Many things to ponder for profs considering patents

The University has a special office to help protect professors’ intellectual property.

by Devin Henry

Professor Jim Luby’s rap sheet of U.S. plant patents is a fruit cocktail of numbers and letters.

The patent for his Honeycrisp apple lies among his three strawberry breed patents – MNUS 248, MNUS 210 and MNUS 138 – two patents for breeds of grapes, and one for another apple breed.

But Luby, who works in horticultural science, and David Bedford, the Honeycrisp’s other breeder, are not the only University researchers applying for patents.

In fact, the University’s Office for Technology Commercialization was created to protect and support University researchers’ discoveries and inventions, executive director Jay Schrankler said.

“First, our job is to protect the valuable intellectual property for University inventors,” Schrankler said, “whether it be faculty members or researchers or both, and sometimes graduate students.”

According to the U.S. Patent and Trademark Office, the University has received 800 utility patents between 1969 and 2005, the 11th most of all universities in the United States.

A utility patent, which is given to new inventions or discoveries, is one of three types of patents. Design patents are given to improvements on utility patents, and plant patents apply to varieties of plants.

The Office for Technology Commercialization has seven technology strategists, Schrankler said, each assigned to a different area of research.

When researchers have a new idea for a patent, they contact the strategist in the right field and together they determine whether to apply for a patent, he said.

About 250 to 300 University researchers consider applying for patents each year, Schrankler said. Of these, about 80 applications are filed.

Tian He, an assistant professor of computer science, filed for a patent two months ago.

He helped develop a “sensor node,” which detects movement and heat in an area and relays the information to a computer.

Research on the device took about one year, he said, but the patent application could take more than a year and a half to be processed, the same as the time frame for the Honeycrisp apple patent process.

The apple’s patent will expire November 7, 2008 – 20 years after the patent application was sent in. Luby said he doesn’t know the fate of the patent after next fall.

“It belongs to the University,” Luby said. “What happens as inventors is we assign our patents to the regents of the University.”

According to the Board of Regents policy on intellectual property, the University owns all intellectual property created by University researchers who use University facilities or funds.

Other industries, though not all, have similar policies.

Daniel Mullen, a researcher in the chemistry department, helped develop seven patented items while working in the pharmaceutical industry, but doesn’t see any profit that could come from the property.

“They’re owned by the companies,” he said. “I get nothing from them. I get my name on the patent but there is no financial benefit.”

Mullen said he’s fine with the situation.

“It’s just the way it is,” he said. “If you work in the industry, you get nothing from a patent.”