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Historically, American research universities, responsible for so many groundbreaking discoveries and life-saving innovations, did not provide their professors a direct route to move their work to store shelves, medical offices, and industry. Promising discoveries were introduced in the scholarly press, in hopes of drawing bigger grant awards and perhaps the interest of a company willing to spend the money to convert concept into product. Researchers might, instead, have taken their work off campus, establishing their own companies on the side.

“The majority of inventions or assets that were created were owned by the federal government, which is where most of the [research] funding came from,” says Patrick Jones, the current president of AUTM and director of technology transfer at the University of Arizona. “There was little decision-making happening locally.”

But the Bayh-Dole Act passed in 1980 opened up new avenues by allowing universities to keep discoveries disclosed using federal grants instead of returning them to the government, often to languish. The law brought new incentives to commercialize discoveries, along with bragging rights and, in a few cases, big money. University discoveries have had an impact on everything from health care (the pacemaker from the University of Minnesota, the CAT scan from Georgetown, laser cataract surgery from the University of California-Los Angeles) to better living at home (plexiglass from McGill University, a Kentucky bluegrass hybrid from Rutgers, and even television’s V-Chip from Simon Fraser University).

Among the country’s research universities, Rensselaer is fairly late to the game. The Office of Technology Commercialization, affiliated with the Incubator and Tech Park, became full time in 1996. By then, many university-based offices were up and running and had time to work out some of the questions that are now being raised at Rensselaer.

“I think there have to be a lot more opportunities for intellectual property, particularly at the undergraduate level,” says Swersey, winner of the 2007 Olympus Lifetime of Education Innovative Award for his ideas and commitment to students. He also believes that there are many more money-making opportunities on campus that are not being tapped.

“It’s an impossible thing for any university’s technology transfer office to be aware of all the technologies being made on their campus,” Rancourt says. “We in my office agree that that is the objective we want to accomplish.”

Rensselaer became aware of the significant potential to commercialize its discoveries, particularly in the area of engineering, at around the time the Bayh-Dole Act passed. The Institute launched the country’s first university-based business incubator (in 1980) and the Rensselaer Technology Park into which newly hatched companies could grow.

“Our research centers were being established by then and the Incubator and Tech Park definitely helped RPI in terms of its interdisciplinary vision,” says Rancourt, who came to Rensselaer in 1987 and became director in 1993. “But until the 1990s we didn’t talk about technology transfer or product licensing. We had a part-time office.”

The arrival of President Shirley Ann Jackson in 1999, followed a year later by the unveiling of The Rensselaer Plan, jump-started a serious Institutewide commercialization effort. Kudla, who had spent 20 years in the pharmaceutical industry and also managed intellectual property for the University of Florida and the University of Wisconsin, was hired in 2003 to head the new Office of Intellectual Property, Technology Transfer, and New Ventures, an umbrella to the OTC, the Incubator, and the commercialization efforts. His charge was to implement the part of the plan calling for “the managing, licensing, and the marketing of intellectual property.”

To Market... To Market...

Revenues paid to the Institute are expecetrd to exceed $1 million.Under The Rensselaer Plan, OTC added staff, starting with Associate Director Paul Fredette ’69, who brings extensive industrial background in research and development. Fredette, who earned his Ph.D. in environmental engineering from Rensselaer, oversees technical aspects of the licensing and patents. He works equally with businesses and the Institute, seeing what products are desirable and educating the faculty to think of their work as potentially licensable products. OTC staff also includes seven specialists in licenses and patents, including one each who focuses in physical sciences, life sciences, and software and creative media. The office generally works with outside attorneys to patent protect the new technologies.

A revised Intellectual Property Policy implemented in January 2007 requires faculty to disclose anything they invent that might be of commercial value to the OTC. Kudla says that the staff determines if the idea has sufficient commercial value to make it worthwhile to protect it and, if so, Rensselaer applies for a provisional patent. Once the provisional patent application has been submitted to the U.S. Patent and Trademark Office, the researchers are free to publish their work. A patent itself, assuring rights in the country in which it is filed, can take two or more years to be granted. From there the odds of commercial success narrow: Kudla says about 50 percent of ideas disclosed get patented and about 40 percent of those are licensed.

“Only a small number of the patents that are licensed by a university result in large financial returns to the university,” he says. “Those patents that generate more than a million dollars of income to the university are in the less-than-1-percent category of all the patents that are licensed by the university.” But there are other benefits. “You’ve got researchers who are looking to universities to be active in this regard; it attracts them and also attracts students who want to get involved in research and have an opportunity for their discoveries to be commercialized and change the world.”

But given the amount of effort the process entails, and slim odds of reaping immense rewards, some faculty members are asking the OTC to expedite the work at the start — the research sponsorship stage — and put more effort into a project as its success becomes clearer.

“I’ve been encouraging the OTC to make it as easy as possible for a company to come into the university and look at an idea without first making it seem as though Rensselaer just wants to squeeze them for money,” says John Wen, professor of ECSE and director of the Center for Automation Technologies and Systems (CATS), which just collaborated on a licensing agreement with the OTC. “If you establish a trust with the company, you won’t be giving away the store.”

Wen and his team of researchers are supporting New Jersey-based Thorlabs Inc. in commercializing a novel microscope technology developed at CATS and licensed through OTC. The technology, known as Adaptive Scanning Optical Microscope (ASOM), enables a microscope to view a significantly larger area than previously possible without introducing distortions or sacrificing resolution.

“In this case, the technology had already been developed, and the OTC had a very constructive role to play in securing the transaction with Thorlabs,” says Wen. “The effort they make at this stage offers much more value than any efforts they may make in trying to fine tune or overnegotiate the early stages of research sponsorship.” This is especially true, Wen says, because there is often a sense of urgency on the part of industry when the technology proves itself to the point where a license is being discussed, and the responsiveness of the OTC therefore becomes a key point in satisfying the licensee.

Other suggestions for simplifying the process, including counting commercialization efforts toward tenure review, are also limited under the law, several professors said. Narendran, at the Lighting Research Center, says the researchers might be energized by financial incentives. According to the IP Policy, Rensselaer distributes 35 percent of adjusted royalty income to the inventors and 15 percent to their departments.

Regardless of any modifications, the Institute is experiencing a steady change in the way it conducts business. Among the immediate beneficiaries of OTC are MBA students in O’Connor’s Business Implications of Emerging Technologies course, who get a front-row seat to university commercialization and its complex dynamics. The students, who work with the OTC, view the large, often insurmountable wall between an inspiration and a completed product. Often, students will emerge from a meeting with an inventor excited by a potential breakthrough only to learn that the idea can’t work or has already been done.

“The OTC needs help and a lot of the scientists need help,” O’Connor says. “I would like our students to be those kinds of translators if they go into companies and work in technical management. It’s a very unique skill.”

And some of her colleagues, including Linda Schadler, credit the office with performing a difficult and much-needed task. She maintains that being required to disclose her marketable discoveries has not diverted her from research and teaching.

“I am not going to change the way I work and I don’t believe I’m being asked to,” says Schadler, who collaborated with OTC on the Molecularium and now on commercializing her work with polymer nanocomposites. “But there’s a huge investment that needs to be made by a corporation to move what originates here into a commercial product and I don’t want to start a company. I have zero interest in that.”

And even those critical of the licensing bureaucracy are grateful. Narendran, for one, says his LED process might have gone nowhere had the OTC not propelled him to seek the patents that led in November to the license agreement with Cyberlux Corp.

Through the process of encouraging the disclosure of new invention, and through the patenting, marketing, and commercialization efforts of the researchers in concert with the OTC, a number of companies are now looking at Rensselaer’s technologies and research capabilities. A number of Rensselaer alumni who are involved in the investment community are looking to Rensselaer for new technology commercialization opportunities and applaud the OTC and Incubator efforts, calling Rensselaer an “unfished pond.”

And thanks to the OTC, Mark Wentland is a step closer to his dream. “In the last 37 years I have had many drugs enter the clinic and then fail. And now I’m here again with another chance and I’m absolutely proud,” he says. “The only way academic research collaboration can get a therapeutic into the clinic and approved for human use is to partner with a pharmaceutical company.”

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Rensselaer (ISSN 0898-1442) is published in Spring, Summer, Fall, and Winter by the Office of Strategic Communications and External Relations, Rensselaer Polytechnic Institute, Troy, NY 12180-3590. Opinions expressed in these pages do not necessarily reflect the views of the editors or the policies of the Institute. ©2007 Rensselaer Polytechnic Institute.