From the Director: Challenges of Tech Transfer: “Everything is just getting harder to do” – Part 2

In this two-part blog we discuss the present and future of technology transfer at Emory and nationally with our Executive Director Todd Sherer, PhD, CLP, RTTP. You can find the first part of the blog here.

How has patent reform, as well as recent Supreme Court decisions, impacted Emory OTT?

Patent reform and recent court decisions are making commercialization at the university more challenging. I guess that’s a theme, that everything is just getting harder and harder to do. It is now harder to get a good patent. It used to be that you could get fairly broad claims covering an invention and now that’s not usually the case. This is particularly a struggle for universities because we are at the very beginning of the innovation pathway, the research and discovery phase. For example, say a university researcher files a patent for a certain chemical compound. At this phase, they do not know for sure which compound will be used in animals and then possibly, humans. They only know that this chemical compound shows promise in a cell culture. Additionally, because university researchers work in a publish or perish environment, there is pressure on them to publish early results and advance the world’s knowledge. But, once they publish on their findings they have enabled them and lost their ability to file a patent. Consequently, university tech transfer is usually trying to file for patents early in the innovation development process. Because it is early in the process broad patent protection is ideal. Newer patent reform and Supreme Court decisions have made it harder to get meaningful broad patent protection.

Another challenge that has arisen is that certain types of things that were previously patentable are no longer patentable. A key example of this is biomarkers, which for the most part are no longer patentable in the U.S., though they are patentable in the rest of the world.

Finally, a new struggle we face is frustration among faculty. There are faculty that consistently create inventions in fields like biomarkers, and consequently their inventions will not be patent eligible. However, simultaneously other faculty doing very similar work, but are discovering new chemical compositions, which are still patent eligible. This can create frustration among faculty inventors, who are just becoming familiar with the nuances of patent law and creates management challenges for our staff.

Recently there has been a great deal of discussion concerning price controls for drugs, do these discussions filter down and impact TT? OTT at Emory?

Drug pricing or anything that may affect healthcare, how it gets paid for, and how it gets reimbursed impacts the actions of investors. In reality, only about one in 10,000 molecules that are discovered will make it to final approval and be used in humans as a drug, so early stage investment risky. The impact from that for tech transfer is the funding gap between early-stage innovation and what investors want to invest in just widens. It keeps getting harder to find people to invest in our early technologies.

We are all aware that there have been some pretty colossal abuses of drug pricing. The bad press from these abuses typically results in additional pressure on that investment gap. This can mean that innovations, like drugs can be left behind—the implications being that tech transfer didn’t file a patent, the patent is abandoned, or no money is invested beyond a patent filing. Consequently, quite often these innovations are forgotten.

Have the improvements in the economy over the past several years affected TT?

I would say that tech transfer has recovered some from the 2008 downturn. Back then, it was hard to find venture money or to get local, state, or federal government financial support; it was even harder to find money from angel investors. Many of those areas have improved, but it did take a number of years.

Compared to the previous three decades, tech transfer is in a better position in relation to the resources both financial and intellectual that we have access to. There are more resources available than ever before, but there are more expectations that come along with that. I would argue that the rise in investment in commercialization was brought on by the global financial crisis and the entire world’s infatuation with innovation as a solution coupled with the need and desire to try to generate economic wealth and create new companies.

If we look five years down the road, what new challenges might you anticipate for the TT profession?

I think one challenge could be a period of normalcy, which could be challenging after a period of plenty. We could see a retraction in certain resources as programs that have been impactful survive while others run their course and shrink or close. I think there is a good chance that we will still have more resources than in earlier years because there is a need for additional investment in this space, but maybe not quite to the current level.