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Tag Archives: Invention

Gaps in the Research, Development, and Engineering Chain

I talk a lot about bridging the ‘technology transfer gap’, but there is more than one place where technologies fall to their doom in the development of a new product.  When you define each stage in the process (Research, Development and Engineering) you start to see that there are two clear gaps.  Between each of these stages, a risky transition occurs. It is not just a few outliers that fail to make each leap; it is the vast majority of inventions.  A big part of the reason for this is that very different environments work best for each stage of the R-D-E chain, meaning that technologies do not just need to transition between stages; they typically need to transition between organizations with different cultures and expectations.  Any “technology transfer” model needs to take both of these transitions into account. Let’s first briefly define the three stages.

The Research Stage. At the research stage, new ideas are proposed and tested, solutions to problems are sought or discovered, multiple ideas are combined, and inventions result.  The best macro-scale model that we currently have for this process is the university.  Universities provide the most open and free environments for research to occur, with by a wide margin the most financial resources ( Microsoft Research, probably the largest corporate research entity on the planet, spends about a billion dollars a year on research, which sounds like a lot, but it is still less than even a mid-sized university).

The Development Stage.  The task at the development stage is to rapidly risk-reduce an idea emerging from research (the process of innovation).  Outlier or extreme cases are considered, many of the scientific elements must be validated, and the fundamentals of how a new technology works will be tested and mapped out.  In other words, the technical risk of an invention not working are eliminated or largely brought under control.  This is what startups do best due to their focus, speed and flexibility.

The Engineering Stage. Products do not just need to have their technical risks resolved; they also need to be made.  That means designing the technology with aspects like cost reduction, manufacturing, production, shipping, and maintenance in mind.  Large companies, beyond any doubt, do this the best due to their economy of scale (at least in the case of hardware and similar scalable solutions).

With three steps in the chain there are obviously two transitions. And that’s where the trouble starts.

 Transition 1: Research to Development.  The usual problem in research to development transitions is that the open, loose form of universities (great for research) is a disaster for development.  In development you need focus, speed, agility, and risk money, none of which the university environment typically provides. Inventors, the most likely people to lead the technology’s development at a university, have far too many competing objectives and have much greater incentives and access to resources for basic research and invention then they do for development (for the most part).

At the same time, it is much more difficult to sell an undeveloped invention to a large company, precisely because their emphasis and strength is in engineering.   And that is assuming that universities, who are generalist by nature, are able to create and maintain the relationships needed with large corporate structures in specialized industries to pitch their inventions, and understand what the market need for these inventions is.

Transition 2: Development to Engineering. Development Startups face a similarly challenging cultural transition. At first glance that doesn’t seem to be the case. The skill set of startup developers is actually very attractive to big companies – at least in the early courtship days. Startup developers look dynamic, pro-active and goal-oriented. That is why big companies buy startups all the time.  After the acquisition, however, this beautiful vision starts to fracture a bit. Many of the best startup producers are hackers at heart. Product engineering on the other hand requires rigour, discipline and process – aspects that a startup will often deliberately suppress in order to progress faster, focusing on the key technical issues. Over time, “dynamic” becomes “can’t focus”, “pro-active” becomes “disruptive” and so forth.  That’s why most acquisitions ultimately fail.

 TandemLaunch Technologies’ mission is to improve the transition efficiency in the R, D, E chain in a way that is consistently beneficial to Canada (more on this in a future post).  We accomplish this by 1) identifying key researchers and inventions, 2) leading and providing the resources for the development stage of these inventions, 3) providing industry with a developed invention and the support they need for acquisition, and 4) keeping and creating jobs in Canada.

Who will bridge the tech transfer gap?

The National Sciences Foundation kicked off its first round of I-CORE awards this October, with an Entrepreneurship Bootcamp for 21 groups of university inventors.  The idea is to develop a new generation of researchers who better understand how to develop and market their inventions for industry: researchers who are also skilled entrepreneurs. It will be interesting to see how the quarterly award will reshape the tech transfer landscape in the US by increasing researchers’ entrepreneurial skills. But the biggest payoff, at least in my mind, will be in terms of a cultural shift among academics (University inventors don’t have a reputation for pitching to industry). 

There is no question that numerous opportunities are lost simply because inventors are not tuned in to commercial opportunities and industry need.  With the current economic environment, people need to pay close attention to these missed opportunities flowing from invested research dollars. And technology transfer requires more than dollars; it requires skilled inventors, innovators, and entrepreneurs. But I don’t believe that every inventor needs to be, or should be, an entrepreneur.  There is nothing wrong with outsourcing innovation or entrepreneurship once you have an invention, so long as the mechanisms and bodies exist to do so (much more could be done here).  There are also important steps that university technology transfer offices and industry can take to meet each other half way. 

In the words of Joe Girard, “The elevator to success is out of order.  You’ll have to use the stairs… one step at a time.”

Five Steps for University Inventors

For researchers working in technical fields, inventions are to be expected.  Unfortunately, many university inventors receive little, if any, training on what to do once they have an invention on their hands. Our team has put together a handy FAQ to help orient inventors to the world of university-industry technology transfer.  We’ve also put together a quick overview of what we see as the key steps for inventors to transform their ideas into commercial solutions. 

Step One: Understand the problem that you are solving

Few inventions are truly novel visions of the world. Usually, they are combinations of known ideas that, together, solve a new problem. Understanding the problem is often 90% of the invention battle. Understanding the problem also helps you to articulate market applications for your invention, and gives you a mechanism to compare your solution to alternatives. The latter is particularly important in the commercial context, where it really doesn’t matter *how* a problem is solved. I frequently read new project proposals that proudly promise to speed up a particular technique by 10x – only to overlook the fact that a different type of technique already solved the problem years ago. It doesn’t matter that you have the world’s fastest horse when people drive cars. If you are looking to have your idea commercialized, save yourself some time and make sure that what you are doing really is novel, and makes sense in the technology landscape.

Questions to ask: Has anyone been down this road before?  What challenges have they faced? How does your technology fit in with existing technologies and technology needs? Above all, what information or proofs do you need to be sure that this technology can actually work?

Step Two: Build a relationship with your Technology Transfer Office (TTO)

Like companies, most universities have some claim to intellectual property (IP) created by either faculty or students using their resources.  The mandate of a university TTO is to manage this IP and facilitate the technology transfer process for its inventors.  If you are unsure how to connect with your university’s TTO, the best place to start looking is the office responsible for research services (grants, contracts, etc.). 

I encourage early engagement with your TTO to make sure that you understand your university’s IP policies, and can take full advantage of their services.  An important thing to ask about in the early stages is what your TTOs disclosure policies and processes are.  Typically, disclosure to your TTO should happen prior to public disclosure (publication), as public disclosure will affect your ability to patent an invention. 

Questions to ask: What is my university’s IP Policy? Who, when, and how should I submit a research disclosure? What services does the TTO office offer?

Step Three: Have an IP strategy

The more fully developed your idea is, the easier it will be to sell (Which would you rather invest in, an idea that can theoretically work, or an idea with a working prototype behind it?).  As a university inventor you are typically looking to develop at least some patent protection before progressing to the commercialization stage for your technology. You don’t have to become a patent lawyer, but try to keep issues of IP ownership in the back of your mind, keep in touch with your TTO, and protect your ability to commercialize you resulting invention(s).  As a general rule any disclosure, even a quick story at a café, can severely limit your patenting options, so think through your engagements in advance (Read more about intellectual property and secrecy).

This isn’t a reason not to collaborate with other researchers. In fact, in my experience collaborations add tremendous value to most research initiatives and I would strongly encourage you to seek out partners. You just need to be clear about who will have a stake in the resulting IP and create some basic structure for your relationship to cover the IP aspects.   Similarly, there is no reason not to engage with potential investors and customers early.  They will give you valuable feedback, even if it hurts.  Discussing the problem you are solving without disclosing the specifics of your invention does not require a non-disclosure agreement.  Most investors never reach the depth where they need access to detailed information about your patentable invention (read more about confidentiality and investors, and customer engagement).

Questions to ask: Who are the key collaborators for the project? What legal relationships do they have with your university? Does everybody understand the difference between collaboration on publications (everybody is a co-author) and patents (only those who have made inventive contributions are inventors)?

Step Four: Protect your invention

Your research will become an invention when a definite idea has been conceived and translated into a practical application (a prototype is not required, but helpful).  Once you’ve arrived at the point of having an invention, your best bet is to contact your TTO (if you aren’t already in touch with them). 

University technology transfer typically involves the sale or licensing of patent rights.  A patent protects your ability to control who can and cannot use or profit from your invention.  If you are not interested in personally profiting from your invention, it can still be important to patent. Open disclosure works for some technologies, but is more difficult for concepts that require significant development investment before they can become a useful product. Without a patent, companies are unlikely to make that development investment, because there will generally be no potential for financial return on their investment.  The choice between public disclosure and patented commercialisation is one that should be discussed with your TTO to find the best option for your technology.

Questions to ask: Is open publication or patent protection the best course for your technology?

Step Five: Connect the dots

The idea of sales and marketing may seem foreign to a lot of university inventors, but you’ve likely been doing this all along.  Instead of convincing funders that your research will result in valuable products or outcomes, you need to convince investors that some of the value you intended to create really exists. 

Remember that research you did on the technology landscape? You can use it to identify companies or investors who may be interested in your technology. Ideally, you have even had preliminary discussions with some of them during the course of your project. You also need to evaluate your invention before approaching business partners, considering your prototype’s availability and stability, project documentation, and basic aspects of business and marketing (e.g. market assessments).  There are also a number of commercialization options to explore: seed funds, accelerator programs, Angel and Venture Capital investors.  TandemLaunch, for example, is a seed fund specializing in multi-media technologies that offers financing, industry connections, development staff and infrastructure on an equity basis.

At this point, you are ready to plunge in the next phase of commercialization. Gather a team, build a product (or licensable technology package) and hit the road. That’s a topic for another day.

Invention, Innovation, and Entrepreneurship: Different processes, different people

Invention, innovation, and entrepreneurship are words frequently thrown around by politicians, theorists, and entrepreneurs alike to generally describe the act of bringing a product or idea into the world.  While easy to confuse, each concept is distinct and requires specific skills.  When it’s time to choose the right people for your startup, these distinctions are critical.   

 

Let’s start with inventionInvention is an intellectual exercise in connecting the dots.  It’s the eureka moment when you connect multiple problem statements with existing solutions from other spaces, parallel or unrelated, and come up with a new combination of thought that solves the problem statement that you have discovered.  It is a mental event. 

Often the moment of invention is very clearly defined.  A perfect example is the genesis moment for the high dynamic range display concept that led to BrightSide. We had the idea to combine two LCD screens in series to effectively multiply their contrast. Unfortunately, each screen absorbed over 90% of incoming light so the dual layer was extremely inefficient. We had thought about using an array of tiny light sources instead of the first LCD, but couldn’t think of any device that could deliver millions of such tiny light sources. We brought in a researcher from a different field (image rendering vs. optics), and he showed us a camera concept that would overlay a blurry and an adjusted sharp image to get much higher dynamic range in image rendering.  ‘Eureka!’ – we could use the same blurry+sharp idea on the display side by using an array of big LEDs (1000x larger than the tiny light sources that we thought we would need). In that distinct moment LED TV as it is known today was born. That’s an example of a distinct invention you can file a patent on, and off you go.  An invention can also develop over a period of time when you’re working on something and you slowly realize the little pieces that make the system work better.  In the aggregate, you’ve actually changed some essential component of your system and have an invention you can file a patent on. 

An inventor is the person who synthesizes the problem statement and solutions into a novel solution that solves some unique problem.  This definition of an invention is completely indifferent to what you do with the invention afterwards; you can be an inventor and not have done anything at all other than the mental exercise. This type is common at universities, but innovators exist in university environments as well.

Innovation is an ongoing process of getting an invention to a point where it has an application value of some kind.  That doesn’t happen automatically, because technology is only useful if somebody uses it.  Unlike knowledge, technology doesn’t have any intrinsic value. If you discover that some distant object in the sky is a planet, that knowledge has some abstract value for humanity.  If you find a cure for cancer and it doesn’t teach you anything new about biology, or the human body, and is just a particular mix of stuff that works, then it has no value until it actually cures somebody’s cancer.  We need innovators, because technology needs to be used (this is why we do what we do). 

The boundaries around the innovation process are sloppy, but roughly include all the steps between invention and pre-commercialization, or possibly commercialization.  This is the period when you start thinking not just about your idea, but what you need to do to make it work in practical terms.  You experiment, you fiddle around, you find out that it doesn’t work on current computers, and you adjust it in some way to make it practically realizable.  In the act of innovation, you might also invent new things.  But equally important, you are going to generate a lot of practical know how.  This is where the bulk of value in a technology startup is created. This know-how is often hard to characterize, because it is the embedded knowledge in the heads of your people, but it is of enormous value to any acquirer. 

Startups are sometimes the point of invention, but more often than not they are created after the invention to act as innovation engines. 

The concept of entrepreneurship is separate from this. Entrepreneurship is about driving innovation in a constrained environment (e.g. limited money or time). Often this happens in a startup, but it’s perfectly possible to be an entrepreneur inside a large corporation if the constraints are in place. An entrepreneur’s job is not just to bring the technology to market, or to the commercialization stage; the job of the entrepreneur is to create and maintain the environment that allows innovation to occur (people, money, goals, etc.).  Unlike single person corporations or partnerships that do not have an inherent constraint, opportunity, or even desire to scale (doctors, lawyers, consultants, and other freelancers), entrepreneurs engage in an aggressive pursuit  of scale under conditions of risk. 1 

When we look at these definitions together, we learn something critical about the people needed for technology transfer.  First, you do not need an inventor as the CTO in your startup.  This is a mistake I see a lot of startups make. You need access to the inventor to get clarity on their thoughts, but that can take the form of a consultancy on an as needed basis.  What you really need is an innovator in your startup’s technical leadership role.  This is someone who has enough understanding of the technology and commercialization process to drive the technology from invention to commercial application.  If the inventor does not have the skills or know-how to be an innovator, your startup company will die (this is in my experience the number 1 reason for failure in startups led by university professors).

On top of this you need an entrepreneur who can create the environment in which the inventor can thrive (people, dollars, money, and infrastructure).  And while your innovator and entrepreneur might be one and the same person, it is important to keep in mind that both roles need to be filled.

 

1 I specifically limit my definition of entrepreneurship to startup or dynamic growth entrepreneurs – scale entrepreneurs – and exclude small business owners.

Why ‘First-to-File’ works for University Inventors

There have been mixed reactions to the new America Invents Act.  While the bill may be far from perfect, some of the concerns U.S. universities have had over the change to a First-to-File system are overstated in my opinion.  Some are claiming that the conversion from First-to-Invent to First-to-File will greatly hurt individual and academic inventors who don’t have the resources to file patents as quickly as large companies. While that’s true, I think it misses a key element of technology transfer.

In a First-to-Invent system, the priority date on a patent is defined by the date of invention rather than the filing date (as is the case in the new First-to-File).  Conceptually, First-to-Invent makes a lot of sense.  If you invented something first, it shouldn’t really matter if you went straight to the patent office or not.  Filing a patent also takes time and money, so there is some validity to the statement that people having more time and money have more advantage in a First-to-file system. While some inventors may genuinely lose out for these reasons, I would argue that the net benefit of this system to inventors is positive for two reasons:

1. Typically, filing a patent shouldn’t be significantly slower for university inventors; and

2. A First-to-File system provides greater patent security, making it easier to raise investment with even a provisional patent.

1. Are Universities that slow?  There is really no intrinsic reason why universities should be slower than large companies.  They should be able to move just as fast, or possibly faster, because they typically have fewer procedural barriers than large companies.  Inventors might be a few months slower if they wait until they are sure of a publication before filing, but this should not create enough of a time lag to pose a major threat to their patent claim, especially if they have a solid understanding of how to treat their IP.  At worst, First-to-File creates an added incentive for university inventors to file in a timely way, which isn’t really a bad thing.  The problem comes if multiple people are working on the same technology, at the same time. But if a university invention is only a few months apart from the same invention at an already established company, the university is highly unlikely to succeed with the commercialisation of the idea anyhow, due to the differential speed of the post-invention steps.

2. First-to-File delivers greater patent certainty.  If you look at a patent in a First-to-File system you can assess its position in the patent landscape with certainty (at least after 18 months of filing when other related work will be published).  That certainty allows you to raise money, and build and scale your business.  That is not true in a First-to-Invent system where the date on the patent means very little.  What matters is the date of invention, which you don’t know, and will only find out in a law suit. The result in the US, the last major country left with the First-to-Invent system, has been big business for lawyers (who are fighting the America Invents Act with a vengeance).  This intrinsic patent uncertainty makes a poor foundation for already inherently uncertain startups or patent – only licensing deals – the most common mechanisms for universities to actually monetize their inventions.

The disadvantage that universities may have in filing speed in the First-to-File system is most definitely outweighed by the advantage of having higher patent certainty in the later stages of the commercialisation process.

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