Intellectual Property: A Boon or a Pain?

by John M. Owens

Patents and technology transfer—two subjects that can produce a broad range of responses on any campus—are seen by governing boards and upper administration as vast, untapped sources of income for the institution. But for mid-level administrators, the commercialization of research is viewed as a mixed blessing. Sure, there are potential financial returns along with a lot of bureaucratic headaches. Faculty views run the gamut. Some see marketing research as a great source of income, while for others it's a painful, administrative nightmare.

Illustration by Lung-I LoHow has this situation come about? Before 1989, the federal government owned and was responsible for all intellectual property (IP) produced under its sponsorship. However, it wasn't making broad use of the inventions in ways that would benefit the general public. The Bayh-Dole Act of 1980 gave universities the option of retaining rights to products created under federal sponsorship, with universities developing policies to share the derived revenues with the inventors.

Suddenly a new income source appeared in which inventors had a share. Most institutions have tried to apply this policy to all of their inventions regardless of whether the research is federally or privately funded. As a result of a few highly profitable patents (gene splicing and Gatorade, for example), most campuses have created an infrastructure for encouraging research that has commercial applications.

What are we required to do under Bayh-Dole? First, universities must have an agreement with the faculty about how patents will be handled and how royalties will be distributed—in other words, spelling out how faculty get a piece of the action. Secondly, schools must notify the feds about inventions and the status of patents. The feds get use of the patents for free and have the rights to the research if the university doesn't use it (which has never happened). Many states have also enacted laws that can affect what a university can do and how royalties must be distributed.

How do most universities handle intellectual property? They generally use a disclosure form to document a new idea or concept. This form then goes to a university patent committee or to an intellectual property associate for review, to see if the concept is patentable (a new and unique idea not obvious to someone skilled in the art) and potentially salable (meaning that money can be made, allowing for the $10,000 to $30,000 that U.S. patents can cost, more for foreign patents). The inventor participates in the process to ensure the total idea is correctly captured by the patent. Next, the technology transfer or licensing personnel gets involved to try to sell the IP. Again, the inventors must be involved since they know the invention the best and are the most qualified to support its marketing.

Why is it important for us as faculty to participate in intellectual property? First, the feds say we must if we expect to keep our federal contracts. Not only that, many of our industrial partners expect us to provide intellectual property opportunities and support as a part of any research done for them. Intellectual property can also drive economic development by forming and expanding businesses. It is also important to note that many institutions are now recognizing that patents are equal to traditional refereed publication in promotion and tenure decisions. Finally, IP can be profitable for all concerned, and can provide excellent contacts for the inventor for the funding of future research.

Final conclusion: Support intellectual property activities; it is good for you and good for your institution.

John M. Owens is associate dean of engineering at Auburn University.

Engineering Grant Opportunities

NCI/NASA Development of Biomolecular Sensors Program
Amount: Contact sponsor.
Deadline: April 30
Description: To develop biomolecular sensors for Earth and space, including technologies and informatics tools for minimally invasive detection, diagnosis, and management of disease and injury
Contact: Richard Hartmann, (301) 496-8620, e-mail: rh75f@nih.gov, or see http://rcb.nci.nih.gov/
appl/rfp/17016/Table%20of%20Contents.htm

ONR Software Engineering Research Grants
Amount: Contact sponsor.
Deadline: Proposals accepted at any time.
Description: Developing the foundations for the design and construction of complex software systems, including linear logic and related proof systems, software testing, formal algorithm derivation, and formal proof of correctness.
Contact: Ralph Wachter, Program Officer, (703) 696-4304; e-mail: wachter@itd.nrl.navy.mil, or see www.onr.navy.mil/sci_tech/information/onrpgaaj.htm

NSF Nanoscale Science and Engineering Collaborative Grants
Amount: $250,000-$500,000 per year for up to four years
Deadline: Sept. 18
Description: Collaborative research in the area of nanoscale science and engineering, including biosystems, device and system architecture, design tools and software, multiscale, multiphenomena modeling, and societal implications.
Contact: See www.nsf.gov/pubs/2000/nsf00119/nsf00119.txt for information on the appropriate program officer to contact.

Grant profiles are reprinted from GrantSelect, the online version of the Grants Database published by Oryx Press; A one-year subscription to www.grantselect.com costs $1,000. Used with permission from The Oryx Press, 4041 N. Central Ave., Suite 700, Phoenix, AZ 85012; (800) 279-6799; www.oryxpress.com.

Marketplace

by Andrea Tallent

Construction Cost Estimating
Estimating Systems, Inc. (ESI) has released its newest version of PULSAR Construction Cost Estimating Software. Called PULSAR 2001, the software is suitable for military bases and government agencies who use Job Order Contracting (JOC) and SABER (Simplified Acquisition of Base Engineering Requirements) methods for construction delivery. PULSAR uses the R.S. Means Cost Database, which includes over 40,000 construction line items containing labor, material, and equipment costs, adjusted by city, for 715 geographic areas around the country. PULSAR 2001 is the only software that views construction line items in the same format as Means' Unit Price Books.

PULSAR Estimating Software is available for public or private sector use, is GSA approved, and works on Windows 95/98/NT operating systems. Further information on PULSAR Estimating Software can be obtained by calling (800) 967-8572, by visiting www.estimatingsystems.com, or by writing to: PULSAR Estimating Software, P.O. Box 1301, Forestdale, MA 02644.


Prototype “Printer”
Z Corporation, a company that develops, manufactures and markets some of the world's fastest 3D printers, has introduced the Z402 3D Printer. The device produces physical parts from CAD and other digital data, using ink-jet technology to build models layer by layer with a glue binder and powder.
Z Corporation is currently offering an educational package reduced from the regular price of $57,000 to $40,000. To evaluate Z Corporation Printers, see www.zcorp.com/zoupon/education.shtml. You can have the company produce a free physical model of your design.

Z Corporation is also offering to print parts for design contest winners, and the company will provide curriculum support. For more information, call (781) 852-5063 or e-mail: education@zcorp.com.

Product descriptions are based on manufacturers' literature. Endorsement by ASEE is not implied.

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