FAYETTEVILLE, Ark. — The University of Arkansas closed the
last fiscal year with a record number of intellectual property disclosures
reported by campus researchers.
Faculty and staff at the state’s flagship university
reported 45 inventions in fiscal year 2013, which started July 1, 2012, and ended
June 30, 2013.
“The number is trending up, which is significant,” said Jeff
Amerine, director of Technology Ventures, the university’s
technology-transfer office. “We’ll find in the future that getting more than 40
will be a regular occurrence.”
The fiscal 2013 figure included 19 disclosures by faculty
with dual appointments at both the Fayetteville campus and the University of
Arkansas System’s statewide Division of Agriculture, which includes the
Arkansas Agricultural Experiment Station and Cooperative Extension Service. The
division’s intellectual property is managed by Lisa Childs, who heads the
Division’s Technology Commercialization Office.
Both Technology Ventures and the Technology
Commercialization Office assist U of A faculty and research scientists identify,
protect, and commercialize intellectual property developed from their research
or other university supported activities.
The offices encourage campus researchers to formally report
their discoveries, because completing the intellectual property disclosure form
is the first step toward transferring their inventions into marketplace
products and services. Submitting the form is also required under a patent and
copyright policy approved by trustees of the University of Arkansas System.
The process begins when a researcher realizes they have
uncovered inventive content, either patentable or protected as a trade secret,
or in a rare instance a creation that could be trademarked, Amerine said. They
then will fill out a disclosure form, in which they describe a number of
aspects of their invention, including how it operates, how it is unique and
what markets in which it would fit.
“We try to encourage the people who do the research to value
this as much as they value publication,” Amerine said. “We want high-quality
disclosures, as if they were submitting something that will be reviewed by
their peers. We do sympathize with researchers because the IP disclosure is one
more thing for them to do. We want them to know we are here to help.”
The title of the disclosure can be made public but the
content is confidential in order to protect the university’s potential asset,
Amerine said. Technology Ventures will study the disclosure and send it to an
outside group that will review the document and identify the patent landscape
and how the intellectual property will be competitive in the marketplace.
“From that, we will determine if the intellectual property
is patentable,” Amerine said. “We’re trying to create relationships with large
companies or start-ups. That’s the patent market. If we get to a point where we
think there is something that is valuable and has patentable ground we’ll work
with outside patent attorneys and spend the money on a provisional patent.”
The time frame from initial patent application to award
could be almost four years.
“It’s a challenging process,” Amerine said. “If we have a
licensee, our agreement with the licensee will dictate that they will pay for
the costs of the patent. But if we don’t have a licensee, we’re spending
substantial money on risk. If we think that the market is interesting and that
we have a probability of getting a licensee if we don’t have one, we will move
forward.”
An interdisciplinary group of researchers that created new
bacterial cell lines that simplify the development and manufacturing of protein
therapeutics filed an
intellectual property disclosure form in 2012. The group included Bob Beitle, professor
of chemical engineering, Ellen Brune, who earned a doctorate in chemical
engineering in May; and Ralph Henry, Distinguished Professor of biology. Two
researchers at the University of Pittsburgh were also part of the team.
The U of A filed a provisional patent application in March
2012 and issued a license to commercialize the technology to the
Fayetteville-based start-up company Boston Mountain Biotech last fall. Brune is
chief scientific officer for the company.
Beitle said securing the intellectual property involved a
lot of effort, especially filing for an international patent under the Patent Cooperation Treaty.
“Moving our technology from the lab bench to a company was
an eye-opening experience,” Beitle said. “The level of detail necessary to
complete the PCT application was unexpected and had a steep learning curve. The
process was made easier by working with Technology Ventures early so both sides
— inventors of the technology, licensees, and those responsible for the
grueling paper trail — aligned quickly.”