Harvard Eyes New Future for Discoveries

After trailing its peers, University seeks to be the best at licensing, too

This is the final article in a three-part series.
Part 1: A New Deal on Lifesaving Drugs
Part 2: Tear Down This Wall?

A revolutionary material developed by Harvard physicists can absorb light much more efficiently than ordinary silicon, and it might one day make solar power more economical than oil- or gas-based heating.

It also might have made the world’s richest University even richer.

But while Harvard scientists have forged ahead with this energy-saving innovation, Harvard administrators appear to have squandered an opportunity to capitalize on the discovery.

The story starts in 1998, when Harvard physics professor Eric Mazur and a team of students took a silicon wafer and bombarded it with laser pulses.

In the process, they stumbled upon “black silicon,” a new chip which is inscribed with billions of spikes in the space of a human fingernail.

Black silicon reflects only 2 to 4 percent of light back into the air, absorbing the rest. Ordinary silicon, by contrast, reflects about 40 percent of light.

Solar power is now three to four times more expensive than fossil-fuel energy, but the ultra-efficient black silicon chip could reduce that cost substantially.

And it won’t just transform the production of solar power. It also could make pollution detectors much more sensitive, and it could find its way into home appliances ranging from computer chips to flat-screen televisions.

But when Mazur brought his breakthrough to the Harvard office that patents professors’ inventions, a University employee evaluated his discovery and brushed it aside.

“Some person, who I don’t want to name, said, ‘No, this is not interesting,’” Mazur recalls. “We’ve been kicking our shins ever since.”

Harvard missed the chance to file a basic patent on the process of developing black silicon. When the scope of the discovery’s applications became clear in the year that followed that meeting, the University scrambled to patent a more narrow application of the process. It is not clear how much money Harvard forfeited.

The University has amassed a spotty record at commercializing its research, a practice known as “technology transfer.” But it hopes not to make the same mistake again.

Building on a series of reforms that began two years ago, a University-wide committee recently completed a comprehensive review of the policies that govern how scientists here patent their research. Provost Steven E. Hyman says the current policies are “outdated.”

With a new president and new deans of the Faculty of Arts and Sciences (FAS) and the Medical School set to take office next month, Harvard is adopting a new approach to tech transfer.

If it succeeds, Harvard will boost the chances that the next great innovation in health care or commercial technology will bear crimson markings.

If it fails, Harvard could see millions—perhaps billions—of dollars in potential licensing revenues slip between its fingertips.

And it could lose out on opportunities to develop technologies that save energy and treatments that save lives.

SITTING ON A WINNING TICKET?

For years, Harvard has lagged behind its peers in commercializing professors’ discoveries.

In terms of total income from licenses to private companies, Harvard ranks 12th in the country, according to a 2005 report by the nonprofit Association of University Technology Managers.

In fiscal year 2006, Harvard brought in only $20.9 million in licensing revenue. Meanwhile, Stanford yielded $64.6 million, and MIT earned $48.2 million.

Tech transfer is “a lottery business,” says Lita L. Nelsen, the director of MIT’s technology licensing office. A single invention can be akin to hitting the jackpot.

In 2005, two companies paid Emory University $525 million—about 12 percent of the value of the school’s endowment at the time—to purchase rights to an anti-retroviral drug discovered by three researchers there. The drug, marketed as Emtriva, is used to treat HIV.

But if tech transfer is a lottery, then Harvard has fewer tickets than some of its peers. The University successfully patented only 34 inventions in fiscal year 2006, out of its 161 applications. MIT, by contrast, was issued 121 patents from its 321 filings.

‘A REFRESHING CHANGE’

In the tech transfer field, Harvard’s hopes rest on the shoulders of Senior Associate Provost Isaac T. Kohlberg, who arrived here in 2005. Before that, Kohlberg led tech transfer efforts at Tel Aviv University and at New York University School of Medicine. In that last post, he commanded a salary of nearly $1.3 million, making him the highest-paid administrator in academia, according to the Chronicle of Higher Education.

At Harvard, Kohlberg united the traditionally detached Cambridge and Longwood tech transfer offices into one operation, the Office of Technology Development (OTD). “He clearly changed it from a fiefdom sort of scenario into more of a university-wide phenomenon,” says George M. Church, a professor of genetics at the Medical School.

Kohlberg then established a $1.25 million fund to finance early-stage discoveries in the life sciences that require further development before they are attractive to corporate sponsors. Recipients will be announced this month.

Most markedly, he expanded the office’s staff of PhDs who evaluate and license researchers’ discoveries. And Kohlberg himself has become a visible presence in Harvard’s most cutting-edge labs.

“[Kohlberg] looked through all of my patents, and was well informed about the intellectual property I had,” says Given Professor of Immunology Laurie Glimcher ’72, who is listed as a lead inventor on more than a dozen patents since 1998. “That was a refreshing change.”

OTD employees also have visited researchers to teach them about licensing and patents.

“That’s not something that’s part of the curriculum,” Mazur says. “You don’t learn that when you become a scientist.”

AT THE CROSSROADS

Kohlberg says his office “sit[s] on the crossroads of two cultures...the business culture and the academic culture.”

And at Harvard, that crossroads historically has been the site of a culture clash.

Mark P. Carthy, a general partner at the venture capital firm Oxford Bioscience Partners, says that in the past, he found many Harvard faculty “frankly didn’t care whether a company got started, didn’t care whether the technology got used.”

Schools such as MIT, on the other hand, have always sought to apply their research to the outside world.

“MIT was set up to bring science and the useful arts to industry,” says Nelsen, the institute’s tech transfer director. “It did not have to go through this prolonged cultural questioning that Harvard did about whether it was appropriate for the academy and the industry to mix.”

But Harvard is slowly warming to the concept of technology transfer.

“More and more, those views have changed,” says Kohlberg’s predecessor, Joyce Brinton, who was the tech transfer chief here for two decades. “Faculty are much more interested and see many more reasons why this is important not only to make the discoveries but also to see that they get used.”

First, though, Harvard’s OTD must regain professors’ confidence.

“The number of patents filed when I was there was considerably smaller than at schools that one would think of as peers, and that was because [other schools] had a larger budget for that purpose,” Brinton says. That meant Brinton’s office had to pass on some licensing opportunities—including some potentially lucrative patents such as black silicon.

Those rejections led some professors to give up on tech transfer altogether.

“I completely lost faith in the office,” Mazur says. “I didn’t bother to contact them with anything anymore. It was sort of discouraging to be turned down flatly.”

THE 30-MINUTE SOLUTION?

To make sure it doesn’t miss a chance to commercialize a big breakthrough again, OTD is now filing more “provisional” patent applications on professors’ inventions.

The inexpensive “provisional” process protects Harvard’s intellectual property rights, enabling the inventor to begin discussing the discovery openly and allowing OTD to start shopping the invention to potential licensees. It gives the University and the inventor a year to decide whether to pursue a full patent application. Associate Professor of Pathology Karl Münger says that applying for a provisional patent takes “30 minutes or so.”

But overhauling the tech transfer office is a painstakingly slow process.

Over the past year, a committee of professors has met regularly to review the University’s tech transfer policies and systematically compare them to peer institutions. That committee recently presented its recommendations to Provost Hyman and President-elect Drew G. Faust.

Glimcher, the immunologist who is chair of the committee, said the group’s aim is to make Harvard’s policies “user-friendly” for inventors.

The content of the committee’s recommendations remains “confidential,” according to Schiff Professor of Investment Banking Josh Lerner, a member of the panel.

But one component of the committee’s proposal is to standardize policies across the disciplines.

Under current policy, the University only lays claim to inventions automatically if the invention is “primarily concerned with medical diagnostics/therapeutics or public health”—or if the discovery is facilitated by “substantial” University support.

In other cases, inventors “shall be entitled to all royalties or other income resulting” from their discoveries, as long as the inventor makes a good-faith effort to serve “the public interest.”

“Harvard is the only major university that takes claim only to faculty inventions in the life sciences...and not those in other technological areas,” according to Lerner.

Of the Glimcher committee’s recommendations, “the most important was to treat all discoveries the same way,” Hyman says.

But the Glimcher panel’s proposal still needs to be vetted by incoming FAS Dean Michael D. Smith and by the as-yet-unnamed Medical School chief.

And the seven-member Harvard Corporation, the University’s executive governing body, must approve the reforms before they take effect.

STIRRING THE POT

It is not known whether the Glimcher panel will offer clear guidelines for the ethically ambiguous situations generated by tech transfer.

If the University charges the revenue-maximizing rate for its patents—and especially for patents on medical advances—it runs the risk that individuals in the developing world won’t be able to afford treatments and products that originate from Harvard’s labs.

Moreover, if Harvard is serious about boosting its tech transfer revenues, it might be tempted to take a hard-line stance in negotiations with private firms. But that might also make negotiations drag on—delaying the date at which Harvard professors’ discoveries reach the marketplace.

When SiOnyx, a company co-founded by Mazur, negotiated a licensing agreement with Harvard over the narrower black silicon patent, the process was a trying one.

“I found the negotiations very difficult, especially because I have no experience in these matters,” Mazur says. “But even the people we retained to help us with the negotiations found it difficult.”

“I happen personally to think that the major goal should be to create jobs, goods, and services,” says Harvard chemist George M. Whitesides ’60, the Flowers university professor, who has been issued more than 70 patents himself.

If tech transfer is like the lottery, Whitesides is a Powerball winner many times over. More than two decades ago, he co-founded a biotech startup called Genzyme, which now boasts a stock market value of more than $17 billion. Another Whitesides biotech venture, Theravance, is worth more than $2 billion on the Nasdaq.

But Whitesides says that financial rewards are a secondary consideration for him and the four-dozen researchers in his laboratory.

“Tech transfer to us is a way of getting science into a forum where it is used by industry,” he says.

Even though tech transfer has only marginally enriched Harvard, Whitesides says that the tech transfer process ultimately enriches the quality of research.

“People get sterile when they’re talking to themselves,” he adds.

But tech transfer also brings administrators and investors into that conversation.

“I don’t know how the balance is going to work out in the long term,” Whitesides says, “but any way you can stir the pot spurs people’s creativity.”

—Staff writer Nicholas M. Ciarelli can be reached can be reached at ciarelli@fas.harvard.edu.

—Staff writer Daniel J. T. Schuker can be reached can be reached at dschuker@fas.harvard.edu.


THE CHRISTOPHER J. GEORGES ’87 FELLOWSHIP

‘Research for $ale’ is an examination of the process known as "tech transfer," by which innovations move from Harvard’s labs to consumers and patients across the globe. It is funded by the Christopher J. Georges Fellowship, an annual grant awarded to journalists on the staff of The Crimson and administered by the Nieman Foundation for Journalism. The fellowship supports investigative projects that exemplify Chris Georges’ commitment to in-depth reporting on issues of enduring social value and the human impact of public policy.Chris Georges ’87 was an executive editor of The Crimson and a magna cum laude graduate of the College. As a reporter in The Wall Street Journal’s Washington bureau, he covered politics, economics, and budget issues. Three of his stories on the welfare system were nominated for a Pulitzer Prize in 1997. Georges also served as editor of The Washington Monthly and worked at CNN, The New York Times, and The Washington Post. He died in 1998 at age 33 from complications related to lupus.