October / November 2011 Volume 9 Number 5

Karina Edmonds: A New Tech Transfer Advocate at DOE

With unemployment affecting 9 percent of Americans and politicians of both parties talking constantly about the need for jobs, an important but neglected directive in the Energy Policy Act of 2005 is finally getting the attention it deserves.

The six-year-old law directed the Secretary of Energy to put one person in charge of technology transfer. The goal is to overhaul the agency’s efforts to move government funded science and technology to the marketplace. It’s been slow-going, and Ray Orbach, who pulled double-duty as interim tech transfer coordinator and director of the DOE’s Office of Science for several years, did a commendable job of organizing the framework for the office. But now a full-time tech transfer coordinator is on the job.

Meet Karina Edmonds, who assumed the post of technology transfer coordinator in April 2010. An aeronautical engineer, Dr. Edmonds was previously the director of Jet Propulsion Laboratory technology transfer at the California Institute of Technology. In addition to her expertise in tech transfer at the highest levels of the field, Edmonds is also a registered patent agent. She recently spoke with Innovation’s Tom Michael about her goals for the department, stumbling blocks to successful tech transfer at DOE and how she plans to overcome them.

So, walking in the door at DOE what are some of the things you most want to accomplish?
What I am trying to do is create a thriving ecosystem for tech transfer. It’s a contact sport, as you know, but there are lots of boundaries between the scientists, the tech transfer office and industry and the private sector in general. Entrepreneurs, large companies, small companies and even other federal entities are coming in to do work at the labs. The first thing I did coming in was try to look at barriers that exist and try to enable our technology to get easily adopted and to try to get industry interested in working with our national laboratories.
We have a tech transfer advisory group made up of representatives of each of the labs. They identified some policy issues that they saw were problematic in executing agreements quickly. Removing and reducing barriers to tech transfer within the department and streamlining current processes so you know we have created the work for others is another goal. We are actually in the process of rewriting and updating the CRADA (Cooperative Research and Development Agreement) manual completely, with a much smaller CRADA form for smaller projects.

What are some of the biggest barriers you found to successfully conducting tech transfer at DOE?
We want to reduce advance payment requirements to sixty days of projected budget—a 33 percent reduction in time and also in the amount of money that folks have to front before any work can commence at the labs. The time delay in getting these contracts negotiated and executed was a barrier. Last year we undertook a state of business study to identify bottlenecks in the process and establish best practices in getting the contracts approved. I know at least one lab that was able to go from something like 120 days to 45 days for CRADAS. We’re still working on some.
Another barrier was on the work for others agreements. We had march-in rights in the contracts, which have never been exercised as far as I know by the government. Yet it was one of those contract terms that just gave heartburn to the companies and delayed the negotiation time for getting these contracts executed. March-in rights means the government can compel a company to luse or license the technology. This is to avoid somebody sitting on technology. Let’s say you license it and you do nothing with it—well, for the government to actually compel you to license it to somebody else to practice the invention, it has to show there is a viable market for that invention. Clearly, in a capitalist society the likelihood of sitting on a technology you could either sell or commercialize yourself is highly unlikely; as a result it’s never really been exercised because, again, the government has to show there is a viable commercial exercise for that technology. So, that was a clause we were able to remove from the work for others agreements, which has been helpful.

How did your experience at Cal Tech and as a scientist yourself  help you walking in the door? What skills do you bring to the job as a result of that experience?
I started really at the front line of working with the scientists in getting them to understand one of the things I learned—that the fundamentals of good tech transfer will be the same regardless of where you are. A big part of that is relationship building and building trust of the scientists to ensure they are reporting and that they see the value in the process. We don’t want them to feel that the process of reporting is an onerous one. It’s also important to build these relationships so that you can manage the scientist’s expectations. It is sometimes very difficult because they might have invented something they think is the best thing since sliced bread but you have to explain that your decision not to patent is not based on the merits of that technology, but that it is a business decision as to whether you are going to be able to license this technology and it depends on if there is a market for that.
I also learned a lot about the relationship between NASA and Cal Tech versus DOE and their contractors. It’s very different versus the flexibility we had there. That’s one of the major lessons. I believe the best decisions about tech transfer are made as close to the technology as possible. One of the lessons I’m learning here is how do we empower our tech transfer offices to negotiate licenses and agreements as quickly and efficiently as possible. We want to look at what kind of decisions can we move from headquarters out to the field so these agreements can get executed quickly. I’ve also been looking at some of the internal policies we have here at DOE that go above and beyond legislation and how that impedes our tech transfer activities.
But the biggest lesson I’m bringing to DOE from Cal Tech is that licensing negotiations should not be driven by the bottom line. The focus should be on getting our technologies out to the marketplace and not nickel and dime the licensees. We should be able to make fair negotiations. The truth is that the hardest part of the commercialization process starts when that technology leaves the lab. Even in the best case when you have a proof of concept that works in the lab in a controlled environment, when you take that unit outside and replicate it and try to have it work in an everyday environment versus a nice lab-controlled environment, it’s very different. The goal should be to get our technologies out to the market creating new products and services and jobs versus being driven by a high royalty rate or lots of equity.

Why has it historically been so hard to conduct successful technology transfer operations at DOE?
I’m not sure it’s just in DOE. In my experience, the interest in tech transfer tends to be cyclical. Clearly, because of the state of the economy there has been a lot of focus on tech transfer and I definitely have enjoyed the support of Secretary Chu. He came from Stanford and Berkeley and is well aware of the importance of good technology and the benefit to those institutions and to the American taxpayers ensuring that our scientific discoveries make it to the marketplace. DOE is the largest funder of the physical science fields and has a higher responsibility to ensure we have a vibrant tech transfer operation and can capitalize on our investment. Having joined DOE about 16 months ago I have been very warmly received and I have seen that folks here within the department are extremely engaged and have been working with ARPA-E and NNSA as well.

How about DOE’s new department-wide technology transfer policy that stresses commitment to the concept, empowering innovators to be a part of the process, fairness of opportunity to companies seeking to work with DOE and measuring results? Has that been helpful?
I helped author those guidelines and I do think it’s important to lay out the groundwork and have principles that we can follow. The royalty income is not the only measure of success here, which is important. A lot of the metrics we have for tech transfer measure outcomes versus impact and secondly almost all of the new tricks have some significant time delay in them. For instance, when funding actually occurs you may not have an invention disclosure for a couple of years. Obviously while the work is being conducted or the research is being conducted, you may not have results for one to two years after that. Licensing may not happen for another three or four years after that, best case, after you’ve already filed a patent and you start publishing and advertising that opportunity. I’m very much supportive of the updated policy in providing some guidance both externally to our labs and internally to our complex.

What’s different for the national laboratories under the new approach?
A lot of it is about culture change. One of the things I’ve come across, and I’ve even had people outside of DOE ask me, why can’t you guys do exclusive licenses? Well, we can. For a long time, a lot of our labs were hesitant to offer exclusive licensing. That comes with, I don’t want to say a high level of responsibility, but if you do an exclusive license for a company you have a number of people coming back to you to say “why did they get an exclusive license?” We have a process in place where we have to ensure fairness of opportunity has been met. That’s one thing that I’ve been doing, as well. I issued guidelines on meeting fairness of opportunity. It’s very important we advertise our technology opportunities widely so everyone has an opportunity to come in and work with us and license from us. If it’s multiple offers on a particular technology, the labs have a system to review those opportunities. Clearly, whenever possible we try to license as widely as we can.
We could license exclusively even within a field of use. That’s one area in which I think some labs were hesitant to work on exclusive licensing but that’s also one area in which I think some labs have come around—now they’re saying OK. That’s very important, especially with the program we have launched this year, which is the Top Energy Innovator Challenge. One of the things I’m doing is working with startups and entrepreneurs to spin off our technologies. It’s these companies that are creating the jobs. No one is willing to make those levels of investments unless they have some exclusivity when needed. I’m not advocating that we license exclusively, but for startup companies that could be one thing that is required for them. This pilot program has enabled our labs to work with these small companies. Time is of the essence so we need to be able to execute these agreements quickly. A six-month wait for a company like Dow is OK, because we all know that Dow will be in business in six months but a small company may not. We need to work on a different time schedule here if we are going to support new businesses and small companies.

What kind of staff do you have in your office?
I run a very lean operation. I have a couple of people I work with and who support me, but mostly my staff is made up of detailees from other departments and programs within DOE, which I think is very useful. That way we’re well integrated within the program. We’ll keep that continuity in the program.

Any other thoughts on your progress in the job so far?
I’ve been able to accomplish a lot with very little. There was a lot of low-hanging fruit that we picked and we’re well on our way to making great strides. Moving forward we have to decide on where we want tech transfer to go. I’m preparing an execution plan and as we finalize that execution plan that’s something we’ll be discussing. This is something that is critical and important not just for the department but for the country.  It’s an incredibly exciting time for tech transfer in the Department of Energy. I just feel really blessed to be here. It’s an amazing opportunity to help this country and help scientific discovery. We just want industry to know about the world class facilities we have available and that we are looking to engage. We want to create meaningful public/private partnerships to make sure our energy technologies are making it out to the marketplace.