University pushes research from the labs to the market

The number of patents filed by the University has more than doubled in the past five years.

by Parker Lemke

The University of Minnesota has encouraged its researchers in recent years to report more of their innovations to the school’s Office for Technology

To capitalize on new scientific breakthroughs, the OTC has ramped up its work of transferring innovations developed on campus — ranging from computer applications to new crop varieties — to industry partners that can manufacture and market the discoveries.

As a result, the office’s patent filings have more than doubled since 2009. Scientists disclosed some 330 inventions to the OTC in 2013, and the University filed 148 patents.

Chemistry professor Andreas Stein said he has noticed a University-led push for researchers to patent their work into applicable technologies.

“In the last year or so, I’ve seen more encouragement from [the OTC],” he said. 

The institution’s increase in patent filing is part of a nationwide trend of commercializing research, said Leza Besemann, an OTC technology strategy manager.

“That [trend] spills down to the funding agencies that fund most of our research,” she said. “More and more, they’re requiring our faculty and researchers to say how their research is going to end up benefiting society.”

The trend comes at a time when the University’s patent revenue is recovering from the recent expiration of its patents for the lucrative HIV drug Ziagen.

“When [a] patent expires, you lose the revenue source, and so you’re always trying to get new patents,” said law professor Thomas Cotter, who specializes in intellectual property law.

From the lab to technology

When she arrived at the University eight and a half years ago, Besemann said faculty were more reluctant to work with OTC on licensing their research.

Now, they have opened up to the idea, a phenomenon she attributes to the office’s support services and its history of past successes.

The process starts when a faculty member reports his or her findings to the OTC, which evaluates the disclosures for commercial viability and determines whether they are patentable, Besemann said.

Once an invention makes its way through the United States Patent and Trademark Office, which on average takes two to three years, research universities usually license the patent’s rights to an outside party, Cotter said.

It typically takes about seven years for an invention disclosure to translate into a licensing deal, Besemann said. So it’s commonly perceived that applied research favors short-term projects over long-term ones, he said, but that’s not necessarily the case.

“We can’t just bet on short-term things, because most innovations, especially here at the University, take several years until they’re going to hit the commercial market,” she said.

Stein said the need for faculty scientists to perform basic research, partly to train doctoral students, hasn’t changed.

“[Doctoral students] still have to do publishable work … and that’s usually basic research,” Stein said. “However, there is now a stronger link between the basic research and the applications.”

He said graduate students are often eager to see their work contribute to usable technologies.

Stein said his research benefited when a private company approached him and one of his colleagues to investigate composite materials that use nanoparticles, like graphene, to improve plastics.

Changes made to a federal patenting law under the 2011 Leahy-Smith America Invents Act has also encouraged researchers to file patents more promptly, Cotter said.

Previously, the U.S. awarded patents to inventors who could prove they had developed a technology first. Now, whoever files a patent first wins the rights.

“It causes us to sometimes act more quickly,” Besemann said. “But overall, it hasn’t really made a big impact.”

Though the number of disclosures continues to rise, Besemann said, the OTC can never predict when the next blockbuster patent will come along, and it has to bet on technologies at very early stages.

“We’re definitely driven by revenue, but we’re first driven by knowledge transfer and benefiting society,” she said.