Making Tech Transfer Work

Next, Provini heard about a black silicon material that NREL had invented. Using black silicon was intriguing because the creators of wafers would not have to figure out how to make them non-reflective. After all, the whole purpose of a solar wafer is to absorb the sun’s light, not reflect it. NREL licensed the black silicon technology to Natcore in December 2011. Putting the two technologies together using nanotechnology techniques, Provini figures his company can reduce the cost of making solar wafers by 20 percent. He anticipates reaching his first commercial licensing or joint venture deals this year.

“The biggest key with Rice and NREL,” says Provini, “was that their primary motivation was not to just get revenue. They wanted to try to commercialize their technology and do good things and help the world. For new companies like us, that’s key. We can’t write the big check.” He argues that idea factories that do not charge large up-front royalties for their technology will reap larger gains over the long run if the companies theyspawn become successful.

A basic issue in dealing with scientists was building trust that his company would not simply steal their ideas. “You’ve got to establish a relationship through face time,” Provini says. “You can’t do it with lawyers. You have to go there and persuade them that you are a good company. Then, they will back off on some of the restrictions” on the use of their technology.

He recommends that a company should take a series of small, concrete steps to establish a relationship in which ideas can flow back and forth across the table. “In R&D, you never end up where you think you are going initially,” Provini adds. “There has to be a little bit of good faith. Not all the T’s have to be crossed and [not] all the I’s get dotted. A lot of times, you’ll sit down and can’t get through the contract negotiation if the business and the university or lab don’t have the right confidence in each other.”

Provini’s case is slightly unusual in that he combined tech- nology from two different technology institutions in different geographies and founded the company in yet another state. But Provini threaded the eye of the needle by adopting a collegial style with researchers over a period of years and carefully nurturing technologies with promise. It was not a case of one-stop shopping. One of the figures who has spent 50 years in technology transfer, and who may have derived some of the keenest insights, is Lita L. Nelsen, director of the technology licensing office at MIT, which has licensed technology to hundreds of companies. Tech transfer is about much more than mere licensing, in her view. It requires the transfer of skills, as well.

“Startup companies don’t happen very often without the active participation of the inventors, either as founders or as consultants,” Nelsen says. An MIT professor can spend 20 percent of his or her time on a venture and graduate students and post-grads can join the company, taking with them many of the lessons derived from having helped invent a new idea. In so doing, “the vision and the championship and the know-how can be transferred to the startup company,” she says. This process can rarely blossom in the same way at a federal lab, where scientists may not be allowed to work on outside projects, or at research institutes funded by NIH, which imposes conflict-of-interest policies against scientists seeking to commercialize their ideas.

Universities also will grant exclusive licenses to companies for a technology, whereas the federal labs and institutes will rarely grant that, another deterrent to successful tech transfer. “If we give you an exclusive license, you will be more willing to try to invest to bring this risky stuff to market because you’ll have protection from competitors,” says Nelsen.

The hardest part of successful tech transfer is not finding or licensing an idea or even raising the money. “The hard part is finding someone who can set up a structure where the vision and participation of the inventors can be accommodated,” she explains.  “The scarcest resource is not money but rather the experienced technology entrepreneurs who can both raise money and also manage early-stage development.”