Beckman InstituteUniversity of Illinois at Urbana-Champaign

Synergy

Protecting Value of Discoveries Can Be Tricky for Researchers

By Steve McGaughey, Beckman Institute Writer
( Page 2 of 2 )
self-aiming camera
Narendra Ahuja's self-aiming camera.

It's easy to understand why the folks at OTM and Illinois officials feel that way. Mosaic, developed at the National Center for Supercomputing Applications (NCSA) at the U of I, is the Internet browser technology widely credited with making the Web accessible to non-computer types and, therefore, the wildly popular phenomenon it is today. After its development in 1992, the technology quickly reached the private sector, spinning off into companies like Netscape and earning untold millions in licensing agreements, only some of which is recouped by the University.

"Some is a very accurate word," Wille said. "We are reaping some money from it." Wille said a major impetus for universities to protect IP emanating from their research labs largely began with the Bayh- Dole Act of 1980, which not only gave nonprofit organizations like universities the right to retain title to intellectual property, but encouraged them to develop IP for the economic and societal benefits derived from that development.

"It said essentially that University inventions funded with government funds can remain the property of the University but the University has the responsibility to commercialize the inventions in order to create jobs in the U.S., or to create revenue streams for the government," Wille said. "The Bayh-Dole Act is essentially a lever to make sure that we – our office, our Research Park, Illinois Ventures – develop methods to make sure that we take products and inventions from the University and commercialize them."

"When you move it into a company it's a different environment, there are different pressures. There are pressures for revenue, so it's hard to continue the kind of research and development that went into the initial development of the idea in that company environment." — John Rogers

So how does that process work? Wille said that going from identifying IP to sending in a patent application is typically about a three month process. Because of the backlog at the United States Patent office, Wille said, the time between patent application and patent grant has "soared to about four years now."

Once a potentially valuable IP is identified, OTM has services to help the researcher in applying for a patent, including locating the right patent attorney. Rogers said finding the right lawyer is a key part of the process.

"It's really important that you work with an intellectual-property lawyer who has experience and understands how to draft claims," he said. "Typically the best ones also have a Ph.D. in some discipline of science." Rogers said writing a patent application and writing a research paper are two completely different enterprises.

"You have to have a different mindset," he said. "When you write a scientific paper you try to describe things as specifically and, generally speaking, as narrowly as possible to focus precisely on the system that you built and precisely on the way that it behaves.

"Writing a patent is much different because you have to think in just the opposite sense. You have to abstract as much as possible from the details of what you've done to broader concepts and generalizations of what you've done. So for a scientist that can be tricky because you tend to think in terms of specifics rather than generalities."

As an example, Rogers described writing a patent for a fiber optic device he worked on at Bell Labs. Writing the research paper meant describing aspects of the device such as the electrode design, the temperature distribution, and how the device might be useful in a system.

"But if you look at the patent aspects, you look at it from an entirely different viewpoint," Rogers said. "Instead of thinking about a fiber device that has a particular micro-heater on it, you think about any kind of cylindrical, curved optical structure that has some form of electrode integrated with it and you could be applying magnetic fields, electric fields, heating, it could be many different kinds of combinations. So that would be the basis of a device level set of claims that would be very much a generalization of the concept that you demonstrated and may have little direct bearing to the particular device."

Rogers said that patent claims can then become even broader than the specific technology, requiring multiple applications in order to "build a patent forest around your device."

But for those who go through the process the reward can be great, both to the inventor and to the university. Wille said success stories like ECE Professor Nick Holonyak's native oxide invention – used for making telecommunication lasers – are paying big dividends, while Rogers' company Semprius is already bringing in money even though it was created just last year. The molecular imaging technologies for optical coherence tomography (OCT) developed by Beckman researchers led by Stephen Boppart are being promoted by OTM, as are nanotip technologies for nanolithography and scanning probe microscopy developed by Beckman's Chang Liu.

The rewards don't just come from revenue produced through commercialization. Wille said University donors and corporate sponsors are more likely to invest in future research if they can see tangible proof of their past investments.

"If they see that there are more patents coming out of here, they are more inclined to sponsor more and to donate more," he said. In addition to opening an office at Beckman, Wille said OTM will play host to receptions and seminars throughout the year featuring talks from people such as patent attorneys and campus officials about the IP process.

Even though the office at Beckman has only been open since this summer, they "already have seven ideas that will be going to disclosure within six weeks," Wille said. "That's besides about a dozen more that came out of what we call a specifically targeted patent day."

Wille said that Beckman Institute Associate Director Van Anderson "is also out there beating the bushes and saying 'hey, if you have any questions go talk to these people.' He's arranging the meetings and he's been very helpful coordinating this."

According to Wille, there were about 40 patents issued last year, and around $5 million in royalty fees to the University last year.

"Our goal is to increase both of those," he said.

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