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Jeffrey A. Dunbar is interim director of the Intellectual Property Division of the Office of Science, Technology Transfer and Economic Outreach.
What is STOR?
STOR is short for the UB Office of Science,
Technology Transfer and Economic Outreach. We work to identify, protect
and commercialize the research discoveries of our faculty and staff for
the public good. STOR also operates the UB technology incubator program
and oversees a number of commercialization programs, such as the Center
for Advanced Technology. The focus of my group is on intellectual
property and technology transfer.
What is a patent? Is it the same thing as invention disclosure?
A patent is an official government document that grants to the
owner of the patent (assignee) a right to exclusivity in making, using,
selling and offering for sale the invention for up to 20 years from the
date of filing the application. To be issued a patent, your invention
has to meet a number of requirements, such as novelty, non-obvious to a
person having ordinary skill in the art and utility. A patent owner may
license rights to use the patent to other parties, usually in exchange
for license fees and royalties on the sale of products. An invention
disclosure is the written document submitted to STOR that begins the
intellectual property protection process. The invention disclosure
describes your invention and lists the inventors, or developers in the
case of computer software. STOR determines whether the invention is more
suited for patent or copyright protection (i.e., computer software). In
the case of patenting, we work with the inventors to assess whether the
invention meets the patent requirements. In many cases, we help outline
additional experiments needed to either meet the patent requirements or
strengthen the claims of the proposed patent application. Decisions on
whether to file for a patent depend on the patentability and commercial
potential of the technology.
Can you describe the process involved in taking an invention to
the marketplace?
Most university-developed technology is in its
early stages and requires significant investment in product development,
and possibly regulatory approval, if it is in the therapeutic,
diagnostic or medical-device fields. From the university's perspective,
the first step is identifying a commercial partner interested in
licensing the technology and capable of making additional investments in
product development. Inventors are very important in the licensing
process. Many leads come from contacts they make through publishing or
presenting their work. As the "champions" for the technology, inventors
are very involved in the technical exchange with potential licensees,
helping them to better understand the uses and advantages of the
invention and, in some cases, conducting sponsored research. Licensees
are traditionally established companies looking to add or enhance
product lines or to improve manufacturing processes or services.
However, start-up companies are becoming more common as established
companies invest less in research and development. Inventors often are
the founders of the company or serve as science officers or consultants.
Once a company decides to license a technology, there are a number of
steps before it becomes a product. A prototype may have to be built,
tested and refined. An efficient manufacturing process has to be
developed and some products require regulatory approval. Another
important step is determining how the company will market and sell the
product: Who are the customers? How much will they pay? Where will they
buy? It can take as little as one to two years to take an invention into
the marketplace, or more than 10 years if you are developing a new
drug.
Why is it important that faculty members turn their research into
commercial applications?
I think research can take two forms.
The first leads to discoveries that advance knowledge and set the stage
for future discovery. In most cases, this type of discovery is not
patentable or does not have a direct commercial application. The second
type of research results in technology that can directly benefit the
public good. The reality in this case is that someone has to invest
money into the technology to turn it into a commercial product. For
someone to invest, they will expect to make a profit, and this requires
the exclusivity that comes from patents and copyrights. The federal
government recognized this reality when it passed the Bayh-Dole Act in
1980. Prior to the Bayh-Dole Act, the government owned any intellectual
property resulting from the research it funded, much of which was simply
published without patents, or if it was patented, fell into an
inefficient government process. The Bayh-Dole Act fuels patenting and
licensing activities since it allows universities to own the
intellectual property and requires that inventors receive a share of the
licensing revenues. SUNY policy directs 40 percent of licensing revenues
to the inventors to reward them for their innovations. According to the
December 2002 issue of The Economist, since 1980 there has been a
tenfold increase in patents generated by universities, 2,200 start-up
companies, more than 260,000 jobs created and more than $40 billion
annual economic impact on the economy. So, to answer your question,
turning research into commercial applications is an important step in
delivering the benefits of research to the public good.
How
does STOR help UB inventors?
We can help inventors assess
technology for intellectual-property protection and commercial
opportunity. We are sensitive to publishing pursuits and can file
provisional patent applications to protect intellectual property when we
have reasonable advanced notice. We also assist with outgoing
material-transfer agreements and confidentiality agreements. If an
inventor is interested in being an entrepreneur, the UB technology
incubator provides flexible rental terms for office and wet laboratory
space, administrative support services and general business assistance
in the form of mentoring and networking. Through the UB Center for
Advanced Technology (CAT), STOR can provide "gap" funding for
industry-university projects that develop and transfer emerging
technologies to the private sector. For UB inventors interested in
learning more about commercialization funding, STOR has organized an
Inventors Forum on Oct. 27 to discuss the Small Business Innovation
Research (SBIR) Program and First Wave Technologies, a local development
company that provides resources and support for emerging technologies.
More information on all the services and programs STOR offers can be
found online at
How's UB doing regarding inventions and/or patents? How do we
stack up against other AAU universities and SUNY institutions?
In the 2003-04 fiscal year, UB received 81 new technology
disclosures, filed 54 patent applications (including provisional
applications) and was issued 12 patents. These numbers are on par with
our peer institutions, including SUNY Stony Brook.
What are some of the more recent licenses to inventions developed
by UB faculty members?
Paras Prasad and his collaborators
developed multifunction nanoclinics for cancer treatment. The patents
are licensed to Nanobiotix, a France-based, start-up company of which
Dr. Prasad is a cofounder. David Hangauer is a cofounder of Kinex
Pharmeceuticals, Inc., which licensed a series of patent applications
for compounds that inhibit the Protein Kinase and Phosphatase family of
proteins. Kinex plans to develop drugs for the treatment of cancer,
osteoporosis and stroke. Joseph Mollendorf, David Pendergast and Budd
Termin, head coach of the UB men's swim team, developed a low-drag
swimsuit that is licensed by TYR Sport and was worn by a number of 2004
Olympians from around the world.
What question do you wish I had asked, and how would you have
answered it?
I think an important question to ask is what should
we expect out of technology transfer activities? In a 2002 survey of
university licenses, only 145 out of 20,086 active licenses generated
more than $1 million dollars that year. Most licenses will result in
modest licensing revenues. That means we have to work to build a broad
portfolio of successful licenses and focus on the other very positive
outcomes of technology transfer: public benefit, economic development,
sponsored research and inventor rewards. In time, the next "home run"
will be discovered somewhere in the laboratories of the University at
Buffalo.