UC, researchers get creative in their pursuit of patents

 

Chong Ahn considers himself a scholar, not a businessman. And yet his ability to figure out what might sell has him about to open a nearly 8,000-square-foot manufacturing facility in Forest Park.

“Even if I have wonderful technology, if I think of it as ‘my baby,’ that’s no good,” said Ahn, whose work at the University of Cincinnati, focusing on handheld, “lab-on-a-chip” clinical diagnostics technology, has led to eight patents. “You can’t push the technology to the market. You have to have market-driven technology.”

UC researchers have plenty of creativity when it comes to science, engineering and medicine. In difficult economic times, however, what they and the university might need more of is the kind of business ingenuity that Ahn, director of UC’s MicroSystems and BioMEMS Lab and president of Siloam Biosciences Inc., has developed.

Being more judicious

Budget cuts in the university’s technology transfer office mean that it can’t file for as many patents as in years past – and researchers increasingly will have to look outside the university for help getting ideas protected and, eventually, onto the market.

The office’s budget has decreased to $1 million in 2008 from $1.4 million in 2006 amid broader budget cuts at the university.

In the same period, the number of patent applications has dropped to 43 from 73. Eight patents were issued in 2008, compared with 13 in 2007 and 11 the year before.

“We have to be very judicious in what we patent,” said Sandra Degen, vice president for research at UC. “There are different avenues than, ‘We’re UC, and we’ll patent it and it’ll be ours.’ Universities are going toward more partnerships. It’s a national discussion, and I think it’s a trend that’s here to stay.”

It costs $10,000 to $20,000 to start a patent application, she said. The process averages about four years.

So the university has to focus its money on technologies that seem most marketable. And if a company is interested enough in an idea to get involved with the research in the patenting phase, that might bode well for its commercial prospects.

“We need to be better at marketing the areas where we excel,” Degen said, “so the companies will know to come to us.”

An example of the kind of cooperation UC needs to foster, Degen said, is its partnership, announced in March, with Cincinnati-based Ethicon Endo-Surgery. A three-year, multimillion-dollar commitment from the medical device company is supporting UC researchers and Ethicon Endo-Surgery engineers working to find treatments for obesity and related conditions, including diabetes.

For those discoveries that UC decides not to patent, the university plans to start selling the ideas back to the faculty members who came up with them – probably in exchange for a small percentage of any royalties they might eventually generate.

Balancing act

Indeed, figuring out what to patent is a balancing act, because royalties can end up being a revenue stream. In both 2008 and 2007, UC received about $580,000 in royalties.

But only a small minority of patents will ever result in royalties. Degen, trained in biochemistry, herself holds three patents, which have earned a grand total of exactly zero in royalties.

UC’s technology transfer office has a portfolio of 153 patents in varying states of licensing, along with 40 unlicensed patents.

“You are always playing a game of trying to allocate your resources where you think they’re going to pay off, from a patent protection standpoint,” said Arundeep Pradhan, president-elect of the Association of University Technology Managers. “It’s not feasible to patent everything. … Budget cuts can be a good way to focus your energies.”

In Ahn’s case, UC applied for all patents, and he eventually transferred them to his company, which employs eight people and is housed at the Bio/Start biotechnology incubator. But Ahn has, over the years, developed a strong sense of which pieces of his technology can be commercialized.

Ahn has received $5 million in investment from a foreign company and plans to be completely moved into his rented space by Nov. 1 and ready for a product launch in 2010. He hopes soon to have about 15 employees – including a management team – and eventually to have 40 to 50.

“I hired a personal adviser for business development,” he said. “I de-engineered all of my concepts to meet the market. And I made mistakes along the way. I took the time.”