Robert Fincher is director of UGA’s technology commercialization office. Columns sat down with him to find out how the patenting and commercialization process works and why the university benefits from marketing its intellectual property.
Columns: What does the Technology Commercialization Office do?
Fincher: We commercialize inventions made by UGA faculty and research staff. We receive invention disclosures and evaluate them for potential patent or copyright protection and for marketing and licensing potential. Most are technologies that could be patented. Software accounts for most of our copyright works.
Filing a U.S. patent application could easily cost $10,000 to $15,000. By the time the patent issues in the U.S., it may cost a total of $20,000 or more. The U.S. Patent and Trademark Office may not examine the application until a year after application, and it may take three to five years for that office to award a patent. Another consideration is that within 12 months of filing a U.S. patent application, we also have to decide whether to apply for an international patent.
Filing patent applications in numerous countries is very expensive, and we don’t undertake that expense unless we have licensed the technology to a company who is reimbursing the UGA Research Foundation.
Columns: How does the commercialization process work?
Fincher: After the patent protection process begins, we do research to match companies with technologies we’re seeking to commercialize. We may contact 20 or more companies and provide them with a non-confidential description of the technology. If a company is interested, we will enter into a confidentiality agreement and disclose more information for their assessment. Then we negotiate for a commercial license that pays a royalty and fees to the UGA Research Foundation. Most technologies are licensed exclusively to one company.
Columns: Who actually owns rights to intellectual property?
Fincher: The Board of Regents of the University System of Georgia, which has an agreement that grants UGARF the responsibility and obligation to obtain intellectual property protection and commercialize these inventions. UGARF takes title to the intellectual property and is the assignee of the patent. A patent lists the inventors and it may also list an assignee, who is the actual owner.
Columns: How long have universities been patenting and licensing intellectual property?
Fincher: The federal government, which is the largest funder of university research nationwide, determined 25 years ago that it had this inventory of all these patents that weren’t being commercialized. The Bayh-Dole Act, passed in 1980, makes it possible for the federal government to assign its patent rights to universities, and we then have the obligation to pursue intellectual property protection and commercialization. Prior to Bayh-Dole only a handful of universities had technology commercialization offices.
Columns: Why should faculty bother to protect their intellectual property?
Fincher: There’s a great incentive because the company pays to the UGA Research Foundation a combination of fees and royalties on sales of the product. That income is distributed according to the UGA Intellectual Property Policy:
25 percent to the inventor(s); 10 percent to that researcher’s research account; another 10 percent to their college to be used for research. The remaining 55 percent stays with the Research Foundation, where it’s distributed for a number of purposes in support of research – such as start-up funds for new faculty.
Patenting and granting exclusive licenses to companies are also the best way to get inventions put to use in the public. Before the Bayh-Dole legislation, the government had hundreds of patents, but they would not issue exclusive licenses. Most companies are not going to invest in further development of a technology unless they have exclusivity. With Bayh-Dole, we’re able to grant exclusive licenses.
Columns: So what if UGA decides not to pursue patenting?
Fincher: If the invention was made from federally funded research we inform the federal agency that funded the research and that agency can elect to retake title to the patent. In most cases they decline, which means we will offer to assign the patent rights back to the inventors.
Columns: What happens if a company loses interest?
Fincher: There are requirements in our licenses that the company must indicate its timeline for the development and introduction of a product based on our technology. If it fails to make a reasonable effort to meet the timeline, the license can be terminated and we can license the technology to another company. We don’t want a company to be able to license a technology and put it on a shelf in order to keep somebody else from using it. Our first mission is to get technology transferred into the commercial sector, where the public then benefits from it-a new vaccine, a new diagnostic for an animal disease, the list goes on.
Columns: How many license agreements and disclosures do you receive?
Fincher: We enter into 50 to 60 license agreements each year. We’ve been receiving about 100 invention disclosures per year, essentially two per week. Our goal is to increase that number by making faculty aware of the opportunity to commercialize their inventions.
