Friday, July 25th, 2008

Patents not pending for the University

Research patents are having an increase at the University and research are seeing the benefits of these patents.

Kendra Hall

Wednesday, April 9th, 2008

When he was a student, Ron Barrett-Gonzalez found out just how enriching receiving a patent could be.

Barrett-Gonzalez was a graduate student at the University of Maryland and working when he obtained his first patent.

The patent was for a new way to twist rotor blades to reduce vibrations in airplane wings and missile fins.

“Sweetheart, we’re going out to eat tonight,” said Barrett-Gonzalez, an associate professor of aerospace engineering at the University of Kansas, to his wife after he received a $27,000 check from his first patent royalty.

Officials at the University also know how enriching patents can be for a university as well.

Halfway through its 2008 fiscal year, the Office of Technology Transfer and Intellectual Property reported that revenue from the University’s licenses and patents has exceeded its previous year’s revenue of $570,000. In 2006, the office brought in $340,000.

Neither compares to the 2005 fiscal year, when the Office of Technology Transfer and Intellectual Property recorded revenue of more than $5.4 million because a company bought the rights to the University’s patent to Cyclodextrin, a compound that makes water-insoluble drugs into water-soluble drugs.

James Baxendale, director of the technology transfer office, said the number of KU’s patents have increased by 30 to 50 percent annually during the last five years. On the Lawrence campus, patents increased from 22 in 2006 to 38 in 2007. At the University of Kansas Medical Center, the numbers went from six patents to 10 in the same time.

During the past five years, the number of patents filed on the Lawrence campus has continued to increase. Researchers filed seven patents in 2003, 11 in 2004, 20 in 2005, 22 in 2006 and 38 in 2007. For the Med Center, researchers filed 4 in 2003, 7 in 2004, 7 in 2005, 6 in 2006 and 10 in 2007.

The number of patents issued during the past five years has also seen increases and decreases on both KU campuses. Patents issued on the Lawrence campus were 12 in 2003, 16 in 2004, 11 in 2005, 11 in 2006 and five in 2007. The Med Center has seen a decrease in its number of patents actually issued during the past five years. Patents issued at the Med Center were eight in 2003, six in 2004, three in 2005, two in 2006 and one in 2007.

Baxendale said that active licenses have increased as well. He said in 2006 on the Lawrence campus there were 40 licenses that increased in 2007 to 43 active licenses. At the Med Center in 2006 there were 36 licenses that increased to 38 active licenses in 2007.

Andrew Torrance, associate professor of law, teaches classes about intellectual property and patent law. He said that to receive a patent, a researcher must meet certain requirements. Torrance said the invention or method must be novel, or literally new, and non-obvious, or significantly different. The invention must be fully described in words and diagrams and also must be useful and commercially viable.

“Without patents, there would be fewer inventions that come out of universities,” Torrance said.

Torrance said if the companies that buy licenses to KU’s patents were successful, it would benefit the University, the inventor’s department and the KU Research and Graduate Studies programs. He said that the royalties collected from licenses to KU’s patents must be split in thirds among the inventor, the inventor’s department and KU Research and Graduate Studies.

Mark Fisher, associate professor of biochemistry and molecular biology, said he also knew the benefits of receiving a patent. His patent is on the Chaperonin/Osmolyte Protein Folding System, which provides a process of folding proteins to their correct structure.

He said that the protein-folding system was highly valuable to the pharmaceutical industry. Fisher said the estimated worth of the protein-folding system in the market was $20 million to $50 million and that this number could increase if the method could be demonstrated to show it could be used in a broader sense.

As a result of Fisher’s patented method, he has received private funds of $75,000 from KTEC and an NIH grant of $100,000 for more research. He said he is also applying for $800,000 for more research. Fisher said an east coast company wants to open up companies in Kansas using his method.

Baxendale said that generally the departments related to pharmaceutical sciences brought in the most money as well as the greatest number of patents. He also said that probably the most successful person on campus with patents would be Valentino Stella in the pharmaceutical chemistry department who has been involved with three start-up companies.

However, Baxendale said that an increase in the number of patents did not always mean an increase in revenue. He said revenue depended on the delay it took for a patent to make it to the market. Baxendale said that about 60 percent of inventions involved drug development, which could take up to ten years to hit the market; the University would then receive royalties when invention made it to the market.

“Start with 10,000 worldwide different compound inventions and only one will make it to the market and it is very costly,” Baxendale said.

Baxendale said his office planned to continue to support the inventions that come out of KU’s faculty and students. He said the University would continue to recruit faculty to increase its research.

Barrett-Gonzalez said he brought in revenue to the Univeristy indirectly, but this was not considered royalty money but rather follow-up research. He said he has two projects in progress at the University.

Barrett-Gonzalez now has three of his own patents and three pending patents, one of which is through the University. Barrett-Gonzalez said that he encouraged his undergraduate and graduate students to protect their own ideas by filing for patents.

“I look forward to many more patents coming from our students,” Barrett-Gonzalez said.

— Edited by Matt Hirschfeld

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