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Fabric institute’s one-stop licensing initiative bundles background university IP


By David Schwartz
Published: April 17th, 2018

The One-Stop Licensing Initiative now being tested at the Cambridge, MA-based Advanced Functional Fabrics of America Institute, a $300 million public-private partnership, includes access to aggregated background intellectual property from its university members –including its host, the Massachusetts Institute of Technology — with pre-set terms for using the IP in sponsored research collaborations. The Initiative is designed to “streamline the licensing process for industry members interested in commercializing our technologies,” according to the Institute, and navigating IP is a notorious roadblock, especially when BIP from more than one school is involved.

“The systematic tabulation and annotation of background IP is essential to manage what rights are available — and will remain available if so desired or required — and to ensure that all inventors are on board with the inclusion of their inventions as background IP, especially if they are not participating in the ‘foreground’ project,” explains Brynmor Price Rees, director of the Technology Transfer Office at the University of Colorado Boulder. “The trickiest part is that, by definition, one does not actually know what the background IP is, if any, until there is foreground IP. It’s a dependent definition.” That makes “allowing for flexibility due to that uncertainty important,” she stresses. “I’ve seen terms that have negative implications if background IP is misidentified at the project outset, which is a fundamentally flawed principle.”

When it’s well-identified, Rees notes, multi-school collaboration is a good use for aggregated BIP. “I think the best aspect of aggregating background IP for potential sponsored research is the show of creativity and effort to address something that sponsors may be concerned about coming in,” she says. “On the other hand, I think it’s something that is only worth doing where you’ve got a highly active field with decentralized ownership of foundational IP. It’s not for every situation.”

She adds: “Is BIP ever a deal-breaker? No, but it comes very close.” That’s why AFFOA lays it all out upfront.

The AFFOA comprises more than100 corporations and universities, and its mission in part is to facilitate industry-academia connections. It develops technology strategic roadmaps and issues open project calls, then provides funding for some of the applicants’ projects based on industry alignment. The Institute also makes corporate-university introductions and connects advanced fabric start-up incubators with market-facing companies.

The Institute “builds on the fiber and textile industry, academic research centers and companies in materials, apparel, electronics, transportation, defense and medical and consumer goods to weave a nationwide network of industrial members.” It’s also involved in start-up incubators, university hubs, and oversees the Fabric Innovation Network, a collaboration of manufacturing nodes for rapid prototyping. AFFOA boasts of being home to “the world’s largest cache of fiber device IP.”

And, explains Aimee Rose, PhD, AFFOA’s chief technology officer, “the One-Stop Licensing Initiative addresses several current limitations on licensing [that IP].” One of the limitations, she says, is that product development based on AFFOA technologies “can require background IP from several universities,” citing as an example a smart fabric that monitors vital signs and transmits data via antenna to a remote database. “It could require IP from the university that developed the monitoring system and the one that developed the inference algorithms,” she says, “plus the one that developed the antenna fabric and each one that developed a piece of the back-end electronics.”

That problem is largely solved with the new initiative, she says. “The One-Stop Licensing Initiative aggregates all that background IP so sponsors don’t need to go to three or four universities and negotiate separately.” And, she adds, as part of an overall BIP licensing refresh at the Institute, “we can make members aware of other pieces of background IP that may not be in one of our critical roadmaps, but that are of interest to them.” University foreground IP that’s generated when the AFFOA Institute decides to invest in a technology and fund a project that incorporates background IP “also goes into the One-Stop Licensing Initiative.”      

In all cases, corporate research sponsors keep full title to their IP. “One of the things the initiative was designed to do is let industry do what it does best, make a profit,” Rose explains, “by taking know-how and IP and owning it and commercializing it domestically. And we let universities to do what they do best, develop exciting technologies.”

A detailed article on the AFFOA one-stop licensing initiative appears in the April issue of Industry-Sponsored Research Management. To subscribe and receive the full article, as well as dozens more best practices and success strategies in the publication’s online subscriber archive, CLICK HERE.

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