Greater Good

IP Insider has been following the $7 million 11-patent license covering digital search algorithms discovered by the USC/Shoah Foundation.

University of Southern California licensing executive John Sweet,along with broker-adviser ICAP Ocean Tomo, were keys in facilitating the exclusive license.

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Not everyone shares my usual cynicism about tech transfer. Universities are a diverse community consisting of many audiences. Typically, they have many different constituents to answer to, including trustees, donors, alumni, government, students and faculty. This makes it difficult for most institutions of higher learning to move swiftly and decisively when it comes to monetizing IP assets.

IP is a full-contact support in which many universities are not prepared to participate. As non-profits, universities sometimes hold back from fully monetizing their patents and other IP for fear that doing so may alienate others or may not be part of their intended educational mission. I would argue the opposite is true. Holding back or tip-toeing around the issues of infringement distorts the market and impedes innovation and education. Unfortunately, patent licenses more often than not are “stick” relationships, not “carrot” collaborations.

University technology transfer departments are encouraged to get over their shyness about competing for return on innovation and participate in the IP marketplace (licensing, sales, purchases, securitizations), or be relegated to the status of a reserve player. Many are leaving potential funding on the table.

Innovation is a costly and sometimes nasty business and universities, certainly the less well-endowed ones, should not feel awkward about profiting from it. Universities and their constituents have an investment in time, capital and risk that they deserve a return on.

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Inspired by his experience making Schindler’s List, Steven Spielberg established the Survivors of the Shoah Visual History Foundation in 1994 to gather video testimonies from survivors and other witnesses of the Holocaust.

The Foundation’s Visual History Archive held nearly 52,000 video testimonies in 32 languages, representing 56 countries; it is the largest archive of its kind in the world.

USC/Shoah deserves credit both for its innovation and for knowing how to capitalize on it. Notable in this effort was the vision of patent attorney, Gary Hecker of the Hecker Law Group, who saw the importance of capturing the unique search algorithms and taking the time to file the patents.

Shoah CTO Sam Gustman, too, should be commended for his inventions.

The USC/Shoah license is a big win for innovation, tech transfer and IP management.

Illustration: USC