The Johns Hopkins Gazette: April 3, 2000
April 3, 2000
VOL. 29, NO. 30

  

Tech Transfer office Gears Up

Efforts strengthened to assist in moving research from lab to marketplace

By Phil Sneiderman
Homewood

Johns Hopkins Gazette Online Edition

As director of Hopkins' Office of Technology Transfer, Nina Siegler wrestles with complicated research concepts and cutting-edge lab contraptions. But she likes to think of her job in very simple terms. Siegler operates, she says, like an old-fashioned marriage broker.

"Picture an hourglass," Siegler says. "On one side are ideas and inventions developed here at Hopkins. On the other side is the world at large. My office sits in the little tube at the center, the one that connects the two sides of the hourglass. We try to arrange marriages between inventions created by Hopkins researchers and companies that want to make commercial products based on these inventions."

Nina Siegler, director of the Office of Technology Transfer, sees her staff as matchmakers whose proactive entrepreneurial efforts will pair researchers' inventions with the best partners.

To accomplish this matchmaking, Siegler and her staff help faculty and staff members to obtain patents, copyrights and licensing agreements for technology breakthroughs that arise in seven of the university's nine divisions. (The School of Medicine and the Applied Physics Laboratory have their own offices of technology transfer.) Projects can range from instructional CD-ROMs developed in the Krieger School of Arts and Sciences to miniature pumps invented by Whiting School engineers to music software devised by faculty members at the Peabody Conservatory.

"There has been increased recognition here of the importance of providing this kind of help to our faculty and staff," Siegler says. "Inventions here at the university are usually in the very early stages of development because what our faculty members usually get funding for is basic research. It may be inappropriate for faculty members to do further development work, but often that's what's needed to make something commercially attractive."

To help bridge this gap between the lab and the marketplace, the technology transfer staff tries to license the early inventions to private companies that can refine the prototype until it is useful and reliable enough for sale to the public. In some cases, the office helps the Hopkins researchers themselves to establish start-up companies to do the further research and development work off campus.

The Technology Transfer Office, which has been in a state of reorganization and transition in recent years, is now stepping up its efforts to move Hopkins inventions out of the lab and make them more widely available to private industry and the general public.

Toward this goal, Siegler, a former Wall Street securities analyst and National Institutes of Health technology transfer specialist, was brought on board as a Hopkins consultant in 1995. She was hired as director of the office in January 1998. Recently, she obtained approval to hire three new licensing associates with expertise in information technology, life sciences and physical sciences. She also is planning an internship program that will allow students to become involved in the technology transfer process.

Siegler's office operates under the auspices of the vice provost for research, Theodore O. Poehler.

"In order to bring the results of Hopkins research into the clinic and marketplace, thereby benefiting the public, it is essential that we strengthen our technology transfer efforts. Historically, these activities have not had sufficient staffing to provide adequate support to the faculty," Poehler says.

"We are hoping to build an organization which will carry out a proactive entrepreneurial effort that will capitalize on the research carried out in many of our divisions," Poehler says. "We anticipate the expanded Office of Technology Transfer will be able to provide effective business assessment and marketing, support Hopkins researchers in maximizing the value of their inventions and improve the effectiveness in business development and commercialization."

The office's newly created information technology post was filled a few weeks ago by Darren Lacey, a nonpracticing attorney with experience in software design and nonprofit administration. He already has begun meeting with electrical engineers who have developed a promising new medical imaging system, with public health researchers who want to distribute CD-ROMs containing childhood immunization guidelines and with John Hopkins University Press staff members who have developed software that tracks book marketing and sales information.

Darren Lacey holds the office's newly created information technology post.

"If it's expressed digitally, then I'm interested in what's going on," Lacey says. "My job here is to bring together the disparate information technology inventions, which run the gamut from simple but very useful DOS-based programs to very complex algorithms and semiconductor technology. My mission is to find the best way to disseminate these in the marketplace. We'd like to generate value for the university by doing this."

That value can vary dramatically. In some cases, the university may choose to make its software available at little or no cost as a way to enhance its reputation or to promote further development.

In other cases, inventions that emerge from Hopkins' labs can produce significant revenue for the university and the inventors. In fact, Siegler says, Hopkins researchers usually stand to earn far more from inventions developed in campus labs than scientists and engineers employed by large private corporations.

The university's initial royalty schedule calls for the inventor to receive 35 percent of the annual net revenue, with another 30 percent designated for the inventor's lab; the remaining revenue is divided among the researcher's department, school and the university. (The royalty rates are spelled out in the university's Intellectual Property Policy, which can be viewed on the Web at http://resource.ca.jhu.edu/policy_JHU.html.

Even though technology transfer agreements can lead to monetary rewards, some faculty members prefer to concentrate solely on getting their research results published and sharing their findings with peers in their scholarly field. In some cases, Siegler says, technology transfer opportunities are lost when a faculty member makes an important invention or discovery public before filing for patent protection. If such work is publicized before filing for a patent, European rights can be lost immediately; for U.S. patent rights, a 12-month filing deadline is triggered.

"Usually, technology transfer is an afterthought," Siegler says. "We want the faculty to think about technology transfer issues while they're pursuing their fundamental research. The two are not incompatible. We want to make principal investigators aware of the rules so that we can protect their inventions without delaying their presentation or publication."

She adds: "A large part of what we need to do is education. I like to say that technology transfer is a contact sport. It requires the participation of the inventor, author or creator to be successful."

More information about the Office of Technology Transfer can be found on the Research Administration Services website: http://resource.ca.jhu.edu.


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