WEBVTT
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00:00:06.799My conversation today is with Leslie Miller-Nicholson.
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00:00:11.759She's the executive director of the Technology Licensing Office at MIT.
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00:00:24.879She and I worked together for many years, and uh we had a a a wide-ranging conversation about the differences between doing licensing and commercialization in the Midwest versus in the Boston ecosystem.
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00:00:26.239I hope you enjoy it.
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00:00:29.359It's a little technical, but uh I think it's a fun conversation, and with a very important topic around ice-cream.
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00:00:33.520Enjoy.
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00:00:48.240Welcome to the MSU Research Foundation podcast.
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00:00:51.840Today, my guest is Leslie Miller-Nicholson.
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00:01:00.880Leslie is the Executive Director of the Technology License Office (TLO) at the Massachusetts Institute of Technology, MIT.
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00:01:12.319She leads a very large team that uh is responsible for identifying, protecting, marketing, and licensing technologies that come out of one of the premier science institutions in our country.
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00:01:13.599Welcome, Leslie.
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00:01:15.840Thank you so much for the invitation, David.
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00:01:17.280Lovely to talk to you.
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00:01:25.439Well, in full disclosure uh for our listeners, uh Leslie and I spent a number of years together uh at the University of Illinois.
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00:01:33.840I think at one point our our offices were right next door to each other before we um parted ways to to different places.
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00:01:37.840But um it's really great um to visit with you.
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00:01:44.000And and I was trying to think um uh how long you have been sort of leading the TLO at MIT.
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00:01:49.920It's just under 10 years, which is a milestone I can't believe.
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00:01:53.200I know I can and I have not aged one year.
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00:01:54.079Yeah.
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00:02:03.760Well, it must be um it must be fun uh given the um the ecosystem in Cambridge.
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00:02:26.159I was reviewing the statistics from the licensing office, and the research engine in MIT is sort of, you know, speaks for itself, but the the number of sort of um disclosures that come in and the startups that get formed and the transactions uh that that get done are are just really at a scale that are very, very impressive.
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00:02:34.080So uh tell me about your office, how many how many folks on the team and um how is the uh the place organized?
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00:02:35.599Sure.
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00:02:41.199So um and and thank you again, Dave, for inviting me to have a conversation with you.
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00:02:50.639So our office um uh you know has been in play for you know since 1940-ish, uh in some form or other.
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00:02:57.120Um and currently we are a staff of actually did the count last night, about 58 people.
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00:03:04.479And I will have to give a nod to the support I've been given over the past two years from the vice president for research here.
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00:03:16.400In a time when we have a hiring freeze still at MIT, I've been allowed to hire into some new positions to actually advance some of my vision for a reorganization.
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00:03:29.120So we have a fairly typical structure, but I'm trying to move from a cradle to grave uh to something which is more functional support for a licensing team that can actually focus on licensing.
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00:03:44.719Um, our licensing team of those 58, and my numbers are going to be a bit squishy because uh we haven't filled all of the positions yet, but about half of the team is the licensing team, either as senior officers or associates supporting those officers.
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00:04:05.840Um we have an IP (intellectual property) team, which is seven, eight, maybe up to ten strong ones for fully uh um fully filled, shall we say, a finance team that's five or six people, um, a federal compliance team plus ops facilities, HR, IT network support database.
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00:04:14.319And then uh we've got a very small marketing communications team that do and put out great material in support of what we do.
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00:04:26.240That's um that's quite a large group and a large team, and um and they do produce great work as uh I was just reviewing your annual report a little while ago.
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00:04:29.759Um, and uh it's a it's a it's a brilliant piece.
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00:04:31.279So um well done on them.
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00:04:32.079Yeah.
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00:04:50.959Well, Mark Homes plus all of the people who contributed, but that's an important component of telling our story, which is something I think that we all fail to do as well as we could to demonstrate the impact we have, and in part I think it's because of the modesty with which us tech transfer professionals carry ourselves.
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00:05:01.279But there is a lot that has impact that kind of is not well understood with regard to all of the work that went into getting technologies into the hands of people who can develop them.
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00:05:22.160Yeah, and and um I appreciate that, and I I think that echoes with um the initiatives here to do more storytelling and um it just get get the word out on on these things that um you know tech transfer and licensing is uh it can be chaotic and a bit messy at times, you know.
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00:05:59.920You you have sort of things coming up in the laboratory and then and then sort of how do you get it to product and that that that that gap, that valley of death is is um that's that's where we all operate, and uh there's a lot going on there and lots of opportunities for success, but um there's lots of pitfalls that we all have to sort of navigate and um um and and telling the story uh continues to help, you know, at least in the state of Michigan, our legislators, and at the federal level to sort of continuing to fund to fund research because these things do have real world impact.
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00:06:24.560Yeah, and I think another part of that, Dave, is um understanding the longevity, the the patient capital needed, the time scale needed, uh, the investments that are given at the front end to whether tech transfer offices or entrepreneurial programs doesn't immediately and won't perhaps ever give a return of any sort.
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00:06:36.240And it is the opportunities that we're looking for to be able to convert that, where, as you know, um, you know, one in a hundred might make it and uh or ten in a hundred, whatever the number is.
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00:06:54.000Uh, but unless you have that commitment to long-term investment, and I don't just mean dollars, but people and resources uh to support, then it's very hard for people to see sometimes the impact that they really want or expect.
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00:07:06.959You know, uh if you're gonna pull the plug or expect returns of some sort or success, uh this is not um, you know, this is a risk-driven process that we're all involved in.
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00:07:15.600Uh, and I think that's the blessing that we have at MIT and other major research universities that have the understanding of their leadership.
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00:07:18.160Uh, that we're doing this for a variety of reasons.
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00:07:26.560And one is the the, you know, in support of our general missions, which may have different words in them, but are to share knowledge.
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00:07:33.040Um, and hopefully, you know, in the process of graduating students and then being employed and all of that.
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00:07:37.759And some of them will go into startup companies and some of them will to go into corporations.
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00:07:42.560Um and but success in tech transfer is seen in a myriad of different ways.
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00:07:44.240Yeah, yeah, I agree.
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00:07:46.000And it's a long game, you know.
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00:08:02.319I think uh I know it reminds me of some of these, you know, um the these coaches either at the professional level or at the uh college level where you know you sort of come in and and by golly, if you know, if if you haven't flipped this thing around in in three or four or five years, you know, then it's time for a new coach.
00:08:02.319 -->
00:08:05.519And it it this just takes a long, long time.
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00:08:13.040And I think um folks who who look from the outside at you know how do we make this happen faster?
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00:08:19.680You may get lucky and have some spikes and some good years, but um, but you have to really think for the long term in this business.
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00:08:23.040And and uh MIT's been in it since 1940.
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00:08:30.560I think our group started in 1973, so we're we're young compared to what you all are doing.
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00:08:32.240Yeah.
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00:08:35.200Well, but you know, we all learn from each other.
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00:08:52.799There are many, and I think with some of the initiatives that have come out of the government with regard to enhancing and amplifying local ecosystems, many people have taken on different approaches for engagement with the communities, with young entrepreneurs, with students.
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00:09:05.200Um, and you know, as much as you know, as we were talking earlier, uh we have the luxury of a very vibrant ecosystem, it behooves us not to be complacent.
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00:09:05.600Yeah.
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00:09:22.000And we have to continue to engage with our community and demonstrate the value that we can bring to their visions or their, you know, whatever their goals are with regard to their research or entrepreneurship plans or whatever.
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00:09:28.799Um so yeah, it's uh it's wrought with um frustration at times.
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00:09:46.320Uh that we we you know, we we sometimes don't see the outcomes we want to, but then there's other times when and we just there was just news the other day that a very large pharma company just bought one of our startup companies, and you know, it's we don't plan for these things.
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00:09:48.320That's awesome.
00:09:48.559 -->
00:09:51.519We can't plan for these things because then we're destined for failure.
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00:09:52.240That's right.
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00:09:52.799Yeah.
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00:09:54.720Well, uh, you know, let's unpack that.
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00:09:57.279Before we went on the air, we were talking about it.
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00:10:09.200So I was uh I was referring to I think your stats showed um 38 new startups in the last year that were uh licensed out of uh the TLO, which is which is a great, great number.
00:10:09.200 -->
00:10:16.320Um you spent time in the Midwest and now you've been in the Cambridge ecosystem for for 10 years.
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00:10:41.919Um we tend to uh in in the Midwest in the Big Ten universities, um uh we tend to build up a lot of sort of um systems of resources um to help um licenses uh uh in particular those who want to do startups to to help do sort of early stage business planning, finding sort of non-dilutive grants and finding talent.
00:10:41.919 -->
00:10:44.960Um and universities tend to invest in a lot of that.
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00:10:53.120You, I think, in sitting in Boston, are in a um sort of talent-rich and capital-rich uh environment.
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00:11:07.200So I I was just curious how you sort of contrast your time in in in Cambridge versus uh you know versus the time that you spent in the Midwest and and how those are sort of similar and how they're different.
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00:11:34.639Yeah, well, maybe I'll start at a fundamental level, which is um I remember pounding the pavement literally with you know technology briefs to try and get people to engage, and folks would prefer to fly from Chicago to San Francisco or Boston, and they would drive down I-57 to come to the Champaign Urbana campus, which was so frustrating knowing the quality of research that was going on there.
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00:11:37.679So we took those shows on the road, if you remember.
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00:11:45.840We went to San Francisco and we went to Chicago and we did innovation showcases to try and demonstrate the worth and the value.
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00:12:14.960And so that was one of the biggest contrasts, just fundamentally the operations and the activities of a tech transfer office in an environment like that, where you have to beat the ground to get people interested, where you have the brand recognition and the expectation of great research and great entrepreneurship opportunities, you don't have to work as hard to get more results.
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00:12:20.159So um that was that was the first thing is that yeah, there were people at the door.
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00:12:25.039That doesn't mean to say that we should, again, like to repeat, you don't need to be complacent.
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00:12:25.279Yeah.
00:12:25.440 -->
00:12:28.879But it makes the function of the tech transfer office different.
00:12:28.879 -->
00:12:39.440There was far more um assertive marketing, maybe call it cold call marketing, seeking out opportunities.
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00:12:48.000Um and then the other thing, if you remember, uh, and you mentioned Laura Fredericks earlier, and I oh I still admire everything that she does.
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00:12:51.840They see all of the posts, they're doing great things in Champaign Urbana still.
00:12:51.840 -->
00:12:53.679I don't know if she sleeps at all.
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00:12:58.159Um and the research park has expanded and they have another incubator.
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00:13:15.519But I remember, you know, the or the entrepreneurs and residents being flown in to support the startups that we were licensing, the four or five startups that we might have licensed because we couldn't get a CEO in the community who had the skill set needed.
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00:13:23.600Well, I'm not gonna say there are a dime a dozen here because it's still really difficult for our startups to find the right people.
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00:13:32.960But it is more likely that they are gonna either come out of the labs or have assistance from one of the entrepreneurship programs that we, the Tech Transfer Office, don't run.
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00:13:46.480It's very decentralized, but they have access to all of this talent from all of the alumni who are more than happy to come back and spread their wisdom and their knowledge and sometimes their dollars to assist these startups coming out.
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00:14:04.000And I'm talking both university licensed IP as well as all of the student startup companies, which if you think 38 is high, it's probably in hundreds of startup companies are spawning from the ideas and the programs that come out that have no bearing on uh MIT-owned IP.
00:14:04.080 -->
00:14:04.240Yeah.
00:14:04.480 -->
00:14:11.519So, I mean, those are two things is the community and the availability of resources and accessibility to resources.
00:14:11.519 -->
00:14:12.639And you're right.
00:14:12.639 -->
00:14:18.399The first thing I learned when I came to MIT is people came and asked, how can we be like you?
00:14:18.399 -->
00:14:26.399And I will be honest, I said, don't try and be like us, yeah, because it's it's you you can't, you're not Boston.
00:14:26.399 -->
00:14:31.679Yeah, but look at Champaign Urbana, look at places that have to build their own.
00:14:31.759 -->
00:14:31.919Yeah.
00:14:32.240 -->
00:14:49.840Find out what it is that they've done to build up their capacity, their reputation, and the way in which they are now having impact, regional economic impact, uh, because of the um very concerted effort uh to build what's needed in a strong ecosystem.
00:14:49.840 -->
00:14:59.360Um so that I mean, I kept talking about Champagne Urbana and still do to this day, when people come and say, My leadership have told me we need to be like you.
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00:15:04.159And I'm like, let me dispel you of that myth, that you know, of your ability to do that.
00:15:04.159 -->
00:15:08.320And I don't mean to be disrespectful, but that's not what you should be trying to do.
00:15:08.639 -->
00:15:09.759Yeah, yeah.
00:15:09.759 -->
00:15:11.759Yeah, I agree with all that.
00:15:11.759 -->
00:15:31.279It's um there's there's a couple of places where um, you know, sort of the uh you know environments like like Cambridge exist, but but by and large, I'd say they're they're probably more like the sort of either the Big Ten universities or maybe the SEC schools where they might be a little bit removed from a major metropolitan area.
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00:15:39.919Cool campus towns, exciting places to go and have fun, and um a rich sort of environment, but but but but limited.
00:15:39.919 -->
00:15:46.799And um we we have done some similar things here and in building out EIR and MIR programs.
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00:15:57.919So Michigan's a small state and and um Lansing's right in the middle of it, so we we can have people sort of drive in for the day from either Detroit or Ann Arbor or Kalamazoo or Grand Rapids.
00:15:57.919 -->
00:16:02.080So we can draw from across the state to find to find folks like that.
00:16:02.080 -->
00:16:04.240And it's worked pretty well for us.
00:16:04.240 -->
00:16:08.080Uh, but I think, you know, luckily it's it's not a horrible drive.
00:16:08.080 -->
00:16:12.240It's an easy day trip for for folks to come in and and do that type of stuff.
00:16:12.240 -->
00:16:17.440But you know, I'm sure in in other geographies it's might be a little more challenging.
00:16:18.639 -->
00:16:26.320Yeah, I was so impressed that you know programs were put in place in Champaign Urbana that thought to try and pull people in.
00:16:26.480 -->
00:16:26.639Yeah.
00:16:26.720 -->
00:16:35.039Uh and I mean people were flying in, if I remember, and that's the way it catalyzed, I think, a lot of what what and how they've managed success.
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00:17:00.720And also the focus on the student community, because when I look at the other contrast, is the and this is again, and this is a generic, this isn't just about MIT or Champagne Urbana or anything, is that often the tech transfer office is looked to to be the source of so many different and very disparate resources needed for the communities.
00:17:00.720 -->
00:17:04.480And I am not sure that that's entirely appropriate.
00:17:04.480 -->
00:17:16.480I mean, tech transfer professionals, yes, they can be drawn from all over with all sorts of success, but there's also a limit to whether it's a conflict issue or whatever.
00:17:16.480 -->
00:17:38.319But you know, you know, put it this way, you know, being able to have and allocated resources for people to help them build companies versus the ones who are going to be licensing to them versus the ones who are going to develop them as entrepreneurs, as a person technology agnostic is is is is very important in my view.
00:17:38.319 -->
00:17:47.279And I don't think you can house that, and and many people disagree with me, and that's why I don't think you can house that under one roof with greatest success.
00:17:47.279 -->
00:17:50.880I think there has to be separation, and some people have done it very well.
00:17:51.279 -->
00:17:51.920Yeah.
00:17:51.920 -->
00:17:54.559Well, uh, let's shift directions.
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00:17:55.440I'm curious.
00:17:55.440 -->
00:17:58.160Um, well, maybe stick on the startups for a minute.
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00:18:09.759Over the years, there's been initiatives by a lot of different places to sort of standardize their startup licenses or standardize their their you know their license to a corporation, for example.
00:18:09.759 -->
00:18:13.599I I was curious where where you all fall on that scale.
00:18:15.839 -->
00:18:30.559Well, in fact, I have in my mailbox something from a colleague about express licenses and some efforts from the Massachusetts group, uh, MATO, which is the Massachusetts Association of Tech Transfer Offices, who are looking at this just now.
00:18:30.559 -->
00:18:36.799And I said, Yeah, sure, you know, you know, copy me and we'll see what what I think and not just what I think.
00:18:36.799 -->
00:18:38.559I said, here's my view.
00:18:38.559 -->
00:18:44.559Um, we have end user software license agreements that are templated and fill in the blanks.
00:18:44.559 -->
00:18:48.880They're not quite madlibs, it's like this or nothing, and it's really straightforward.
00:18:48.880 -->
00:18:50.400They're end-user software.
00:18:50.400 -->
00:18:58.960They're for not-for-profits, they're for commercial use, and there's different prices, and it depends who you are, what the price is, but it's basically slotted into the agreement.
00:18:58.960 -->
00:19:04.160It's downloadable, you can fill it in, we can verify who you are, and then somebody will send you the code.
00:19:04.160 -->
00:19:08.160That's not a startup license per se, but it's an express license.
00:19:08.240 -->
00:19:08.720Yeah.
00:19:09.039 -->
00:19:11.039So the concept works for some things.
00:19:11.039 -->
00:19:17.839Um, we have um what was the other uh license that we have that we do that way?
00:19:17.839 -->
00:19:19.440I'm forgetting.
00:19:19.440 -->
00:19:27.920But the notion of a startup express license is kind of an anathema to me for this reason.
00:19:27.920 -->
00:19:31.680For some people it's all about speed.
00:19:31.839 -->
00:19:32.000Yeah.
00:19:32.480 -->
00:19:33.920We want this quick.
00:19:33.920 -->
00:19:42.720Okay, so what's lost in the speed process is the education, is the understanding, is the relationship.
00:19:42.720 -->
00:20:00.079And I think it obviously avoids addressing what the issues might be with why people think that um having a I won't even say a prolonged negotiation, but having a negotiation of substance.
00:20:00.079 -->
00:20:01.359Why is that a problem?
00:20:01.359 -->
00:20:04.880These are it can be an option, that could be quick.
00:20:04.880 -->
00:20:09.599Our option agreements are I won't say laughable, I think they're a thing of beauty.
00:20:09.599 -->
00:20:16.559They are short, they are cheap, and they can get out the door in 24 hours if you agree to the terms.
00:20:16.720 -->
00:20:16.880Yeah.
00:20:17.039 -->
00:20:18.640And that and that's just an option.
00:20:18.640 -->
00:20:26.559So you agree to all of that, you give us your business plan, it's reasonable, it's what you gave your funder or your potential funder.
00:20:26.559 -->
00:20:28.000We're fine to go.
00:20:28.000 -->
00:20:33.119Um, when it comes to a license, that is at least a 20-year agreement if it's a patent.
00:20:33.279 -->
00:20:33.519Yep.
00:20:33.759 -->
00:20:37.279Um why would we be wanting to rush that?
00:20:37.279 -->
00:20:40.640And I'm not saying that we should take our time.
00:20:40.640 -->
00:20:52.960In fact, I heard somebody and I was so offended I asked for a meeting with them say that University Tech Transfer Office use time as a negotiation tactic and delay things.
00:20:52.960 -->
00:20:56.559And I'm like, I was beside myself when I heard that.
00:20:56.559 -->
00:20:58.640And I'm like, are you kidding me?
00:20:58.640 -->
00:21:05.920Um, that is the last thing we do because our responsibility too is to get stuff out as quickly as possible.
00:21:05.920 -->
00:21:12.000Now, if we're failing in that, let's look at the process, but let's look at where it's getting held up.
00:21:12.000 -->
00:21:24.799And then sometimes it's like folks are ships in the night, they're corresponding by email, they're not talking about, you know, the uh the issues that, you know, one's talking about one thing, one's talking about another.
00:21:24.799 -->
00:21:37.839Uh the way you can avoid that is by sitting down in advance at a table and getting to know each other so you will actually understand your respective interests and concerns and where your balkers are and and develop that.
00:21:37.839 -->
00:21:44.319I don't think express licenses on the whole let you do that for startup companies.
00:21:44.319 -->
00:21:59.759Now, that's not to say I won't and and I am going to be engaging in specific technology areas where it makes a lot of sense to look at express licenses as a mechanism to get particular types of portfolios out the door.
00:22:03.279 -->
00:22:05.119Yeah, no, that's really interesting.
00:22:05.119 -->
00:22:08.240Um I I don't disagree with any of that.
00:22:08.240 -->
00:22:35.200I I do appreciate speed, um, but I also appreciate relationships and understanding um and and and sort of creating creating a transaction that works for everyone based on sort of w what the technology is or what the sector might be, you know, um obviously um you know software versus engineering versus life science, you know, there are there there are different ways to to skin these things.
00:22:35.200 -->
00:22:37.839And uh so it is important to to know all that.
00:22:37.839 -->
00:22:44.720Yeah, so um one of the things that was uh jumped out at well there's a lot of things in your report that are really great.
00:22:44.720 -->
00:22:55.359Um one was the um number of startup system uh companies that are still in your ecosystem um headquartered in Massachusetts or at least a drive away.
00:22:55.359 -->
00:23:03.599And so I I was curious, does the market just absorb these startups and find wet labs and find incubation spaces for these?
00:23:03.599 -->
00:23:15.279Or or does does MIT or or or some other group sort of manage a um uh you know a number of real estate assets that are designed to be the first stop out of the university?
00:23:15.279 -->
00:23:16.960How does that play out?
00:23:17.759 -->
00:23:41.759So an MIT does not have an incubator per se, though they have an MIT Nano as a great example of allowing some of the startup companies to use their semiconductor lab facilities that they would never otherwise be able to either get access to or afford um access to their.
00:23:41.759 -->
00:23:44.480They have an MIT nano startup program.
00:23:44.799 -->
00:23:45.039Love it.
00:23:45.279 -->
00:23:48.640So the but that's not a housing place, that's not a facility.
00:23:48.640 -->
00:24:04.079But yeah, they they and I don't have the numbers, I'm sorry, but there is a luxury of incubators and you know, CIC is up the stairs, um, Lab Central, Greentown Labs for all the clean energy stuff.
00:24:04.079 -->
00:24:08.960The engine is up the street, and that has facilities and funding.
00:24:08.960 -->
00:24:15.440I mean, there are just, and there's a you know, um mass robotics incubator is down in the seaport.
00:24:15.440 -->
00:24:18.799There are just so many places people can land.
00:24:18.799 -->
00:24:34.319And again, I mean, we end up, and many people are far more, I'll say, familiar with where their startups are because they're helping them, they're helping them move in and they're, you know, they're nudging them and giving them access to the grants and everything.
00:24:34.319 -->
00:24:48.640We we are agnostic to that, both in terms of not giving support to say it's this place you should go to, because many of the ecosystem players will provide that or are from those programs that are providing support to them.
00:24:48.720 -->
00:24:48.880Yeah.
00:24:49.119 -->
00:24:51.440So there is just a lot of real estate.
00:24:51.440 -->
00:25:04.640I will say though, and I've heard this since, I mean, over the pandemic, um, when we all came back from you know, working from home in uh 100%, uh, Kendall Square had transformed.
00:25:04.640 -->
00:25:07.359There was a new Google building, there was more buildings up.
00:25:07.359 -->
00:25:09.200The contractors kept working.
00:25:09.200 -->
00:25:15.119Um and at the same time, I think the rents went up.
00:25:15.119 -->
00:25:28.000So I heard a number of faculty make comment that their startup companies could no longer afford the uh real estate opportunities in the vicinity because it was so expensive.
00:25:28.000 -->
00:25:45.279So what we've seen is some of the newer incubators are you know springing up in places away from Kendall Square, but still, I mean, it's like you know, not that far from Harvard or not that far from Central Square or something, you know, or Tufts or whatever.
00:25:45.279 -->
00:25:52.559Um, but you're right, there are many places for them to land um when they when they leave, shall we say.
00:25:52.880 -->
00:25:53.599Yeah, yeah.
00:25:53.599 -->
00:26:14.640So you um you're probably not a traffic cop, but and and nor I'm sure it's dangerous to endorse one program over the other, but I'm sure you and your team have an awareness of sort of all the places, and you can kind of if if they don't already know about it, you can you can direct some people in a in a nice way without sort of doing a full endorsement.
00:26:15.359 -->
00:26:22.319Oh yeah, no, we are I consider ourselves a signpost to a very large signpost to the many resources available.
00:26:22.480 -->
00:26:22.720Yeah.
00:26:22.720 -->
00:26:24.480Oh, that's great.
00:26:24.480 -->
00:26:30.799Uh one thing um I was also curious about how you all fit into this.
00:26:30.799 -->
00:26:36.079Um, you know, MIT does not have a medical school per se, nor do they have a hospital yet.
00:26:36.079 -->
00:26:56.400There's there's quite prolific impact from life sciences style uh research coming out of MIT through through them directly or through their collaborations, and was curious how your office uh might might fit into that that whole space, because that that seems like a partnership-rich environment.
00:26:57.119 -->
00:27:17.759Yeah, so this actually ties back to one of your first questions, which was about the difference between Champagne Urbana and uh uh Cambridge, um, and that is when I came from there, we had fewer jointly owned pieces of intellectual property that we were managing.
00:27:17.759 -->
00:27:24.480So a joint invention agreement um was not a rarity, I knew what they were, I did some.
00:27:24.480 -->
00:27:46.079But if I if there was a one way I could describe the difference, regardless of the volume, 250 in Illinois and 600 plus in uh in Cambridge of new inventions, it is the complexity of that joint ownership and often joint assignment.
00:27:46.079 -->
00:28:00.079And just to spell that out for folks to answer Dave's question is there we we don't have we have a medical um the IMS, it's called Institute of Medical Sciences and something.
00:28:00.079 -->
00:28:14.400Um but we don't have a medical school, but we have faculty who have clinical appointments in Mass General Brigham or at Harvard or wherever else, Beth Israel and the like.
00:28:14.400 -->
00:28:28.880And so in those joint appointments, they may jointly assign their IP to Mass General and MIT or Harvard or maybe even all three, this mess of intellectual property assignments.
00:28:28.880 -->
00:28:43.119And so one of the most difficult things that we have to do, and people kind of like think, oh, you get an invention, and then you file it, and then you license it, and then you and I'm like, oh, there is so much more to it than you can imagine.
00:28:43.119 -->
00:28:54.559First, we have to work out where the funding came from, then we have to work out who the inventors are and who they assign to, then we have to work out whether those are all validated.
00:28:54.559 -->
00:28:58.480And then often we have to phone up and say, Did you get one of these two?
00:28:58.480 -->
00:29:02.160Are you aware that your faculty member is named on this?
00:29:02.160 -->
00:29:04.079And whatever, and whatever.
00:29:04.079 -->
00:29:09.359And then you begin this dialogue about well, who's gonna lead and do we care, and blah, blah, blah, blah.
00:29:09.359 -->
00:29:12.400So how are we involved?
00:29:12.400 -->
00:29:13.839I'd say deeply.
00:29:14.000 -->
00:29:14.240Yeah.
00:29:14.480 -->
00:29:16.079Maybe that's not how we are involved.
00:29:16.079 -->
00:29:16.319Yeah.
00:29:16.319 -->
00:29:22.640Um, but it is often the beginning place of what are we going to do with this?
00:29:22.640 -->
00:29:36.640And then we have to have a party in order to have a conversation with all of the parties involved, um, to work out what are we going to do with it, and then you know, go from there, and we're all familiar with the joint invention agreement model.
00:29:36.640 -->
00:29:41.119Um and you know, somebody taking the lead and others sharing costs and revenue, etc.
00:29:41.519 -->
00:29:43.440Yeah, oh, that's really fascinating.
00:29:43.440 -->
00:29:45.759I don't know if our listeners will find it fascinating.
00:29:45.759 -->
00:29:46.960I find it interesting.
00:29:48.400 -->
00:29:48.720Yeah.
00:29:48.720 -->
00:29:51.759Behind the curtains of tech transfer.
00:29:52.000 -->
00:29:52.640Yeah, certainly.
00:29:52.640 -->
00:30:01.680So it sounds like a higher percentage of these sort of uh joint invention or interinstitutionals, uh, however we refer to them these days.
00:30:01.920 -->
00:30:32.079Um, a very much higher percentage, and then you kind of flow in a flavor of um whether or not the investigators are Howard Hughes' medical um employees, um if you've got jointly uh if you've got sponsors involved, or heaven help us, Bill and Melinda Gates Foundation funding, which then comes with its own flavor of, oh, don't forget the royalty-free licenses you now have to give to all of these other countries.
00:30:32.079 -->
00:30:46.559Um so all of these things are on the checklist of what do we have to do before we can license or or you know even file some of these patents to make sure that we've got all our ducks in a row and that we have the authority to do this.
00:30:46.880 -->
00:30:47.119Yeah.
00:30:47.119 -->
00:30:51.440Tell me about the venture community that that you all um interact with.
00:30:51.440 -->
00:31:10.400Um I assume there's a a number of sort of angel investors and sort of high net worth individuals or maybe entrepreneurs who've been successful looking for their next project, or are they hovering around your uh your office looking for, you know, just what's the next cool disclosure?
00:31:10.400 -->
00:31:18.720What's uh how how can I um how can I find my next thing, or how can I how can I participate in something?
00:31:18.880 -->
00:31:23.279Um Yeah, I think there's a number of different buckets there, Dave.
00:31:23.279 -->
00:31:27.839Um there's some who are attached at the hip to our faculty.
00:31:28.079 -->
00:31:29.279Yeah, I'm sure.
00:31:29.519 -->
00:31:34.319So I won't say we don't ever talk to them, but we will talk to them when we're negotiating.
00:31:34.319 -->
00:31:38.880But actually they probably know in advance of us when an invention disclosure is coming.
00:31:39.200 -->
00:31:40.079Fair enough, fair enough.
00:31:40.240 -->
00:31:42.559Uh and they're intending to invest in it.
00:31:42.559 -->
00:31:53.039And we have had invention disclosures come in and um they say this is being licensed, and we have our first 50 million raise.
00:31:53.119 -->
00:31:53.279Yeah.
00:31:53.519 -->
00:31:58.480And you know, can we get a license, which would be unheard of in any other universe?
00:31:58.480 -->
00:32:01.599Um so that's one bucket.
00:32:01.599 -->
00:32:13.039The other bucket is those that are um, yes, maybe alumni and know that we've got a cadre of IP and want to know what we've got.
00:32:13.039 -->
00:32:40.720Um, and and I do say it's like, well, that's difficult because we know that most successes coming out of uh universities are accompanied by uh a faculty member who wants to be an advisor or a co-founder of a startup, or the graduate students or postdocs who are coming out of the lab, and just a single person with a check isn't necessarily going to be the person who starts a company.
00:32:40.720 -->
00:32:47.759And so it's really about their knowledge of and introducing them to the areas of interest that they have.
00:32:47.759 -->
00:32:59.759But if they're not specific, I find it kind of like okay, we have I don't know, we have 12,000 issued in pending US and foreign patents.
00:32:59.839 -->
00:33:00.079Yeah.
00:33:00.319 -->
00:33:04.400Uh we're not gonna, I'm sorry, we're not gonna go through those and find your sweet spot.
00:33:04.559 -->
00:33:04.799Right.
00:33:04.960 -->
00:33:06.319You need to go through those.
00:33:06.319 -->
00:33:08.000And we have a very good website.
00:33:08.000 -->
00:33:09.440So what's your interest?
00:33:09.440 -->
00:33:14.400Go find, go narrow, tell us who the faculty are, and we can make an introduction.
00:33:14.559 -->
00:33:14.960There you go.
00:33:15.119 -->
00:33:23.279But for the most part, the ones that are gonna end up in actual licenses are the ones who are actually already tracking our faculty and the research groups.
00:33:23.359 -->
00:33:23.440Yeah.
00:33:23.599 -->
00:33:48.480And then there's an entirely different group, and it can't maybe they are considered ventures, but they're those people, and they're particularly interested at the moment when I think they think we're all flailing about in the muck looking for money, and they're offering us millions of dollars to monetize our IP because they think we need money badly enough that we will give away the rest of our portfolio.
00:33:48.480 -->
00:34:08.719And I don't mean to be disparaging, but I've had those conversations where I say, so you want to give us 65 million, uh, but you want us to start sharing revenue from in from IP that was disclosed to us um 10 years ago, that is now coming good as part of your ROI.
00:34:08.719 -->
00:34:11.360No, that doesn't make any sense to me.
00:34:11.360 -->
00:34:38.559Um, nor does actually give us 65 million now on the back of a promise of all future revenues for anything coming out, versus the monetization royalty format plus other model, which is tagged to a specific license that has a future potential royalty stream and an identifiable license, which is a business model we all understand, and we will then assess that on its merits if it comes to us.
00:34:39.760 -->
00:34:43.840We need an entire episode on that topic alone, or maybe multiple episodes.
00:34:43.840 -->
00:34:46.880That's really it's fascinating, and I totally hear what you're saying.
00:34:46.880 -->
00:34:50.559Um, really, yeah, really, really interesting.
00:34:50.559 -->
00:34:54.880Um so I have to ask you about one thing that I saw in your report.
00:34:54.880 -->
00:34:57.119You know that I'm an ice cream guy.
00:34:57.119 -->
00:35:06.000Um you have a um you have an invention disclosure that was in your annual report about uh 3D printed ice cream.
00:35:06.000 -->
00:35:07.920You gotta tell me about this.
00:35:07.920 -->
00:35:09.199Sign me up.
00:35:09.519 -->
00:35:18.480Well well, I I and I mean I will confess um I have not read that uh annual report for a while.
00:35:18.480 -->
00:35:26.800And uh I think Dave, for your your listener, you kind of really need to post that because I think the visual on it is the best thing about it.
00:35:26.800 -->
00:35:29.199I confess I I don't know the answer to that.
00:35:29.199 -->
00:35:33.840I should have I should have thought when you asked me earlier to to look it up and remind myself.
00:35:34.320 -->
00:35:37.920Well, it sounds uh to me like a a great invention.
00:35:37.920 -->
00:35:51.280I hope that there um I hope there's a a path for this thing, whether it's a startup or whether it's a license, and that one day soon I can um go into a shop and 3D print some ice cream or or or find something in a in a store.
00:35:51.280 -->
00:35:54.559But um I thought it was really fun to to read that.
00:35:55.039 -->
00:35:57.2803D printed cakes or something like that.
00:35:57.440 -->
00:35:58.239That'd be pretty cool.
00:35:58.239 -->
00:35:58.960Perfect.
00:35:59.119 -->
00:35:59.840Yeah, yeah.
00:35:59.840 -->
00:36:05.360We need to do we probably need to do a little bit of a marketing ploy on that and see who we could get to sign up.
00:36:05.360 -->
00:36:14.960Actually, that might go quite nicely with we're considering in one of the areas that people don't really know about what we do is that we actually manage MIT's trademarks.
00:36:15.199 -->
00:36:15.440Oh.
00:36:15.679 -->
00:36:23.920Um, and so we run the trademark program, which is shall we say modest in comparison to the big pens of the world?
00:36:24.159 -->
00:36:24.480Yeah.
00:36:24.719 -->
00:36:30.719Um and you know, the MIT beavers are well known in its own circle.
00:36:30.719 -->
00:36:34.400Um, but that's not where a lot of money comes in.
00:36:34.400 -->
00:36:40.880But we have been looking at other programs who actually allow trademarks on food.
00:36:40.880 -->
00:36:56.239Um, and so we've been talking about that, but maybe that's something they should look into is is actually that we get an ice cream vendor and then we also give them the trademark license, and then we can have 3D printed MIT ice cream cakes.
00:36:56.239 -->
00:36:57.519How about that?
00:36:58.320 -->
00:37:11.360Not to keep diving into ice cream, but you know, many m land grant universities have these ag schools that um this is part of the curriculum where they're they're they're they're making ice cream.
00:37:11.360 -->
00:37:25.360And MSU has a very famous dairy store that um has all these wonderful flavors, and uh and I think they're they're they're trying to figure out how to expand their the the breadth of their reach um with different packaging settings.
00:37:25.360 -->
00:37:30.079Yeah and uh it's a yeah and yukon has a dairy barn.
00:37:30.320 -->
00:37:37.519Yes, they do and um UVM, where my daughter is right now, yeah, they have a dairy place too.
00:37:37.760 -->
00:37:38.320These are important things.
00:37:39.840 -->
00:37:41.679These are very important things.
00:37:42.079 -->
00:37:45.039Well, my guest today has been Leslie Miller-Nicholson.
00:37:45.039 -->
00:37:48.800She's the executive director of the technology licensing office at MIT.
00:37:48.800 -->
00:37:52.800We probably could talk for hours and hours and hours.
00:37:52.800 -->
00:37:55.360And um, but we'll spare you all that.
00:37:55.360 -->
00:37:56.639It's great to catch up.
00:37:56.639 -->
00:37:57.679Thanks for being here.
