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Published: Apr 20, 2008 12:30 AM
Modified: Apr 20, 2008 04:44 AM

University inventions' cash value unrealized

 

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INVENTING SUCCESS

Big money collected for university inventions is important, but schools say the full value of research includes benefits large and small. Below are some examples:

* A product developed at NCSU that delays ripening after harvest found a market among companies that want to increase the time and distance produce can travel. The process is approved in 26 countries, including the U.S. and European Union members.

* Twenty years ago, researchers at the Harvard Dental School thought they had discovered a new treatment for gum disease, which affects 80 percent of U.S. adults. But they failed to make the breakthroughs needed or attract further investment. In 2005, the FDA finally approved the first synthetic product that can be used to regenerate gum tissues.

* It's inevitable that someone's invention is going to hit pay dirt, and that is the case at New York University. While NYU has several modest winners, the bulk of its $157 million in licensing revenue in 2007 involves patented research that led to the drug Remicade. Used to treat arthritis and other inflammatory diseases, Remicade had annual sales of more than $4 billion last year.

ASSOCIATION OF UNIVERSITY TECHNOLOGY MANAGERS

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Federal agencies were usually the bottleneck in the old system, controlling patents on inventions created with federal tax money. The solution was to give universities the ownership rights to inventions discovered through federally funded research. In return, the universities were required to move those ideas into the marketplace.

By that standard, the Bayh-Dole Act was an unequivocal success. More than 5,000 new companies can be traced directly to the changes, including entire new fields in biotechnology and nanotechnology. Within a decade, thousands of university patents were issued each year -- more than six times the rate of 1980.

Tech transfer offices handle the details of those transactions: tracking discoveries by faculty, applying for patents, negotiating license agreements.

But the new arrangement also created conflicts of interest with professors suddenly able to profit from their ideas. And it let companies transfer the cost of basic or speculative product research to taxpayers.

Today, universities usually do the research until the work suggests the possibility of a new drug or other product. Then companies move in to negotiate for the exclusive right to develop it. The days of the old Bell Laboratories where corporate scientists won Nobel prizes for fundamental research are all but over.

A big hit takes years

The Triangle would seem like a natural winner in the post-Bayh-Dole world. But schools here have failed to cash in for several reasons. One is that local universities were slow to push faculty inventions into the commercial pipeline. Now, they have to wait for results that earlier actors are enjoying now.

Innes said, "Look at the University of Washington. In the year 2000, they were bringing in about $20 million on three big technologies, but those technologies started out as disclosures to the office in the early 1980s. UNC has been serious about this for about 12 years -- the mid 1990s."

Similarly, Duke licensed a variety of discoveries in the past 15 years. But it didn't significantly increase its marketing efforts until late 2005, when it hired Ritts as its director and increased full-time staff from three to eight.

Information technology, on the other hand, has turned out to be a poor fit for tech transfer offices. An entire product -- if not a company -- can come and go in the time it takes to obtain a patent. That helps explain why giants such as Google and Microsoft maintain their own research labs.

"The minute you start to talk with faculty about what might be done with a good idea, the subject comes up of whether this is intellectual property and whether people are going to get paid for it," said Keith Collins, chief technology officer at SAS in Cary. "There have been times when we just threw up our hands and walked away. "

Universities could increase their returns by betting only on likely winners. But they tend to license a wide range of ideas. Doing so runs the risk of violating parts of the Bayh-Dole Act, but there are gray areas in the law.

"We could probably try to cherry-pick the five best ideas and put all our resources on trying to make a mint out of them," Innes said. "But instead, we handle 100 technologies, of which two might be startup opportunities that might be successful in 10 years."

And when companies do succeed, universities rarely leverage their good fortune. Most, for example, sell any shares of a new company they might own as soon as possible after the initial public offering.

"We don't want to start playing the stock market," Innes said. "I know it's hard for some people to believe, but we just aren't doing this to make money."

And on that count, they are succeeding.


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tim.simmons@newsobserver.com or (919) 829-4535
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