XX. General observations

From our experiences in transferring the eleven products of Table I from our Laboratory here at Palo Alto to the private sector, we know that its not enough to simply give a few pointers and expect the PI to do all the work of TT. The fact is that TT doesnt just happen, somebody has to make it happen. And it takes a significant amount of time and know-how. Furthermore, it takes a substantial amount of time just to build the ongoing relationships you will need to do successful TT from within the VA, as discussed in Section VII. Therefore, I think there should be one person who is responsible only for TT at every VA Medical Center that does a substantial amount of research and/or development. This is borne out by the nationwide survey conducted by the group at Rancho Los Amigos in Los Angeles, who found that the main ingredient that correlated with the amount of successful transfer was the presence of a single person whose sole responsibility is TT.

Unfortunately, in these times of shrinking budgets, I suspect that the task of TT will often fall upon the PI of the particular project to be transferred, which will undoubtedly make the task that much more difficult, especially if the VA awards the rights to the inventor(s). I only hope that the information given in this booklet will be helpful in accomplishing the task.

In my opinion, the toughest part of TT, or maybe the ONLY part, is finding the right manufacturer at the right time, with both the means and the inclination to complete the task. Further, once a product is fully developed, its much harder than it would have been to get a company to collaborate earlier in the game, when the other party could have played a role in the design. That is what this Center plans to do in the future, by incorporating the TT function into the design/development function, thereby bringing industry into the game early enough to assure that their inputs are appreciated and incorporated into what will more than likely be a better final product.

Perhaps the biggest frustration of TT is that the method seems to be different in every case. I do not believe there is any one recipe that will lead to successful TT. It is more like gardening, in that you till the soil, sow the seeds, cultivate, fertilize, water, and hope that the plants will grow. But whether they actually do is often out of your control. Of the eleven products we have transferred, I do not think the circumstances were quite the same in any two cases.The methods of transfer that we have actually used (or encountered) are:

1. The VA gives the rights to the inventor, the inventor licenses to a manufacturer who then hires him/her away from the VA to help complete the job.
2. The VA gives the rights to inventor, who then quits and sets up his own company.
3. The VA retains the rights and we enter a Coop R&D Agreement.
4. There is no patentability, but a company is willing to produce the product anyway, since the market is not that large.
5. A copyrightable product is altered sufficiently by a company which then copyrights it and markets it (see Section XV).
6. An unpatentable software product, which cannot be copyrighted by the government, is simply distributed free by electronic transmission with credit to the VA.
7. A request for evaluation of prototypes is submitted to the TTS in Baltimore, field tested at other VA labs, and then put on the prescribable list of VA products.

All in all, the transfer of products is somewhat of a gamble, and the time required for transfer varies greatly, depending on the route. But the odds of success seem to be much higher if TT is an integral part of a project at the outset. In most cases, TT from within a government laboratory also requires some knowledge of the law, as well as government regulations within the particular department, and the needs and behaviors of companies seeking new products.

Finally, it is important that we understand the long time constants involved in transferring technology to the private sector and actually realizing any income from it. This is demonstrated by the graph of royalty income vs. years for one of the largest TT Offices on any university campus in the country, the Stanford Office of Technology Licensing (Figure 1). Note that it took some ten years before the income became significant, and that it then grew rapidly. But most of that income is from a single highly successful patent which is soon to expire. So TT is difficult, costly, and takes a long time. But it is essential if a product is to reach the intended user. And, if possible, it needs to start early in the project rather than after a prototype is developed. It also seems that the use of Small Business Innovative Research grants can be of considerable help in working with small businesses, since they offer financial support for small companies in commercializing a new product.