Keith Marmer recently joined the University of Utah as Associate Vice President and Executive Director of the Technology & Venture Commercialization Office. Given his twin interests in fostering the creation and dissemination of new ideas and products and the protection of intellectual property, he has an interesting perspective on a number of issues related to scholarly communication. I conducted an interview with him by email.
Tell us about your role at the University of Utah.
I’m responsible for Technology & Venture Commercialization at the University. In this role, I oversee an array of functions, including invention analysis, patenting, licensing, starting new companies, providing seed grants, investing into our companies and a number of education and program activities to support innovation and entrepreneurship. Our office also has responsibility for compliance with federal research funding requirements and a number of other related functions.
What roles does technology commercialization play at research universities generally, and at yours in particular?
Technology commercialization is one of the ways in which a university can achieve its goals of having a positive impact on society. At University of Utah, we have talented faculty doing incredible research in so many fields. When one of our faculty develops a new innovation, technology commercialization helps to translate a discovery into a meaningful product or service. As our country increasingly depends on an innovation economy, universities play a primary role in not only developing innovations, but in making sure these innovations get to market.
How should a public university balance its need to provide for itself (by creating patentable/commercializable products) with its social obligation to create and distribute new knowledge for public use?
I think there is a misconception that a [public] university needs to choose between commercialization and its obligation to distribute new knowledge. First, commercialization represents another form of distributing new knowledge in a tangible fashion. And second, if faculty work closely with their technology transfer office, in most instances, patenting and commercialization can be accomplished alongside release of a publication. In general, once a patent is applied for, a publication can then be released without adversely impacting commercialization or vice versa. The reverse order, however, is typically not appropriate for accomplishing both goals simultaneously.
You mention that technology commercialization can help a university have a positive impact on society. But could the university have a more positive impact by, instead of creating an idea or technology and commercializing it, offering it to the world for reuse and adaptation free of charge? In other words, is _commercialization itself_ (as opposed to just the creation of new knowledge) really intrinsic to helping the university achieve its mission?
Great question! I suppose the answer is “it depends.” Many universities, including University of Utah, commercialize certain innovations free of charge. For example, software is often made available via open source. On the other hand, commercialization of a new therapeutic is exceedingly difficult to make available for free. To begin, universities do not have the financial resources or expertise to bring a new therapeutic to market. The biopharmaceutical industry in almost all instances will only bring a therapeutic to market when they have patent protection. In this instance, the university typically does more good by protecting the intellectual property and licensing it rather than making it freely available.
As you know, providing free public online access to locally-produced theses and dissertations is a common practice among research universities. How does this practice fit in with the work that you do in Technology & Venture Commercialization?
For theses and dissertations, most universities, including University of Utah, do not own the copyrighted material; it is owned by the author. Therefore, the author can choose to make the documents freely and publicly available. This becomes an issue, however, when the work captures intellectual property and publishes that information prior to patent or similar protections being sought. In those instances, our office works with the authors to help them understand that we can apply for a patent before a thesis or dissertation is made public; typically, in a matter of a few weeks. Once this is accomplished, the document can typically be made public without jeopardizing the intellectual property. We don’t view this as an ‘either-or’ situation.
Can you share an example or two of how this practice has done either good or harm?
I am aware of an instance where publication of a dissertation disqualified a patent application. In this case, it was inadvertent because the author had not disclosed the invention to their technology transfer office until after the dissertation was published.
The chronology is the important piece here. As I recall, a recently graduated PhD student and his mentor came to my office after the dissertation had published, and after, as a result of an invention disclosure (I think in the therapeutics arena) being submitted to the office. When we were preparing to file a patent is when the student was asked about publication of the dissertation because it contained specifics of the invention. After a review, it was determined the dissertation, while simply sitting on the university library shelf, constituted a public disclosure and disqualified receiving a patent outside the U.S. immediately upon the dissertation being published and also in the U.S. because it had been published more than a year prior. If the sequence of events happened in reverse, patent protection would have been secured and the dissertation could have been published. I’m not sure if this is a common occurrence. I would say it is not typical but can occur infrequently.
In the scholarly-communication world, there is ongoing debate over the degree to which the public should expect free access to research results, especially when these are based on research funded by the public. The points you’re making suggest a possibly important distinction between publishing an account of the research (including some degree of revelation with regard to results) and publishing all the details of the resulting data. It sounds like you’re suggesting that there may be legitimate reasons for keeping at least some of the research results indoors, even when the public has funded (either entirely or partially) the research. Is that correct, and if so, can you expand on this point?
I think it is challenging to draw a black and white distinction on the public rights vs benefits issue. Ultimately, I agree that the use of public funds should benefit the public – it is merely a question of how. If you look back to the early days of federal research funding, the federal government owned all inventions. Research was published openly and the public had free access to the results of the work. It was Congress that determined the public interest was not being served, and in 1980, passed the Bayh-Dole Act. This legislation recognized that universities are closest to the work, and if they have proper incentives (i.e. financial return), commercialization of select research would do more to benefit the public. This is not to say that universities seek commercial benefit on all research. In fact, it is a very small percentage of research where initial patent protection is sought. Most academic research makes its way into the public domain via publication and other forms of free access.
There has been quite a bit of controversy in recent years around the patenting of such things as genes. (Notably, one such controversy erupted just a few years ago at the University of Utah.) What do you see as the moral or ethical limitations of commercialization in university research?
I’m not sure I’m the best person to address these critical questions as the issues are so far reaching. In the case you noted stemming from the University’s patents which we licensed to Myriad, this was a question of whether a gene should be patentable. If you think back to when the US Patent and Trademark Office allowed such patents, we knew way less about genes than we do today. We also have dramatically advanced technologies and applications since those early days of genetic research. I believe the Supreme Court case of Myriad, at least in part, is a result of these advances and understandings. When I think about the thousands of women whose lives have been saved due to the early detection of breast cancer because of this discovery, I recognize the complexity of viewing patenting of genes will always be tempered by the question of why we seek to do so.
What is the most important thing that you think universities ought to be doing differently with regard to technology and venture commercialization?
That is a much longer discussion but I think most technology & venture commercialization offices do great work. It’s challenging work given the array of stakeholders but according to the Association of University Technology Managers, over the past 20 years university commercialization has contributed to $1.3 trillion in U.S. gross industrial output, supported 4.3 million jobs and led to the development of over 200 new drugs and vaccines. I’d like to see more support for and by universities of their tech transfer offices so more innovative research can have a positive impact on society.