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When the academic
pace meets Internet time schedules, commercial opportunity and
recognition can get lost. Many Virginia Tech ECpE researchers
are saying that, in the future, delays imposed by the academic
culture on top of an already lengthy U.S. patent process could
cost the university millions of dollars in lost patent revenues.
Without basic patent protection of its technology, the university
does not receive the credit for the advances that boost the profits
of many firms.
"In my field, and the market we exist in, things are happening
by the hour," said Jeff Reed, a DSP expert in wireless technology.
Universities who make the most of their intellectual capital
take steps to uphold an "IP culture" in which every
faculty member, student, administrator, and department involved
in the technology transfer process is empowered to be responsive
to the pace of industry, he said.
Fred Lee, director of the Center for
Power Electronics Systems, is in another fast-moving field.
"In my industry, companies can get some level of patent
protection in two weeks," he said. "The time that we
must wait at Virginia Tech can make much of our technology worthless."
Tech's patent process is managed by Virginia
Tech Intellectual Properties (VTIP), which follows the university
guidelines established in 1991. Once an invention disclosure
is filed with VTIP, the University Intellectual Property Committee
(IPC), composed of faculty and staff from across the university,
meets to confirm the ownership and recommend action to VTIP.
VTIP invests in marketing and patenting based on a number of
factors: IPC Committee recommendation, preliminary market valuation
reports, interest by faculty in commercialization, and VTIP's
impression of the risk and reward, according to Michael Martin,
executive vice president, VTIP.
"Over the past six years, VTIP has invested more than 72
percent of its total patent budget in physical science and engineering,"
he said. "During the same period, those inventions only
generated 5 percent of the excess revenues of VTIP."
To react to the needs of rapidly changing markets, VTIP has started
filing provisional patent applications where there is a need
to publish or if the IPC recommendation is positive. "On
several occasions, VTIP has protected disclosures on the same
day that they receive them due to a pending publication."
When a patent is licensed, the inventors split 50 percent of
the royalties; 10 percent is awarded to the department or center
and 40 percent is kept by VTIP to transfer to the university.
Over the past nine years, VTIP has generated almost $4 million
for the university, the departments and the inventors.
Lee, who has about 20 patents and has filed more than 100 disclosures,
cites a recent example of academic culture costing the university
a lucrative opportunity.
A student in the power electronics research group developed technology
that allows Intel's Pentium II chip to process power quickly
enough that the chip can achieve its design speed. The group
filed an invention disclosure. "As professors, our first
responsibility is to the student," explained Lee. "The
student wanted to publish the results in order to jumpstart a
career. We had a year's protection after the disclosure was filed,
which was time to get patent protection."
VTIP pursued patenting, but no company was secured to fund the
patent and the time expired, he said. "In the end, the student
presented the paper because it was important technology,"
"We came up with something that the industry has now adopted
as standard practice," he said. "The industry is using
the technology and making a fortune, but we are not participating
because it is impossible to go back and say, 'you are infringing
on my patent.'"
The university needs to develop a more workable procedure for
the fast-moving applications of today, Lee said. Also, if Virginia
Tech is serious about capitalizing on its technology base, it
needs to invest in the IP process. "VTIP does not have money
to fund a patent for every disclosure, and is forced to make
decisions in areas where it lacks expertise," he said.
"This is an example of the clear difference between academic
and marketplace cultures," said department Head Leonard
Ferrari. "Since university researchers are developing more
technology that has value in the marketplace, Tech should consider
updating its patent policies and investing in VTIP. At present,
VTIP is forced to make very difficult decisions in selecting
which properties to protect. This is a case where a little investment
could reap great rewards."
Faculty members also need to stay abreast of the markets where
their research is applied, he said. "University researchers
who develop technology with commercial potential must be able
to make a strong case for its marketability to VTIP and the entrepreneurial
community," he said.
"We have to realize that our research in engineering today
is no longer solely within the ivory tower."