3rd Quarter 2013 Volume 11 Number 3

How They Do Tech Transfer at the Oak Ridge Lab

Mike Paulus, director of technology transfer at Oak Ridge National Laboratory in Tennessee says he always knew he would be an engineer when he was growing up in Knoxville, about 25 miles east of the lab. But that prediction had nothing to do with the fact that he lived so close to the largest science and energy lab in the Department of Energy system during his formative years. Rather, both of his parents were engineers, and Paulus says his dad always told him, “I could be anything I wanted—a mechanical engineer, a structural engineer, an electrical engineer. The sky was the limit.”

He chose electrical and is now leading the lab in accelerating commercialization of its technology, with the goal of creating jobs and boosting economic development nationally. “Everybody I know that’s in the tech transfer space shares the vision or the view that we are principally about impact and ensuring that the labs have as much of a positive impact on the economy of the United States as possible, and that’s our metric,” Paulus said.

Paulus, who has held this leadership position at ORNL for about three years, still calls himself a “rookie,” especially since his background is that of an entrepreneur, licensee and businessman, with no prior experience writing tech transfer agreements. He originally came to the lab as an engineer in 1996, when he designed integrated circuits and other electronics for nuclear detection systems. One of the designs he worked on was an X-ray system for lab animals. It was, at its most basic, a high-resolution CAT scan that could pick up subtle mutations to help screen for models for human disease.

In 2000, Paulus and his partner, Shaun Gleason, also an ORNL engineer, took an entrepreneurial leave from the lab to create ImTek, a company that would take the CT scanner to market. Eventually, the company was acquired, and he took on the new role of product manager for a product line with an international distribution system. While in the private sector, he became customer-focused—engaging with private sector partners to sell the systems.

“That was something I wanted to bring back to ORNL’s technology transfer office,” Paulus said. “That perspective of working with customers is something that most DOE scientists don’t have. We work in a world where we have one customer: DOE. And that is a very different creature. Entrepreneurs who want to do projects with us don’t come from that culture. But having spent time in that world as a salesman and responsible for a business, at least I understand what their drivers and concerns are a little bit better.”

What these experiences gave him was a broader vision for tech transfer based on the perspective of the customer. And that was unique for this job. His background, in combination with an ORNL team that was expert in the nuts and bolts of tech transfer, gave the department a different outlook.

Specifically, he said, “Just the opportunity to take a really interesting technology from the lab to the market gave me a feeling there are some special things at the lab that we could maybe do a better job of pushing into the private sector and have a real impact on the economy. The visibility by the private sector to the things we have in the lab isn’t what it ought to be.”

So when Paulus took his current position, he says, he devised a three-year plan for how to increase productivity in tech transfer: “The first year focused on reviewing processes, reorganizing the team and driving toward being a well-run, professional office; year two focused on revamping the department’s web page and creating events to improve  outreach to prospective business partners and to pitch intellectual property; the third year, we spent time thinking about how to engage the researchers we have in the tech transfer process because that is the asset of the lab.

“We’re only going to be as successful as the leverage of the scientific and engineering horsepower the lab has. It’s not going to be tech transfer on its own,” he said, adding that of 4,400 people at the lab, about 1,600 are scientists and engineers, and 16 are in the tech transfer office. “So if we’re going to be successful, it’s not going to happen solo. It’s going to happen in collaboration with scientists. We have to be the multipliers that point people in the direction of the scientific capability.”

Paulus’ plan for improving tech transfer involves five directives:
• Operating the tech transfer office as a professional business. “That was my first priority coming in,” Paulus said. “Being responsive, courteous and providing a solution that your partner values, and having robust, mature internal processes.”
• Being customer service-oriented and easy to work with—a tenet that often runs contrary to the government-focused world to which the lab is accustomed, he said.
• Taking every opportunity to shine light on what the lab has to offer. “We come from a Cold War-based history of secrecy and being remote and isolated by design, and neither of those parameters are designed to engage successfully with the private sector,” Paulus said. “The Cold War is over, and we now have potential for more impact on technology deployment into the public sector. We’ve got to figure out how to be more open and engaging now. We need to overcome that legacy and reputation.”
• Improving private sector collaboration with lab scientists and engineers. “That’s critically important because that’s the engine that makes the lab go. Their expertise and the resources that have been wrapped around them—that’s what we have that has value,” Paulus said. “We can transfer that as  intellectual property and technology licenses;  through collaboration where they work with a partner  and they leave not with a license but with knowledge that is valuable to their business; and by  allowing them to fund scientific work at the lab specifically for their benefit so they keep all the intellectual property that is developed.”
• Understanding in detail the missions and goals of the DOE.

The laboratory, managed and operated by  the University of Tennessee and Battelle, is also one of seven DOE labs participating in the federally created Agreement for Commercializing Technology, a pilot program designed as a technology transfer mechanism to attract business partners. Other labs involved are Ames, NREL, Pacific Northwest, Lawrence Livermore, Brookhaven and Idaho.

According to the DOE’s announcement, ACT is intended to “address concerns preventing some innovative companies from working with our national laboratories to bring job-creating technologies to the market.” This initiative is a DOE response to President Obama’s 2011 mandate for federal labs to improve tech transfer capabilities and commercialization of research while increasing partnerships with businesses. ACT, according to the DOE, “will remove federal barriers for businesses and startup companies that are interested in accessing the research, facilities and scientists available at the laboratories, catapulting innovative new products to the marketplace.”

Paulus says ORNL received permission to begin the program in February and is looking for its first partners that think ACT makes sense for them. He says he believes ACT has potential value when working with partners that have policies that are “difficult to match with those of the labs and the government.”

Paulus, along with Tom Rogers, the lab’s director of economic development and industrial partnerships, has also created two programs in the last three years that are proving successful for acceleration of tech transfer. One, called Spark, is an event in which the lab chooses technologies that show the greatest promise as a basis for a small business startup. Entrepreneurs, venture capitalists and economic development leaders are invited to listen to the lab’s commercialization managers give a venture pitch on the technologies. These talks include what a business born of that technology might look like, what the timeline for commercialization might be and description of a business plan. Last year, Spark even conducted a live Webinar that 150 people watched remotely.

From Spark, Paulus says, “A couple of good things happen: It gives us a reason to have an event to invite people to learn more about what is going on in Oak Ridge, and it gives sales collateral we might not otherwise have.

“We’ve done this for three years, and 40 percent of the technologies presented at the first two Sparks have been licensed or optioned, and that’s better than everything else we’ve done,” Paulus said, clarifying that “the event itself is not the driver; it’s the excuse to do a deeper dive and put something out there that winds up being a hit.”

While Spark could be described as the intellectual property pitch for technology, the second program Paulus and Rogers devised emphasizes lab capabilities to prospective partners. Called Bridging the Gap, it focuses on looking deeply for research that would be appropriate to use for collaboration with private sector partners. Here, scientists speak about the research they are doing.

“The expectation here will be an increase in Work for Others, ACT and CRADAs (Cooperative Research and Development Agreements), whereas Spark is targeting licensing,” Paulus said, adding that he and Rogers “both had this perception that we don’t do a good enough job advertising the things that we had.  So we committed to step up our outreach (through these programs).”

In addition to the CRADAs, WFOs and license agreements, the lab also has user facilities designed for scientific research on a grand scale—i.e. supercomputers, nuclear reactors and a high-temperature materials lab—and associated experts available to both companies and academics. Paulus says his office is responsible for putting into place agreements that give potential users access to these facilities.

“From my perspective, the DOE invests something on the order of a billion dollars in most of the major labs, and there is a reasonable expectation by taxpayers that the nation will be better off because of that investment. And tech transfer is one of the better ways we make sure that happens.

“We are driven by providing an answer to the question: Why is the nation better off because Oak Ridge National Lab is here? To the extent that we can point to businesses not being here without us, jobs not being here without us, companies like GE bringing manufacturing back to the U.S. because of things that we were able to develop, we answer that question. We are driven principally by significant outcomes, by the impact on the nation as a whole.”

Autumn Gray is a freelance writer based in Albuquerque.


The Mike Paulus Story
Before heading the ORNL Technology Transfer Division, Mike Paulus was vice president of product management at Siemens Molecular Imaging.  He was co-founder and CEO of ImTek, Inc., an ORNL spinout and market leader in laboratory animal x-ray CT imaging before its acquisition by CTI, Inc., and Siemens.  He has 19 years of experience as a research and development engineer with Oak Ridge, CTI, Georgia Tech and the Air Force, . He has co-authored more than 100 peer review publications, book chapters  and conference proceedings and holds 12 patents. Paulus has a Ph.D. in electrical engineering from the University of Tennessee, a master’s degree in electrical engineering from the University of Dayton and a bachelor’s degree in electrical engineering from the University of Tennessee.  He and his wife, Margaret, live in Knoxville and have a daughter graduating from high school and another from college.

Oak Ridge—By the Numbers

Oak Ridge National Laboratory’s technology transfer division monthly tracks a series of 20 metrics, which are treated as an internal scorecard, to hold the department accountable to its goals. “I am a big believer in that,” Mike Paulus says. “Our vision is we want to be high impact. It’s easy to think those lofty thoughts, but you have to create a series of actionable metrics that you can see and act upon in the natural business cycle.” Here are a few:
• Total receipts increased from $1.4 million in 2009 to $2.7 million in 2012.
• Running royalties, those based on sales of products, increased from $567,000 in 2009 to $1.3 million in 2012.
• Commercial sales (revenues based on sales of licensed products) increased from $17.5 million in 2009 to $49.7 million in 2012.

The  lab has seen significant growth in licenses and royalties in sales of licensed products between 2010 and 2012. “This means inventors are doing a good job disclosing their inventions,”  Paulus said.

2009    161
2010    162
2011    233
2012    228

Patent licenses
2009      6
2010     10
2011     15
2012     23

• The number of Cooperative Research and Development Agreements has been on a bit of a see-saw, with nice jumps from nine in 2009, to 24 in 2010 and 2011, dropping last year to 14.