Academic Entrepreneurship

Enacted by United States Congress to more readily advance inventions to practical benefit, the 1980 Bayh-Dole Act allows U.S. institutions to take title to federally funded inventions. Thus, it effectively removed the U.S. Federal Government as the gatekeeper for technology transfer. Since inception, the Bayh-Dole Act can be attributed to well over $1.3 trillion in U.S. economic growth, over 4.2 million jobs, and more than 11,000 new startup companies from the nation’s universities. Furthermore, Bayh-Dole has fostered an entrepreneurial culture among academic institutions and seated IP professionals directly in these institutions at their respective technology transfer offices. And while U.S. agencies and foundations, such as the Departments of Energy and Defense, the National Institutes of Health (NSF), and the National Science Foundation, have earmarked substantial funding to bridge technologies to commercialization (NIH), there remain challenges in moving inventions from lab to market or bench to bedside. Furthermore, although the US leads university sponsored international patent applications, China and South Korea are also among the top 10 universities. Thus, there exist worldwide opportunities to advance academic discoveries to commercialization and societal benefit. In this article, we discuss some challenges and present opportunities through the lens of an academic entrepreneur. Additionally, we present a Top 10 List of suggestions for academic entrepreneurs underscoring that successful entrepreneurs are leaders and change-makers.

In most research settings, idea generation is ubiquitous. Many may recall a laboratory or group meeting where science and innovation move with fluidity. Schemes ranging from ‘hair-brained’ to ‘elegant’ or ‘simple’ are exchanged and debated. If translation to practice can be envisioned, the next logical steps are design, build, and validate, or disclose. While the Technology Transfer Offices (TTO) at many universities have astutely streamlined the invention disclosure process to ease burden upon an investigative team, an early hurdle faced is the question of how to assign the proportion of contribution among the team in the disclosure. Assigning equally is the default, assuming all members of the team have equal rights to the intellectual property (IP). This brings us to step one: Understand the IP policy in your country and at your institution as it is likely to vary among groups such as faculty and staff, or graduate and undergraduate students. Ideally, the institution’s IP policy should be clearly articulated in a handbook for the target audience and written for someone without expertise with legalese. TTO personnel may be helpful in sorting out IP assignment issues early in the process if approached in an amicable manner. Beware that if the TTO senses contentious issues between inventors, they may be leery of pursuing a patent because of the potential for subsequent litigation.

Another important source of support is industry partnerships and it is worthwhile to sort out these agreements in advance. In fact, most universities do not allow faculty to negotiate on their own behalf and agreements are made at the university level prior to accepting any funds from an industry partner.

By design, academic settings are hierarchical ranging from senior, established investigators to junior faculty to trainees (postdocs, graduate and undergraduate students). Discussing IP assignment and its value may be uncomfortable in this innate hierarchy, but it is an essential first step. Furthermore, the structure of academics can be leveraged. For example, as with all other evaluators, the IP professionals in the TTO at most institutions are heavily influenced by the prior successes of inventors. The same disclosure by a senior inventor, who has successfully licensed out IP, is more likely to be viewed favorably than a disclosure by a junior inventor without a history of successful bench to market translation. Successful patent prosecution is expensive for academic institutions and they need to see some promise of success before they will invest in the legal and administrative costs of pursuing patents. Junior investigators may succeed by fleshing out their ideas in a disclosure and seeking experienced inventors for their advice on a well-thought-out document. In return, a small percentage of the IP may be negotiated with the more senior researcher for their feedback, advice and in adding credibility with the TTO. Of course, true and authentic mentors may provide their feedback and introductions and recommendations to the TTO personnel without seeking ownership on what are largely the ideas of the junior inventor. Junior inventors should seek out the appropriate senior collaborators or mentors and have clearly defined expectations from both ends of the relationship.

An alternative strategy is to take the portfolio approach and create a broad range of IP without focusing acutely on IP assignments. The view is that students and trainees will launch startups with this IP, and the faculty member will step back and remain rooted in the academic setting. Essentially this enables the faculty member’s lab to create IP at a steady clip and increases the pipeline of technologies coming into the TTO for evaluation. In fact, the National Science Foundation in its Innovation Corps Teams (NSF I-Corps) program actively flattens academic hierarchy by placing the entrepreneurial lead (trainee) at the forefront of the team and on equal-footing with the principal investigator (professor). A central tenet is that the trainee, who is less tied to academic career demands, is more likely to succeed in translating discoveries and technology to practical use and overall benefit to the American people.

If we drill down further from the perspective of a student entrepreneur, asking about IP assignment process gives you a window into your lab culture. For example, do you feel that the cutting of the IP-pie to be fair and just, i.e., is it equitable? Is there a matrixed environment or at least a healthy hierarchy among faculty members on the collaborative team? Is your lab taking the broad portfolio approach with all shares being equal? Lastly, does the protection of IP even matter for you moving forward with your career? Admittedly, after the fact it is legally challenging to decouple and distribute credit. Furthermore, idea generation is a catalytic event and not necessarily linear or incremental.

For a junior to mid-career faculty member, entrepreneurship and spinning out a company may not be the highest priority as conventional scholarly output, such as external grant funding, students graduated and high-impact publications, are used as indicators of an individual’s worthiness of tenure and promotion. However, it is absolutely essential to understand both the IP policy and conflict of interest policy at one’s institution. Equally important is how IP is assigned to students, trainees, and obligation to sponsors. Thus, while the Bay Dole Act moved the gatekeeper to the academic institution, there may be a complexity for junior and mid-career faculty to decipher before embarking upon the path of commercialization. Discussions with experienced colleagues, as well as your school chair, is a good place to begin. Timing is critical and understanding the impact of technology translation on your career trajectory is essential.

Focusing further on timing, junior investigators should be cognizant that most start-up ventures fail, and failed commercialization efforts are unlikely to be viewed favorably by promotion and tenure committees. Thus, investigators need to seek the balance between publication and pursuing patents and commercialization. A possible approach is to focus heavily on publications after submitting a provisional patent application—these publications will not only be useful in establishing the record for promotion but eventually may serve as “earned media” and for proving the commercial value of the invention. Finally, these publications and possible funding that follows them may serve to convince the TTO of the potential value of the invention before they invest in converting an inexpensive provisional patent to a non-provisional patent application.

There are a host of resources that a faculty member and trainees may access to learn more. Researched and written by a faculty member herself, Dr. Michele Marcolongo outlines how to bring scientific discovery to a successful commercial product in her book “Academic Entrepreneurship.” To further acquire knowledge on commercialization, an emerging entrepreneur may also attend seminars at her own institution, access a wealth of information through the IEEE Entrepreneurship initiative (described elsewhere in this issue), podcasts as well as TEDx talks Designed for investigators and trainees in clinical and translational research. The NIH National Center for Advancing Translational Science (NCATS) bridges emerging entrepreneurs to customer discovery and lean startup methods through I-Corps@NCATS. Additionally, most academic technology transfer office encourage faculty to gain knowledge and become comfortable with the language of startups, business models, licensing, and fundraising.

Inherent in the process of becoming an entrepreneur is taking on the mantle of leadership and embracing team science. You will be assembling and guiding teams throughout your career. Getting a head start on how teams form, storm, norm and perform can set you up for success. Moreover, developing team framework serves as a platform for discussions ranging from IP assignment to publication co-authorship. Integral to leading teams is understanding your leadership philosophy. While there are many books on leadership and teams, three notable books include Discover Your True North, by Bill George; Dare to Lead, by Brené Brown; and The Five Dysfunctions of a Team: A Leadership Fable, by Patrick Lencioni.

In summary, based upon our own experiences teaching, coaching and leading technology translation we have compiled a list of Top 10 Tips for an academic entrepreneur. When combined with an eagerness to explore the multiple facets of entrepreneurship and translation, we hope that these will help start and/or enhance your journey as a creator and contributor.

Table 1:

Top 10 Tips for an (Academic) Entrepreneur

1.	Know your intellectual property (IP) policy: read, understand, inquire, and participate, before embarking on an entrepreneurial venture.
2.	Know your conflict of interest (COI) policy: read, understand, inquire, and participate, again before embarking on an entrepreneurial venture.
3.	Partner with senior investigators either as collaborators or mentors. Develop a clear understanding of expectations on both ends of the relationship.
4.	Decide if this is the right time in your career. Find the right balance between your academic career goals and promotion and your entrepreneurial interests. Consider if there are graduating students or post-doctoral researchers in your group who may be excited to translate your research into commercial products, so you can focus on your research goals and serve in an advisory capacity to the company.
5.	Discuss with school chair and chair of faculty development. A frank discussion may help you find the balance discussed in 4 above.
6.	Team science: understand and ask about how your lab and group operates. Entrepreneurial teams tend to be more flat than hierarchical, with junior members having as much power to propose, debate and vote against more senior members. Again, with graduating students, it may be easier to transition from a hierarchical role to the more flat teams required for entrepreneurship.
7.	Read books about leadership: you are among trailblazers.
8.	Seek the right type of funding to pursue commercialization. Traditional NSF (CAREER and unsolicited grants) and NIH (K-series and R01) grants are not generally geared toward supporting commercialization. Familiarize yourself with Small Business Innovation Research (SBIR) and Small-Business Technology Transfer (STTR) grants from various agencies that are explicitly geared toward commercialization, particularly STTR grants, which can support the majority of the research activity at the academic partner site.
9.	Get trained in customer discovery. Make sure that your inventions solve a real-world problem and there is a product-market fit. Both the NSF and the NIH offer i-Corps programs providing such training.
10.	Chase ideas not merely because they have potential commercial value but because the work excites you. You are more likely to succeed in a line of work that you are passionate about. You are likely to be most pig-headed and persistent with ideas that deeply resonate with your interests.

Author Biographies

Pamela Bhatti is an Associate Professor and Associate Chair for Innovation and Entrepreneurship at the School of Electrical and Computer Engineering, Georgia Institute of Technology, Atlanta. She is also the Editor-in-Chief of the IEEE Journal of Translational Engineering in Health and Medicine. Dedicated to instilling an entrepreneurial mindset, Pamela has coached over 50 student startup teams and over 30 clinical and translational researcher teams in the National Institutes of Health, I-Corps@NCATS program. In 2016 she co-founded a startup company based on her research in detecting wrong-patient errors in radiology, Camerad Technologies.

Srini Tridandapani is currently a Professor and Vice Chair for Imaging Informatics in the Department of Radiology at University of Alabama, and an Adjunct Professor with the School of Electrical and Computer Engineering, Georgia Institute of Technology, Atlanta. Srini developed novel gating strategies for optimizing cardiac computed tomography funded by a K23 from the National Institute for Biomedical Imaging and Bioengineering. Subsequently, he has been funded by NSF and NIH SBIR grants to his start-up, Camerad Technologies, which is commercializing a technology to increase quality and patient safety in medical imaging.