Office harvests fruits of research

Peter Kauffner

When microbiology professor Russell Johnson developed a vaccine for Lyme disease in 1985, he had no idea that the invention could put money in his pocket.
“I would not have even thought of taking out a patent on this. It so happened that the Pioneer Press did a big article on it and someone in the (University) patents office saw that and said ‘We’ve got to get together,'” Johnson said.
Millions of dogs have now been vaccinated with Johnson’s vaccine and the invention is one of the University’s top sources of royalty revenue. It was originally hoped that the vaccine could be used for humans, but it has been approved only for dogs.
“It’s not used for humans,” Johnson said. “For humans, you want it as pure as possible, although it certainly would have worked for humans.”
Johnson’s vaccine is just the tip of the patent iceberg at the University. The number of patents issued to the University has dramatically increased in the last 20 years. In the 1970s, three to eight patents were issued to the University each year. By the 1990s that figure jumped to between 30 and 40 such patents each year.
Fiscal year 1996, which ended in June, was a banner year with $6.3 million in royalty revenue, more than triple that of any previous year.
“The ’96 revenues came principally from a set of licenses done with a start-up company that related to a bunch of cancer therapies, principally cancer therapies developed by Dr. (Fatih) Uckun,” said Anthony Strauss, director of mechanical, chemical, electrical and biological technology at the University’s Patents and Technology Marketing office. The patents office is part of the Office of Research and Technology Transfer.
Uckun, a professor of therapeutic radiology, developed a therapy that cures 75 to 80 percent of children with T-cell leukemia. This compares to a 10 percent cure rate for current therapies.
The 1996 revenue jump represents a spike that isn’t likely to be repeated this year, said James Severson, director of health technology for the patents office.
Patent officials say they don’t see the exceptional status imposed on the University by the National Institutes of Health as a major barrier to continued growth in patenting.
“It may have had some general effect, in terms of morale for the faculty, but we haven’t seen a major shift in disclosure rates,” Strauss said.
Royalties are typically 5 percent of gross sales. Under the University’s royalty-sharing policy, one-third of the royalties goes to the inventor, 25.3 percent goes to the inventor’s laboratory with 8 percent going to inventor’s college and the rest to the University’s general fund.
“I would say the thing that has the most amount of commercial potential right now is the license agreement we have with Glaxo-Wellcome for an anti-AIDS compound they call 1592,” said Strauss.
That compound was developed by Robert Vince, a professor of medicinal chemistry.
“It’s in clinical trials now and should be out on the market in about a year,” Strauss said.
Some recently developed strep throat vaccines also show enormous promise, but they have much further to go before they are ready for the market, Strauss said.
Microbiology professor Paul Cleary filed for a U.S. patent for a strep throat vaccine last year.
“The patents office has just done a great job,” said Cleary.
Cleary hopes that his invention will one day become a universal children’s vaccine with a $500 million market.
University researchers who have an idea they feel is worth patenting are expected to file an Invention Disclosure Form describing the idea.
“Typically, this office will receive anywhere from 160 to 200 new ideas a year,” Severson said.
“Most disclosures come to us,” said Strauss. “We also try to keep track of groups that have a history of coming up with inventions or that are working in areas where there is value.”
Strauss hopes that his office will be able to seek out inventions more aggressively in the near future.
“We have a proposal to create new positions whose principal responsibility will be to interact with faculty,” he said.
Whether a patent is filed depends on whether an idea is considered to be patentable and on whether any outside companies show interest. It generally costs between $5,000 and $15,000 to file a patent, Strauss said.
“After we receive the disclosure form, we will typically have a conversation with the inventor to get some more details and find out if they have any commercial contacts,” said Severson.
The University is usually able to make a determination within three months of the time a disclosure is filed, said Severson. The process of filing for a patent takes about two to three years.
“Sometimes we don’t have as much time to consider the inventions as we would like to have because the faculty member is publishing a paper,” said Severson.
U.S. law allows inventors to file for a patent within one year of the time of publication. But most other countries require that a patent be filed prior to publication.
“(Publishing) has to remain paramount because, after all, this is an academic institution,” said Severson.
“If we make a decision not to file a patent, the inventor can request a waiver from the University,” said Severson. The waiver gives the inventor permission to file for a patent without assigning it to the University. About 15 to 20 percent of the researchers turned down by the University request such a waiver, said Severson.
Some see the waiver as a loophole that could potentially allow inventors to beat the system.
“Let me tell you, if you had an idea and you didn’t want to give the University a piece of the action, you could just write a weak Invention Disclosure,” said Cleary. “They would write a letter saying, ‘We’re not interested.’ Then you go to your own lawyer and get it patented.”
Others downplay the danger of a rogue inventor.
“It’s certainly possible that someone could write a disclosure and make a technology sound bad, but I think that’s far-fetched,” said Strauss. “I don’t have the feeling that anyone has tried to do that to us.”
Cell biology professor Robert Sorenson received a patent for his confocal laser microscope in 1992. His invention was licensed and began producing royalties almost immediately.
“With the type of laser we developed it is possible to look at up to three different molecules at a time,” said Sorenson. “The microscopes that were available at that time allowed you to look at only one molecule at a time.”
But most inventors have much greater difficulty marketing their ideas.
“Typically, companies have to spend a lot of time and development dollars to turn a University technology into a commercial product,” said Severson. “The inventions that we have that are currently prominent for us in terms of income are inventions that were disclosed in the late 1980s and early 1990s.”