Developing Valuable Partnerships With TCT Experts

The recent handover by pharmaceutical giant Proctor & Gamble (P&G) of more than 40 national and international patents, along with its intellectual property, to the Milwaukee School of Engineering (MSOE) is an example of one company's attempt to broaden its research capabilities by utilizing the brain power and enthusiasm of a learning institution.

The P&G patents are part of its Prototype Hard and Soft Tooling (PHAST) technology. PHAST reduces the time it takes to design molded parts, allowing those products to be marketed in a much quicker fashion. The impact on the market utilizing the machinery could amount to $1 billion annually. The donation was one of the largest ever made by the company.

But what benefits do these partnerships yield and how does one go about developing these types of relationships? What mechanisms must already be in place before even considering a partnership, what must be invested once the decision is made to build this type of relationship, how do you identify a good partner, and what should you look for when seeking potential partners?

"What the Proctor and Gamble people were looking for was a sign of our capability to absorb and/or pick up the technology so as to continue [the technology's] development," says Tom Bray MSOE Dean of Applied Research. "Part of our agreement with P&G is to make its technology the most marketable, useful and saleable. P&G was looking for evidence that that was the case."

Chris Peterson, P&G's Associate Director for Global Licensing, says MSOE was selected because it was well equipped to realize the full potential of the PHAST technology. He said that the school was the only one in the world with machines that use each of the four leading types of prototyping techniques, which were essential to developing the donated patents. The four techniques the school has are stereolithography, laminated object manufacturing, selective laser sintering and fused deposition modeling.

"We invent more products than we can develop," Peterson says. "So, we donate these technologies, which require significant development, to universities that have the expertise to develop and commercialize them."

Peterson said there are four criteria P&G used when evaluating the partnership:

1. The potential partner had to have primary technology skills in the technology they were considering donating.

2. The partner had to have some commercialization capabilities. They had to demonstrate the ability to take the technology and bring it to commercialization - either through licensing or forming a start-up company through a consortium of industry players.

3. There had to be someone at the university who championed for the technology. P&G officials stress that they are not interested in donating technologies that are going to be sitting on a shelf gathering dust. They view that as a failure. P&G believes that someone who is willing to commit themselves to furthering the technology and making it come to life will be the one who gets the patents.

4. Hire an industry expert in rapid prototyping, who in this case was Terry Wohlers of Wohlers Associates, Inc. (Fort Collins, CO), to identify the various universities that would fit the criteria. Once they identified the potential partner (MSOE), P&G had a sit-down meeting and took them through the patents from top to bottom to gauge their interest.

Bray says that while MSOE is not a typical research university, it is able to do a great deal of application-oriented research - testing, developing and evaluating rapid prototyping systems. It was this one area of expertise that seemed to narrow it down and tip the balance in MSOE's favor. Once the school found out it was on the short list and before any technology transfer took place, however, both MSOE and P&G signed disclosure agreements so the school could take formal responsibility of the companies' intellectual property.

"We did not tell them everything because some of what MSOE had was in the same general area of P&G's own tool development," says Bray. "We scratched our heads and tried to figure out what it would take to make this happen. I mean, how much do you reveal without giving anything away. We didn't know. When we showed them some things - only when we were confident we were their choice - then we worked out the details and the partnership was born."

Ironically, another company had approached MSOE shortly after the technology merger pitching a similar deal, but the school declined the offer. There were several reasons for the decision and an important lesson was learned in developing partnerships and how they should help all parties involved, not just one. Bray said the donating company was not willing to put up any funding to help defray the costs involved with accepting and developing the patents. Those costs included responsibility to maintain the patents, defending them against any violations and to continue developing them at MSOE. Another reason the offer was declined was that other competing technologies made the company's patents of little value to the school.

"Developing technology is more than just getting the patents," Bray says. "Support factors are critical to seeing the various projects through to completion."

While the P&G/MSOE information merger was an exciting one, school officials already knew the value of good industry/institution partnerships. The school took the plunge into rapid prototyping (RP) back in 1991, forming a small rapid prototyping consortium (RPC) of local companies, which eventually expanded to 30. Instead of spreading themselves thin, MSOE and the RPC decided to focus on one rapid prototyping system at a time. By doing that, the school was able to set up a 3-D SLA machine and begin making parts for the RPC members. The school and consortium held monthly reviews of the developments, problems and opportunities encountered.

This professionalism attracted more companies. The RPC has now evolved from focusing on one technology to having four leading technologies in operation, some in the process of being patented. The school requires RPC members to pay an annual fee, but what both get in return is the latest applied technology in the RP field. The fee allows the school to have the necessary capital for further investment in new RP equipment.

Each company's engineers electronically transmit what they want designed and the students take it from there. From those designs the students are able to develop moldmaking technology for injection molding and castings. The students also have been able to apply their work toward modelmaking and toolmaking. "By partnering with different organizations possessing different degrees of expertise, a synergy develops that you don't get by operating on your own," says Bray. "There are some very good side benefits to working with industry," Bray continues. "When someone has a new idea for a physical combination, whether it be a new part or configuration, our students understand every one of these technologies and can develop them."

MSOE has not been the only beneficiary to receive patents for P&G technologies. In March, Western Michigan University received more than 100 pending global patents for enhanced paperboard technology, which is used to make corrugated containers in product shipping stronger and humidity-resistant. Then in May, the company donated patented nutritional beverage technologies to Kansas State University for continued development. As with MSOE, both universities were known for specializing in the areas for which they received the patents.

"Technology lying dormant does no one any good," Peterson says. "We like to see it being useful in the marketplace."