In a novel arrangement that could serve as model for other universities, TTO execs at Arizona State University and the University of Pennsylvania have turned a long-time friendship into a formal partnership between their schools that’s designed to improve commercialization prospects for both. Michael J. Cleare, PhD, associate vice provost for research and executive director of the Center for Technology Transfer (CTT) at UPenn, and Augustine V. Cheng, managing director and chief legal officer of Arizona Technology Enterprises (AzTE) at Arizona State University (ASU) in Scottsdale, were colleagues for seven years at they were colleagues at Columbia University in New York, where Cleare served as executive director of the university’s Science & Technology Ventures while Cheng was chief counsel for the Patent & Licensing Group in the Office of General Counsel. In June 2007, Cleare was lured to Penn to rebuild a tech transfer program that was in disarray. Two months later, Cheng went to ASU to help strengthen its licensing and IP programs. Last fall, the two were discussing an upcoming venture capital forum at AzTE, and the conversation steered toward the crumbling global economy and the need for TTOs to do more with less. In a Eureka moment, the two began to sketch out the concept of a formal agreement between their offices, seeking to create a systematic process to gain input on each other’s technologies, provide introductions to outside funders and partners, and — when joint IP, bundles, or even commercialization assistance turn into commercial dollars — share revenues.

“This is a classic miniature version — adapted for technology transfer — of a revenue-sharing collaboration that you would see in industry,” Cleare says. “It’s the risk/reward equation. You collaborate in the risk, and if you’re successful there’s a reward.” The universities crafted a three-year, nonbinding agreement that matches each university’s input into the other’s commercialization successes with prospective revenue output. “We established some [revenue-sharing] bands that roughly line up with the amount of effort we expend,” Cleare explains. “We’ve got a top band, which is open-ended, that says if something is a joint project we’ll split the revenue 50%. If you just help us a bit, we’ll give you just a bit. If you help us a bit more, we’ll give you twice as much.” While declining to reveal specific terms, Cleare says the agreement “is more detailed than anyone else has done.” The Penn-ASU agreement allows both TTOs to extend resources without growing budgets and expanding payroll. The agreement allows the TTOs to swap selected disclosures and have experts from the respective schools critique the technologies and suggest potential partners or licensees. “It’s like having a free consultancy source,” Cleare remarks. “Normally, I’d employ a consultant and spend thousands of dollars to do that,” he points out. “Now, we don’t have to spend that money because it’s a reciprocal arrangement. If it’s successful, both sides share in that success.” A detailed article on the UPenn-ASU agreement appears in the March issue of Technology Transfer Tactics. For subscription information, CLICK HERE.

Posted March 18th, 2009 under Tech Transfer

Write a comment