XIII. Looking for new TT opportunities

When I first took on the job of overseeing a TT program for the RR&D Center, it looked fairly straightforward. That is, all I would have to do is call someone in each appropriate company nearby, establish a relationship, and then sell them on some of our new products. Well, that is probably true, but it is not that easy. The first question that comes up is what companies do you choose? Well, thats easy; just pick the companies whose capabilities match the products you have to transfer!

Unfortunately, I have yet to find a book, catalogue, or database that gives that kind of information. Capabilities are not ordinarily listed, nor are manufacturing equipment or any other such clues. Rather, you will find detailed listings of their Dunn & Bradstreet rating, their present products (maybe), a list of company officers with names and phone numbers, and the companys gross sales figures. It would appear that such listings were prepared primarily for the potential investor or customer, rather than for a company or laboratory looking for a working partner or collaborator.

And now that TT has become the national "buzz word" for Federal Laboratories, we are seeing an increasing number of databases and services which give detailed listings of the capabilities and technologies residing in each of the Federal laboratories. The presumption, evidently, is that the companies will usually seek the Federal Laboratories, not vice versa. So the task of the Federal Laboratory TT Officer is apparently cut off at the pockets insofar as targeting and contacting individual companies for collaboration on particular products or technologies. For this reason, attendance at numerous TT meetings, company trade shows, and other technical meetings, exhibits and conferences remains one of the best methods of establishing and maintaining the personal contacts which are the life blood of TT. But this is difficult in a climate of shrinking budgets.

There are two approaches which might be taken to overcome these problems, and we have chosen to take both. First is to design and publish a regular newsletter announcing recent developments and potential new products in the laboratory, and second is to bring in a consultant who seems to understand the problem and have a clear method for approaching it. Of course, to distribute the newsletter requires building an appropriate database for that purpose. In our case, we started by collecting from the Principal Investigators (PI's) their own personal lists of names and contacts, and then building on that from inquiries received and from meetings and personal encounters. This has led to a database of some 4,000 names who now receive our TT newsletter. But it is a relatively unorganized collection of colleagues, institutions, hospitals, universities, etc., and does not do a particularly good job of building a database of potential manufacturers. That is where we hope that our consultant will be helpful. He has had considerable experience in raising private and venture capital, and feels that the same approach can be used here. Another possibility for locating potential industrial partners in our case lies in the use of AbleData, a database which offers listings of manufacturers and distributors of rehabilitation products. It also looks as though the World Wide Web will offer even greater possibilities, although how to use it for this purpose is not yet clear. For a listing of information brokers relative to rehabilitation, call NARIC (National AbleData broker) at 800-346-2742. A list of this and other organizations and resources that may be helpful in your TT activities can be found in Appendix C.

One important point to note about the TT Act of 1986 is the fact that it authorizes the expenditure of royalty income for the purpose of engaging third parties for the marketing or managing of licenses to inventions. This is certainly a good thing, but shows no understanding of the fact that income from royalties comes very late in the TT game. If any significant royalties are ever received on an invention, they generally come in years after the granting of a license or entering a Coop R&D Agreement. In the meantime, there are a few organizations which will handle the patent process, the licensing process, and even the license management in exchange for the promise of a share of later royalties. After many discussions, visits, and exchanges of proposals with all parties and submissions to VA General Counsel, we did finally succeed in executing such agreements with two private, nonprofit corporations: Research Corporation Technologies (RCT) in Tucson, and Technology Targeting, Inc. (TTI) in Seattle. But in the process, it was necessary to convince GC that such arrangements are indeed permitted by PL99-502 (the TT Act of 1986).

More recently, our VA Medical Center in Palo Alto has just signed a Coop R&D Agreement with Stanford University under which any patentable inventions developed by investigators employed by both VA and Stanford, or developed jointly by VA and Stanford personnel on a project funded by the VA, will belong to Stanford. Further, the commercialization of such inventions will be handled by Stanfords Office of Technology Licensing, and royalties will be shared in accordance with Stanfords patent policy. I believe that this agreement could serve as a model for other VA Medical Centers with similar close university affiliations. For that reason, our new agreement with Stanford is included as Appendix M.