Academic Entrepreneurship

How to Bring Your Scientific Discovery to a Successful Commercial Product

Michele Marcolongo

• Publisher: Wiley
• Year: 2017
• ISBN:
  9781118858967
• Edition: 1
• Topic: Business
• Subtopic: Entrepreneurship
• Index: Business

The pathway to bringing laboratory discoveries to market is poorly understood and generally new to many academics. This book serves as an easy-to-read roadmap for translating technology to a product launch – guiding university faculty and graduate students on launching a start-up company. • Addresses a growing trend of academic faculty commercializing their discoveries, especially those supported by the National Science Foundation and National Institutes of Health
• Offers faculty a pathway and easy-to-follow steps towards determining whether their discovery / idea / technology is viable from a business perspective, as well as how to execute the necessary steps to create and launch a start-up company
• Has a light-hearted and accessible style of a step-by-step guide to help graduate students, post-docs, and faculty learn how to go about spinning out their research from the lab
• Includes interviews by faculty in the disciplines of materials science, pharmaceuticals, medical devices, information technology, energy, and mechanical devices – offering tips and discussing potential pitfalls to be avoided

1
So, You Have a Game‐Changing Discovery… Congratulations!

Vision without execution is hallucination.

—Thomas Edison

Some of the best days in the life of a researcher are those where you get the data back from a key experiment to find that you have proven your hypothesis, met your design objective, or just flat out made a new discovery. That excitement and sense of fulfillment is, in part, what drives academic faculty. The discovery and the dissemination of those important findings are the well‐deserved products of tenacious research endeavors.

There may be a day when you realize that your discovery has real promise outside of the lab—it could be a game changer. But what’s the best way to get this discovery from the lab to commercialization? Academics are trained in graduate school and during our postdocs in how to run a lab, design experiments and write grants, analyze data, write papers, present scientific findings, and teach. To date, the academic community has not used this same apprenticeship model for systematic training in aspects of entrepreneurship, especially academic entrepreneurship and all of the steps and decisions that need to be made to “translate” your discovery to commercialization (Figure 1.1), where it can become a product or service to meet a need in our society.

Figure 1.1 Start of the path toward commercialization of an academic discovery.

And yet, many academics roll up their sleeves and try anyway. Without training and often with little guidance, academics make their way through intellectual property (IP) law (United States and international), market assessment, value propositions, licensing agreements, negotiating business relationships, finding a good corporate partner, and starting and financing a new company. This book is intended to provide a process that will allow a step‐by‐step approach to evaluate and realize commercial potential of your research findings. To supplement the methods, there are summaries of interviews with notable members of the academic entrepreneurship ecosystem including investors, heads of proof‐of‐concept centers, incubator directors, and numerous academic entrepreneurs themselves. To get started on your path to entrepreneurship, please go to Chapter 2. For a very brief history of how we got to this point in academic entrepreneurship, continue through the rest of this chapter.

Brief Review of Academic Entrepreneurship

How did we get to the point of academic research turning into commercial products and services? Some academics are not interested in commercializing a research finding (but probably not many of those reading this book). They’re driven solely by the probing of new knowledge and not by bringing the fruits of that knowledge back to society in ways other than the traditional methods of publishing findings and training students. Indeed, if universities don’t provide a place for fundamental research, where will it be done? With notable exceptions, corporations that used to have major internal research centers have cut those back dramatically with a preference for outsourcing or acquiring early‐stage research. Early‐stage research and discovery is a concept that is critical to the advancement of basic knowledge, but expensive to support with the constraints and impatience of real‐world corporations today. The Bureau of Economic Analysis (BEA, 2014) cites a decrease in research and development (R&D) growth from 7% in 1965 to 2% in 2013, with a 50‐year average of 4.6%. From 2007 to 2013, the average was 1.1%. This corresponds with, but may not be causal to, a reduction in the number of corporations that publish in scientific journals, which have gone from 17.7% in 1980 to 6.1% in 2007 (Fortune, 2015). A tremendous source of research is our national labs whose members contribute research, but with a focus that is primarily mission driven, potentially limiting the breadth of basic research questions. Along with teaching and service, research is a primary mission of an academic faculty member who then disseminates those findings openly to the scientific community. Can we maintain this “purity” while extending our definition of dissemination of findings to include translating discoveries toward commercialization where they can more directly address societal and technological challenges?

In the book Open Innovation, Henry Chesbrough summarizes the evolution of research within the government, universities, and corporations (Chesbrough, 2006). From the turn of the twentieth century until World War II, the US government was generally uninterested in supporting university research. The government’s few scientific interests were in understanding gunpowder as well as in developing a system of weights and measures. For corporate protection, the US patent system was initiated. During this same period, basic science was in an amazing state of discovery in universities across the world. This was the time of Einstein, Bohr, Roentgen, Maxwell, Curie, Pasteur, and Plank. These were “pure” scientists. However, pre‐World War II universities lacked funds to conduct significant experiments themselves. During this time period, Thomas Edison invented the phonograph and electric light bulb. Edison, however, was considered by the university scientific community to be a “tinkerer” of “lesser ability,” who had compromised himself and corrupted the process of scientific discovery. Thomas Edison held 1093 patents. Corporations during this time needed to work toward innovative products, so they began internal R&D within the companies. They were able to hire top scientists with jobs for life, creating academically stimulating corporate environments. Corporate scientists performed basic research that in some cases also led to product development. The centralized R&D organizations were critical to growth and business opportunities for the high‐growth corporations. At that time there was little connection among government, university, and corporate research (each being mostly closed systems).

After World War II and through the 1970s, the US government’s interest in supporting research was greatly enhanced. President Franklin D. Roosevelt realized that the United States needed to import much of its scientific knowledge and technology from Europe for weapons development during World War II. Roosevelt charged Vannevar Bush to study ways that the United States could increase the number of its own trained scientists. He wanted to simultaneously aid research activities in the public and private sector and increase federal funding of basic research in universities. Roosevelt envisioned a strong and independent scientific reservoir in the United States, in part as a defense strategy. To satisfy these needs, the National Science Foundation (NSF) was formed to coordinate efforts between government, universities, the military, and industry. The GI Bill of Rights was also enacted to fund tuition for veterans returning from war. As universities found themselves with a new influx of research funding from NSF, academic science was elevated to more equal partner with the government and industry. The government was now funding basic research in universities whose faculty, through open publication, were expanding the pool of knowledge available to society and industry.

After World War II, colleges and universities trained many new undergraduates and graduate students. This decentralization of knowledge enabled industry to increase internal R&D. There was expansion in Bell Labs, GE, and DuPont in addition to the formation of Watson Labs at IBM, Sarnoff Labs at RCA, and then others at HP and Xerox. Employees from Bell Labs and IBM received Nobel Prizes, and those at DuPont discovered new chemical fibers and materials. Chesbrough summarizes that this was the “golden age for internal R&D.” The United States enjoyed growth of the postwar industry for over two decades. But the corporate closed innovation system was soon to come to an end.

Consider the US economy during the 1970s. The Japanese and German markets were taking off, and it looked as if the United States would lose the high‐tech industry, while the economy was experiencing double‐digit inflation and unemployment (AUTM, 2012). The federal government had a policy of taking all federally funded university inventions and licensing them to companies nonexclusively. With the lack of IP protection against competition (because of the nonexclusivity of the license agreements), companies were not actively pursuing the university inventions. The federal government held 28 000 patents with fewer than 5% licensed to industry (GAO, 1986). While numerous scientific advances were being made, it was felt that the great investment in university research from the American taxpayers, then billions of dollars, was not significantly making its way back to those taxpayers to advance the standard of living and economic viability of the United States.

In 1980, two US senators got together and formed legislation that again changed the innovation paradigm for the United States. The Bayh–Dole Act (1980) was motivated by widely held belief in the late 1970s that the United States would no longer be industrially competitive. Senators Birch Bayh (Indiana) and Bob Dole (Kansas) initiated a law that created a uniform patent policy for federal agencies that support research. The major focus of this law was to enable small businesses and nonprofit organizations (universities) to retain title to inventions made under federally funded research programs (http://www.autm.net/Bayh_Dole_Act1.htm).

Bayh–Dole Act led to new provisions to universities that are funded by federal agencies:

• Nonprofits, including universities, and small businesses may elect to retain title to innovations developed under federally funded research programs.
• Universities are encouraged to collaborate with commercial concerns to promote the utilization of inventions arising from federal funding.
• Universities are expected to file patents on inventions they elect to own.
• Universities are expected to give licensing preference to small businesses.
• The government retains a nonexclusive license to practice the patent throughout the world.
• The government retains march‐in rights.

Now and for the past thirty‐plus years, universities no longer provide free‐of‐charge, federally funded research findings to companies to advance industry. With the advent of Bayh–Dole, the universities themselves can protect the IP of their findings, and even though the research will still be published and knowledge shared openly, industry is no longer legally permitted to take the protected ideas of universities and use them to advance their products and profits. This primary change set a new dynamic for innovation that has undergone many iterations to bring us to present‐day university policies. Corporations are able to license IP (exclusively or nonexclusively) directly from universities or national labs if they would like to commercialize discoveries from federally funded research. This option is extended to faculty members who are able to license university‐owned IP through the vehicle of a start‐up company.

State of University Technology Transfer

The Association of University Technology Managers (AUTM) was founded in 1974. In 2016, the organization had 3200 members from 300 universities. The mission of the organization is the support and advance technology transf...