University of Arkansas Sets Record for Invention Disclosures

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Jeff Amerine, executive director, University of Arkansas Technology Ventures

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.”