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Stumble It!Ron Barrett-Gonzalez KU associate professor of aerospace engineering knows firsthand just how enriching receiving a patent for an invention can be for a college student.
He was a graduate student at the University of Maryland working toward his master’s degree when he received his first patent.
The patent protects his “method and apparatus for structural, actuation and sensing in a desired direction”. Simply put, Barrett-Gonzalez produced an invention that consisted of a twisted rotor blade that would reduce vibrations in airplane wings and missile fins.
“Sweetheart, we’re going out to eat tonight,” Barrett-Gonzalez said to his wife after receiving a check for $27,000 from his first patent royalty.
Officials at the University of Kansas also know how enriching patents can be.
Halfway through its 2008 fiscal year, the KU Office of Technology Transfer and Intellectual Property in the Center for Research has already met and exceeded the $570,000 in revenues that it made in the 2007 fiscal year. According to KU’s Office of Technology Transfer and Intellectual Property the number of patents filed and issued at both the KU Lawrence campus and the University of Kansas Medical Center showed increases and decreases during the past five years.
In its 2006 fiscal year the office brought in only $340,000. The revenues brought in are from licensed patents and copyrighted technologies.
In its 2005 fiscal year the office had a company buy out rights to a drug patent for $5.4 million. The patent was for Cyclodextrin, a compound that makes water-insoluble drugs into water-soluble drugs. The revenue from this patent during the previous years ranged from $500,000 to $1,000,000.
KU Technology Transfer director James Baxendale said the number of patents at KU had increased in the past five years by about 30 to 50 percent each year. The number of active patents increased on both KU’s Lawrence campus and at the KU Med Center during the past fiscal year. On the Lawrence campus in the 2006 fiscal year, researchers filed 22 patents, increasing in the 2007 fiscal year to 38. At the Med Center in the 2006 fiscal year, researchers filed six patents and these increased in the 2007 fiscal year to 10.
Jim Baxendale, Director of Technology Transfer
The actual number of patents issued during the past five years has also seen increases and decreases on both KU campuses. Patents issued on the Lawrence campus were 12 in 2003, 16 in 2004, 11 in 2005, 11 in 2006 and five in 2007. The Med Center has seen a decrease in its number of patents actually issued during the past five years. Patents issued at the Med Center were eight in 2003, six in 2004, three in 2005, two in 2006 and only one in 2007.
Baxendale said that active licenses have increased as well. He said in 2006 on the Lawrence campus there were 40 licenses that increased in 2007 to 43 active licenses. At the Med Center in 2006 there were 36 licenses that increased to 38 active licenses in 2007.
Andrew Torrance associate professor of law, teaches classes about intellectual property and patent law. He explained that there to receive a patent a researcher must meet certain requirements. Torrance said the invention or method must be novel, meaning that it is literally new. It must also be nonobvious, meaning significantly different. The invention must be fully described in words and diagrams and also must be useful and commercially viable.
“Without patents there would be fewer inventions that come out of universities,” Torrance said about inventions that could be commercially viable.
Torrance said if the companies that buy licenses to KU’s patents are successful, it will benefit the University, the inventor’s department and the KU Research and Graduate Studies programs. He said that the royalties collected from licenses to KU’s patents must be split in thirds among the inventor, the inventor’s department and KU Research and Graduate Studies.
Mark Fisher KU associate professor of biochemistry and molecular biology at the School of Medicine also knows the benefits of receiving a patent. His patent is on the Chaperonin/Osmolyte Protein Folding System, which provides a process of folding proteins to their correct structure.
He said that the protein-folding system is highly valuable to the pharmaceutical industry. Fisher said the estimated worth of the protein-folding system in the market was $20 million to $50 million and that this number could increase if the method could be demonstrated to show it could be used in a broader sense.
As a result of Fisher’s patented method, he has received private funds of $75,000 from KTEC and an NIH Grant of $100,000 for more research. He said he is also applying for $800,000 for more research. Fisher said an East Coast company wants to open up companies in Kansas using his method.
Baxendale said that generally the departments related to pharmaceutical sciences bring in the most money as well as the greatest number of patents. He also said that probably the most successful person on campus with patents would be Valentino Stella, in the pharmaceutical chemistry department who has been involved with three start-ups.
However, Baxendale said that just because there was an increase in the number of patents did not always mean there was an increase in revenue. He said revenue depended on the delay it took for a patent to make it to the market. Baxendale said that about 60 percent of inventions involved drug development, which could take up to ten years to hit the market and then KU would receive royalties if the invention even made it to the market.
“Start with 10,000 worldwide different compound inventions and only one will make it to the market and it is very costly,” Baxendale said.
Baxendale said his office’s plan is to continue to support the inventions that come out of KU’s faculty and students. He said KU will continue to recruit faculty to increase its research.
Barrett-Gonzalez said he brings in revenue to KU indirectly, but this is not considered royalty money but rather follow-on research. He said currently he has two projects in progress that bring in just under $500,000 to KU.
Barrett-Gonzalez now has three of his own patents and three pending patents but only one pending patent is through KU. He has earned patent royalties in the six figures. Barrett-Gonzalez said that he encouraged his undergraduate and graduate students to protect their own ideas by filing for patents.
“I look forward to many more patents coming from our students,” Barrett-Gonzalez said.
