UA researchers post record number of inventions

During a February interview with The City Wire, Jeff Amerine said much of the research conducted by scientists at the University of Arkansas is “potentially groundbreaking.”

On Wednesday (Aug. 7), the University of Arkansas provided statistical evidence to support Amerine’s excitement about the university’s research programs. University officials announced that faculty and staff reported 42 inventions in fiscal year 2013 (July 1, 2012-June 30, 2013).

“There are so many things that happen every day, or that I learn about every day, where I stop and say, ‘Yeah, that could be huge,’” Amerine, director of licensing for the university’s Technology Ventures division, said during the February interview.

In the statement issued Wednesday, Amerine said the record number of intellectual property disclosures by university researchers in the recent year is likely to be surpassed.

“The number is trending up, which is significant,” Amerine said in the statement. “We’ll find in the future that getting more than 40 will be a regular occurrence.”

The 42 disclosures reported in 2013 included 18 by faculty with “dual appointments” at 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 overseas the Agriculture Division’s Technology Commercialization Office.

“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,” noted the UA statement.

THE PROCESS
The disclosure process typically 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 historically the benefit to researchers is to have their work published in a peer-review journal. But in instances of potentially valuable research, university faculty and staff need to go a different route.

“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.”

POTENTIAL VALUE
John Villasenor, writing for Forbes in an article published November 2012, was surprised at results from an informal poll of UCLA graduate students who weren’t aware of the value of intellectual property.

“By obtaining a greater number of patents and then licensing them to industry, universities hope to both boost revenues and speed the introduction of the results of their research into the market. In theory, this will benefit universities, companies, and the broader public,” Villasenor wrote. “But the success of this endeavor relies on the ability of university researchers – who are very often graduate students – to recognize potentially patentable inventions and take the steps necessary to protect them by initiating and participating in the patent prosecution process.”

There can be tremendous value in patents derived from university research. A recent article at Intellectual Asset Management noted that the Microsoft and Apple patents often get the media attention, but smaller companies are also making big profits on patents.

“Lower down the scale in terms of company size, Aware Inc – an R&D-based business which develops and licenses software for the biometrics, telecommunications and healthcare industries, and which employs fewer than 100 staff – generated $91 million from two patent divestments in 2012: one to Intel for $75 million, and the other to TQ Delta LLC for $16 million,” noted the IAM article.

LOCAL VALUE
A local example of this growing value is Springdale-based NanoMech. The company was launched in 2002, and emerged from the university’s nanoscience research.

Nanoscience researchers, led by Dr. Ajay Malshe, found a way to cover cutting tools with cubic boron nitirate – a nano-compound that can extend the life of manufacturing tools by six times. The coating process was patented as TuffTek and has garnered the attention of John Deere, Honda and Caterpillar.

NanoMech’s success was recently noted by Arkansas Gov. Mike Beebe in a commentary about the importance of research to the state’s economy.

“The critical relationship between education and economic growth is demonstrated in its purest form when academic scholarship creates new technologies that carry the potential for new jobs and industry. We've seen this happen when research conducted at colleges and universities evolves into new businesses with new products created by new employees.”

‘CHALLENGING PROCESS’
Amerine said the university works to create relationships with companies or start-ups who may benefit from the research.

“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,” he said.

Amerine also said it is a “challenging process,” in which the time from initial application to patent award could be four years.

An example of the process is Fayetteville-based Boston Mountain Biotech. Bob Beitle, professor of chemical engineering, Ellen Brune, who earned a doctorate in chemical engineering in May, and Ralph Henry, Distinguished Professor of biology, created a method to “simplify the development and manufacturing of protein therapeutics.” Two researchers at the University of Pittsburgh were also part of the team.

University officials filed a provisional patent application in March 2012 and licensed Boston Mountain to commercialize the technology.

“Moving our technology from the lab bench to a company was an eye-opening experience,” Beitle said in the statement. “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.”