[Homestead] Home Business, partner with University, or other patent owner

Tvoivozhd tvoivozd at infionline.net
Sun Aug 29 16:32:46 EDT 2004


It will be a lot easier if the College has a fervent desire to turn 
their research into income from licensing patents.  It will be a hell of 
a lot easier if the College has wider ambitions, like this Canadian 
University that in addition to licensing, has on-site incubator and 
shareholder options.

Generally, there is little to do for a business to exploit a University 
patent---underlying the patent is a world of research to give guidance 
to your business.  You will usually have to do a lot of communication to 
determine University licensing policy---is it oriented toward small 
startups, or RBB (really big business), do they do exclusive licensing 
or non-exclusive.

A similar approach is by studying the flood of domestic and foreign 
patents that issue each year.  If the patent is still owned by the 
inventor, and not assigned to a big company, it  is worth following up, 
if it lies within your field of interest and manufacturing 
capabilities.  Patent issuing costs a lot of money---an invetor has a 
strong interest in recovering some of it as fast as possible. I looked 
at the Robert Green VAWT a few years back---not a huge market for it, 
but a small steady income potential.  Could have and would have made a 
deal if my neighboring machinist buddy had not loaded up with so much 
jobshop business that he couldn/t handle a proprietary item on top of it.
<http://seattletimes.nwsource.com/html/home/>

Sunday, August 29, 2004, 12:00 a.m. Pacific

/Permission to reprint or copy this article/photo *must* be obtained 
from The Seattle Times. Call 206-464-3113 or e-mail 
resale at seattletimes.com <mailto:resale at seattletimes.com> with your 
request./

*
**A Canadian way to make connections*

*By Luke Timmerman*
/Seattle Times business reporter/

VANCOUVER, B.C. -- If Angus Livingstone tried his freewheeling business 
style at a university in Washington state, he would probably be fired.

Want lab space on campus for a business startup? Move into the 
University of British Columbia. Want graduate students to work for the 
company? No problem. Want to sponsor a university lab, direct the work 
and leave a fraction of profits to the university? Go ahead. 
Livingstone, the leader of UBC's technology-transfer office, can help.

Vancouver is a smaller high-tech or biotech center than Seattle, but the 
city is gaining ground thanks in part to UBC's approach to 
commercializing university inventions. Even though UBC gets one-fourth 
the research funding of the University of Washington, the Canadian 
school is spinning out more startup companies, winning more patents per 
researcher and quickly increasing its income from technology licenses.

Livingstone said UBC's ground rules* *give him latitude to foster 
connections between the public research university, where many 
discoveries emerge, and the business world, which can develop them into 
moneymaking products.

"We really have a lot more freedom to operate than our colleagues do in 
Washington state," Livingstone said.

The UW, one of the nation's largest research centers, also has a 
tradition of turning discoveries into businesses -- but under stricter 
boundaries between public and private resources.

Alvin Kwiram, a former UW vice provost of research, said the university 
has potential to spin out 10 to 15 companies a year -- not two, as it 
did in 2002. But the UW's culture stymies cooperation with business, he 
said.

"The attitude here is, 'Don't stick your neck out, because if you make a 
mistake, you'll get hammered,' " Kwiram said. "It's an underlying, 
systemic malaise."

Ed Lazowska, the Bill & Melinda Gates Chair of Computer Science and 
Engineering at the UW, worries the situation isn't improving.

"Research revenue is as high as ever, compared to peers, so it's not the 
research activity that's slipping. It's the licensing, the patenting, 
the company formation," Lazowska said.

* UBC favors business links *

At both the UW and UBC, like university research centers everywhere, a 
professor's research into a subject like AIDS may be sponsored by 
government agencies, a foundation or a corporation. The university's 
tech-transfer office may seek a patent to guard any discoveries.

The university owns most intellectual property created on campus, and is 
responsible for licensing it to businesses who can hone it into 
something useful, and profitable, like a drug. If the company creates a 
moneymaker, some royalties are plowed back into the university.

	
<JavaScript:EnlargePhoto('2002018770','');>
<JavaScript:EnlargePhoto('2002018770','');>GREG GILBERT / THE SEATTLE TIMES
Livingstone shows off a new office complex on the UBC campus that is 
available for a company to conduct research.

If the patent has unusual potential, the university may work with 
outsiders to build a new company, and possibly make bigger money by 
taking shares in it.

The United States has a federal law, the Bayh-Dole Act of 1980, that 
encourages universities to connect with business to put inventions to 
productive use instead of letting them wilt on a shelf.

Canada has no policy to encourage university-business connections, but 
the University of British Columbia has a history of cooperation. For 
instance, Nobel Prize-winner Michael Smith of UBC was a co-founder of 
Seattle's ZymoGenetics in 1981.

As Western Canada's timber-based economy shrank in the 1980s, 
Livingstone said, the university and region badly wanted to diversify 
the economy. They saw an opportunity to turn UBC's basic research into a 
biotech industry that makes drugs or diagnostic tools.

"This business activity has been considered to be good, and part of the 
academic responsibility, rather than something that's frowned upon," 
Livingstone said.

Livingstone is a soft-spoken man who uses business lingo like "synergy" 
more than most in academia. He started in technology transfer at UBC 16 
years ago in an office of seven people. He now has a staff of 37.

	
<JavaScript:EnlargePhoto('2002018771','');>
<JavaScript:EnlargePhoto('2002018771','');>GREG GILBERT / THE SEATTLE TIMES
Julia Levy worked simultaneously as chief executive of Vancouver, 
B.C.-based biotech QLT and as a University of British Columbia scientist 
-- a dual role uncommon for University of Washington researchers.

To stir up business, he's been given tools that could raise eyebrows in 
the U.S.

Campus lab space is made available for startups. Researchers are 
encouraged to divide time between academic and business interests; there 
is no need to risk losing a tenured job if a startup fails. Graduate 
students, available at bargain wages, can work on company projects.

Livingstone said his office has focused on building companies locally, 
instead of mainly licensing technology to global companies. When a 
researcher comes in with an invention, the office gets busy: It can 
match the scientist with a venture capitalist, recruit a chief executive 
and even help shape the business plan.

If a faculty inventor's idea needs more polishing, the office can find 
more government money to do it. In at least one case, when a startup hit 
a speed bump, UBC has provided a bridge loan to keep the company running 
while it tried to raise more capital.

With those policies in action, UBC spun out 26 startups from 2000 to 
2002, compared with 12 at the UW.

Many UBC startups have flopped, but some haven't. QLT of Vancouver has 
become one of the world's few profitable biotech companies by developing 
UBC research into a $400 million-a-year drug for macular degeneration, 
an eye disease.

Julia Levy, a Vancouver biotech pioneer who for years doubled as chief 
executive of QLT and a UBC scientist, said few locals question UBC's 
close business ties. "Maybe it sounds Pollyanish, but people here 
believe it's good for the country," Levy said. "We have to go from 
having a research institution to a knowledge-based industry."

**

* UW is more wary *

The University of Washington consistently ranks among the nation's top 
five institutions in research spending, with $684 million in 2002, 
according to the Association of University Technology Managers. The 
funding that year put it in the same league as state schools like the 
University of Illinois and University of Wisconsin, and behind private 
institutions Johns Hopkins and Massachusetts Institute of Technology.

Each institution has its own strategy toward tech transfer. The UW 
focuses on licensing technologies to existing companies with ability to 
develop them, while others such as Yale and Caltech are more focused on 
turning ideas into startups. Some schools, like Harvard, have become 
more wary about business involvement in recent years. These colleges 
cling to their missions of teaching and research and to avoid being 
co-opted by business.

The UW is by any measure among the most experienced in technology 
transfer. The university earns more than $20 million a year from its 
technology licenses. Two of the most lucrative involve a hepatitis B 
vaccine and a technique for manufacturing drugs. About 195 UW-related 
startups have been founded over the decades, employing nearly 10,000.

But UW's tech-transfer system is in a slump.* *Research spending keeps 
growing, but patenting, income from licenses and startup formation have 
fallen in recent years, according to the Association of University 
Technology Managers.

The UW office was leaderless for 15 months in 2001 and 2002, and staff 
turnover was high. In 2000, the office halted all licensing for four 
months because varying interpretations of the state Ethics Law stemming 
from the mid-1990s made some officials think licensing any technology to 
a company in which a UW employee had an interest was illegal, said Bob 
Miller, the former director of tech transfer at UW.

Ethics became such a touchy subject, campus legends grew. One was that 
it was against the rules to use a university computer for any personal 
use, like to buy a book on Amazon.com.

Much of that confusion has been clarified through new interpretations of 
ethics law.

Nearly two years ago, the university tried to turn things around by 
hiring Jim Severson, a national leader in tech transfer from Cornell 
University.

He has won respect in and out of the university for being serious about 
fixing things. His emphasis has been on improving the office's 
customer-service approach, getting more licenses completed and working 
with in-state companies. Severson said he wants the office to get better 
at forming startups. The university has worked diligently with the state 
Ethics Board to clarify what's in-bounds, he said.

But many in the business world believe Severson's hands are still tied, 
because UW and state policies on business relationships are strict.

Severson said he would like to do some of the things UBC does -- 
providing lab space for startups, or getting government funding for his 
office. He said the UW isn't able to write business plans or actively 
create startups, because its staff of 50 is busy managing hundreds of 
existing agreements.

But Severson says a line needs to be drawn on how far to go in 
connecting with business, like with creating "virtual" companies that 
pay to use university space.

He said handing off promising technology to businesses that put them to 
work is important, but the UW cannot forget its other goals. He said 
they are to teach, do research, and reach out to society, partly by 
spreading knowledge through peer-reviewed papers.

**

* *

Severson said he wants the UW to be a catalyst for the knowledge 
economy, but the university shouldn't be co-opted into being a "job 
shop" for industry. University researchers, he said, should keep 
thinking about ideas 10 to 15 years in the future, rather than the 2- to 
3-year horizons of business.

Mac Parks, associate vice provost for research at the UW, said the 
university wants businesses to support its work. But without strict 
limits, the university could bias findings in favor of companies, allow 
more secrecy in academia, or allow students to be exploited. Trust in 
the university could be eroded, he said.

"It can start small, but over time what happens is a greater percentage 
of work and payroll comes from the company," Parks said. "At some point, 
it becomes apparent we no longer have a university lab, but a company 
lab at the UW at a bargain rate that's not fulfilling its mission to 
students and society."

Some business people who have dealt with the UW say it is overly 
cautious, forbidding researchers from keeping a faculty job while 
running a startup, or from serving on its board of directors.

Parks said that's a myth -- any of those conflicting roles by themselves 
don't cross the line, he said, but if too many conflicts add up, as they 
often do, administrators can say no.

At UBC, said Livingstone, rather than forbid certain relationships, the 
university is careful to disclose and manage conflicts of interest, to 
make sure the public interest is served. In his case, he serves on a 
venture-capital board so he can better understand what investors want 
from university technology.

But to manage the natural conflict -- so Livingstone doesn't abuse his 
insider's view of university technology -- Livingstone cannot take 
ownership in startups to line his own pockets. Because UBC manages its 
conflicts, Livingstone said, the university has been able to prevent 
people from abusing public resources -- the kind of scandal that could 
sink the entire tech-transfer effort.

Miller, the former head of tech transfer at the UW and UBC, is now a 
vice chancellor at the University of California, Santa Cruz. He said the 
UBC system does a good job of balancing the public and private interest.

He tried to copy some of it at the UW in the 1990s, but couldn't.

"The Canadians by and large have a belief system that reinforces 
government and believes in it, and Americans are much more skeptical," 
Miller said. "Canadians think, 'How can we manage conflicts of interest 
and make this work?' Americans want to figure out, 'Who's the crook?' "

* Entrepreneurial edge? *

Miller said he doesn't think the different rules ultimately give 
Vancouver a competitive edge over Seattle in the knowledge economy. 
Canada poses other obstacles for startups in fields like biotech: high 
individual taxes, a shallower pharmaceutical talent pool, less venture 
capital.

The UW isn't at a great disadvantage compared with other U.S. 
universities, either, Miller said, because all are fearful about 
conflicts of interest.

Others, however, do see the UW in danger of getting left behind.

Carl Weissman, president of Accelerator, a startup incubator in Seattle, 
recently tested the institutions. He proposed building a company that 
would use samples from human tumors for drug development.

The trick, Weissman acknowledged, is how to handle the tumor data, 
without violating patient privacy and letting it slip into improper 
hands, like insurance companies.

The response from a UBC affiliate? We've done something similar already, 
and we'll try.

The response from UW Medical School? It's nearly impossible; federal 
privacy rules won't allow it.

More than anything, Weissman said, changing the UW's tech-transfer 
practices to allow more flexibility would make Seattle's biotech hub 
competitive with leaders such as Boston and San Francisco.

Without changes, he said, investors will migrate elsewhere and 
enterprising researchers could leave.

"You can't attract the most innovative faculty if they can't participate 
in the wealth that comes from their ideas," Weissman said.

/Luke Timmerman: 206-515-5644 or ltimmerman at seattletimes.com 
<mailto:ltimmerman at seattletimes.com> /

Copyright <http://seattletimes.nwsource.com/news/general/copyright.html>




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