A Technologist in Technology Transfer


I always knew I wanted to study science, and it was almost by accident that I chose to major in geology as an undergraduate at Princeton University. Because earth science enabled me to study biology, chemistry, and physics and apply them to solving geological problems, my education was rather broad. As a graduate student at the California Institute of Technology (Caltech), I worked on developing a new method for measuring the low temperature history of Earth's crust, a topic that forced me to learn about instrumentation and engineering. After graduate school, I was poised to pursue an academic career; however, like many students today, I was unsure whether or not I wanted to work in academia. So many colleagues had endured the endless chain of research positions with no tenure track offers, and this discouraged me.

As a graduate student, I invented a golf club (my favorite pastime) that was subsequently licensed to a start-up company. This experience was not only my first tutorial on the intricacies of patents and licensing, but was also an introduction to Mike Keller, the chief patent counsel at Caltech. When I was looking for alternatives to academia and industry research positions, Mike suggested I apply to work at NASA's Jet Propulsion Laboratory (JPL), evaluating their new technology.

Caltech manages JPL for NASA, and consequently, Caltech gets the right to intellectual property developed at JPL. Because there are more than 250 new inventions disclosed at JPL each year, they require technologists whose primary function is to write technical and commercial evaluations of the technology as it is disclosed. I accepted a position at JPL and ended up spending most of my time during the first year learning about electrical engineering, telecommunications, applied physics, etc., both from the standpoint of understanding the science behind the technology and trying to determine its applicability to industry. I found that my broad training in earth science was very helpful in acquiring a working knowledge of new fields expeditiously. Moreover, the experience was invaluable. Not only did I learn quite a bit of new material, but I became somewhat conversant with the state of high technology in this country. I have since been asked to consult for new companies, and I sit on the scientific advisory board of a company in Virginia that incubates new technology.

My original job at JPL has evolved into my present position, a joint appointment as an associate in the Office of the Intellectual Property Counsel and the Office of Technology Transfer at Caltech. My work includes managing the intellectual property portfolio at JPL, licensing technology, and working with start-ups spun out of Caltech and JPL. Managing the portfolio involves choosing which inventions are ripe for patent prosecution, directing outside counsel in how to proceed with prosecuting our patent applications, and taking a strategic look at the inventions in the portfolio to assess technological strengths and weaknesses at JPL. Licensing the technology involves negotiating and drafting license agreements with companies, which will hopefully enable the companies to develop new products and services that will stimulate the economy. Because Caltech is rather start-up oriented (40-plus companies since 1995), I have had quite a bit of experience working with new companies, and I have had a unique window into what makes them succeed and what causes them to fail.

The training of professionals in corporate or university technology transfer programs varies significantly. There are lawyers, people with business degrees, people with contracts experience, and technologists. As it is necessary to know something about all of these fields, I have had to learn patent law, contract law, and basic business practice. However, I have found that my technical background has been very helpful in connecting with the inventors. This has enabled me to better communicate with them and better serve as their advocate when it comes to commercializing the technology. As a result, I believe that a person with a technical background is well suited for a career in technology transfer. While it can be rewarding and enjoyable, a couple of years of technology transfer experience for a recent graduate can also create new career opportunities. It is often difficult for companies to find technologists/scientists with a working knowledge of intellectual property law and business development. I have greatly enjoyed my experience in technology transfer, and I would encourage recent graduates who are unsure of what they want as a career path to consider working in the field, for it may not only be the start of a career as a technology transfer professional, it may also be a stepping stone to new business opportunities.

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