial details and timing. He also notes the importance of the licensor’s due diligence to confirm that the licensee intends to commercialize the product not to lock up IP and thus prevent commercialization.

Kachen suggests that the licensee take an active role in promoting both its portfolio and its “easy to do business with me” modus operandi. UML and other research universities attend trade shows and conferences for the purpose of offering technology and R&D assistance to companies. UML holds an annual industry day at its campus to highlight significant work; in addition, UML runs ads in prominent industry publications and has a dedicated Website to promote tech transfer activities.

There is an obvious but sometimes overlooked side benefit to such partnerships: human capital, which Ritala calls “the purest form of tech transfer.” Quite frequently, R&D staff at the licensor’s university/lab licenses the technology that they have helped develop and become entrepreneurs. Sandia National Labs has a formal program, MEMX, to promote this activity. Companies engaged in technology transfer with a university tend to have “first dibs” after graduation on the student who is up-to-speed on the technology and has demonstrated his/her work ethic and creativity.

Done correctly, tech transfer provides benefits that are impossible to duplicate.

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Roger H. Grace is a technology marketing consultant with more than 35 years’ experience in the small-tech industry. Contact him at rgrace@rgrace.com.

  1. R.H. Grace, “Barriers to the Commercialization of Micro and Nanotechnology: An Updated Industry Report Card,” NanoCon 2007 (www.smalltimesnanocon.com), www.rgrace.com.