MAX PLANCK INNOVATION_Technology Transfer Connecting Science and Business The figures are impressive: To date, some 3,000 inventions have been managed, nearly 1,800 commercialization agreements signed and licensing fees totaling more than 260 million euros recorded on the books. Max Planck Innovation, the technology transfer arm of the Max Planck Society, successfully mediates between science and industry. TEXT TIM SCHRÖDER he Max Planck Society con- lication and patent application struck Rarely are basic researchers experienced ducts basic research. That is manufacturers of magnetic resonance business professionals. Not all of them its task. At its institutes scat- imaging scanners around the world are familiar with the tough rules of pat- tered throughout Germany, like a thunderbolt. These devices, ab- ent law. That is why, in 1985, Frahm astronomers listen to the breviated MRI scanners, excite hydro- and his colleagues relied on the support T echo of the Big Bang, anthropologists gen atoms in the body and, based on of Garching Innovation, as the Max try to understand the growth of the their echoes, calculate images of the or- Planck Society’s technology transfer Homo erectus brain, and materials sci- gans. In this way, diseases can be iden- company was known at the time. And entists, crack propagation velocity. The tified from outside the body, without a wise move it was. GI – which was re- researchers get to the bottom of things. an operation. named to Max Planck Innovation (MI) They want to explain the world, and in late 2006 – mediates between two sometimes they unearth findings that MOVING PICTURES SHOW worlds, between business enterprises change our view of the world. “Free and THE HEART IN ACTION and basic researchers. In 1985, the in- independent” is how their work is to novation advisors had 15 years of expe- be. That is what the Statutes stipulate. Back then, the usual instruments took rience in technology transfer issues un- And indeed, some research projects more than an hour to image individu- der their belts and had already appear to be so free, independent and, al sections of a patient’s body. Thanks transferred many developments to at the same time, so far removed that to a new measuring method, the Flash companies in the form of licenses. they seem almost ethereal, like the cos- technique cut this time down to just a Flash developed into a patent rights mic dust clouds in which new stars are few minutes and was so fast that, for battle of epic proportions. The major born – which, incidentally, is likewise a the first time, it was possible to capture electronics manufacturers immediately topic for the Max Planck researchers. moving images of the heart – a true recognized the importance of the in- But that is just one side. After all, the sensation. vention. Frahm and GI wanted to make Max Planck Society produces more “This development was so dramatic their technology available to multiple than just concentrated knowledge. It that, from then on, no manufacturer companies and first negotiated partner- also produces numerous patents and could live without it,” says Jens Frahm, ships and rights of use with General inventions with practical value, as well head of the former Flash team at the Electric in the US and Siemens in Ger- as ideas that drive business develop- Max Planck Institute for Biophysical many. At any rate, the agreement with ment and form the basis for new prod- Chemistry in Göttingen, “and of course Siemens initially provided enough ucts that benefit many people. that was an exceptionally good market money to finance patent applications What is probably the most impres- position for us.” But it would be years in the EU, the US, Japan and Israel. sive invention of this kind has since before the scientists would reap the re- But the tide turned when the pat- reached a ripe old age: a patent appli- wards of their development. They first ents were finally granted in 1987 in the cation for Flash (Fast Low-Angle SHot) experienced their very own business US and in 1989 in Europe. General Elec- was filed in 1985. At the time, the pub- whodunnit with Flash. tric, Siemens and Philips filed opposi- Collage: Franz Pagel – GRG; photos: Heinz Nixdorf Museum, SPL-Agentur Focus 10 MaxPlanckResearch Special | 09 From the first transistor to the modern supercomputer: Innovation is the engine of economic development. Max Planck Innovation is a mediator between the worlds of research and business. Spezial | 09 MaxPlanckForschung 11 MAX PLANCK INNOVATION_Technology Transfer tions to the patents, but continued to “Flash is currently the most significant use the invention just as before. Agree- technology transfer case in the history ments were ignored. Philips even went of the 39-year-old Max Planck Innova- one step further and requested the in- tion, and not just in financial terms,” validation of the granted patent in the says Jörn Erselius, the new Managing US. For GI and Frahm, there was only Director and 15-year veteran of the one thing they could do: sue the com- Max Planck subsidiary. “In addition, panies for patent infringement. the patent dispute brought us enor- mous international recognition.” For COSTLY WRANGLING example, many industrial companies today view Max Planck Innovation as “I don’t think the companies’ legal de- a competent and influential authority. partments saw that coming,” says Bern- This is important for future inventions hard Hertel, who was Managing Direc- from the labs of the Max Planck Socie- tor of GI until the end of 2005, and the ty. Normally, an idea resulting from ba- driving force behind the defense of the sic research requires investors who are Flash patents. The companies pulled willing to shoulder the risk to nurture out all the stops and dragged out the it until it becomes a mature product. proceedings: sources were cited incor- These investors must be courted. rectly, new apparent counterevidence But Erselius and his colleagues must Jens Frahm, the brains behind the flash method, which revolutionized magnetic submitted time and time again. The also promote their work within their resonance imaging in the 1980s. The battle cost money – a lot of money that own company – to convince research- patent (right) brought the Max Planck was also urgently needed for other GI ers of the importance of technology Society some 155 million euros in projects. Through 1991, the negotia- transfer. This is no easy task, “because revenues through 2006. tions burned through 350,000 euros. many measure the value of their work “In addition, we constantly had to be in terms of publications in renowned on guard and make sure that our attor- magazines, not patents and licenses,” neys actually understood the complex says Erselius. technology in order to be able to argue But things are happening: “Until cogently,” says Frahm. the 1990s, technology transfer in the But GI and Frahm stood firm – de- Max Planck Society had, for the most spite being outnumbered. Everyone part, led a shadowy existence. Now, knew that there was a lot at stake. Just however, many see it differently,” says how much became clear when the the Managing Director. Examples such courts finally handed down their as Flash may have contributed to this. judgment in 1993: the companies had “When it comes down to it, the goal of to pay licensing fees – retroactively. noble, free basic research hasn’t Up to that point, the Max Planck changed – we are simply trying to Society had invested nearly 1.5 mil- make it clear that one can still do oth- lion euros in the legal proceedings. It er things on the side.” Like commer- paid off, because the judgment has cializing inventions. brought the Max Planck Society reve- Max Planck Innovation does this, in nues totaling around 155 million eu- collaboration with the researchers, in ros to date – by far the largest sum in two ways: through licensing agree- the history of GI or Max Planck Inno- ments and spin-offs. The team has 24 vation. The patent has since expired. members – biologists and physicists, However, the technology still forms lawyers, business experts, and a chem- the basis of all new magnetic reso- ist. “Our scientists understand the lan- nance imaging scanners today. guage of the researchers, but they are Photo: MPI for Biophysical Chemistry – Boettcher 12 MaxPlanckResearch Special | 09 Collage: Designergold, based on material from Jens Frahm Spezial | 09 MaxPlanckForschung 13 » You need to be able to sell. After all, anyone who sits down with the heads of business development of major companies should be able to persuade them, and to present the invention in an appropriate manner. A strong partner for the sciences: Max Planck Innovation negotiates contracts, handles licensing matters and helps innovators draw up business plans. The requisite know-how is held by Managing Director Jörn Erselius (top picture, left) and the company‘s author- ized agent Ulrich Mahr (right), and their staff of two dozen (bottom picture, from left to right, Bernd Ctortecka, Wolfgang Tröger and Dieter Treichel). also trained in matters of patent law and patent and license management,” says Erselius, who himself is a biologist who also has an MBA degree. And one more trait is crucial: they must be able to sell. After all, anyone who sits down with the heads of business development of major companies should be able to persuade them, and to present the in- vention in an appropriate manner. THE PRODUCT SPECTRUM BOOSTS MARKET OPPORTUNITIES The Max Planck Innovation team re- lieves scientists of a significant portion of the need to make external contacts: they negotiate commercialization agreements, handle licensing matters, defend patent rights and assist in draw- ing up business plans for spin-offs.