The Business of Science

The Office of Intellectual Property Administration – motto ‘Where business meets science at UCLA’ – is where technologies developed by UCLA researchers are patented, marketed and licensed to industry. Heading it up is vice provost Kathryn Atchison who says that the job is ‘pretty much like running a matchmaking service’. She explains why to Edward Fennell.

Universities are powerhouses of innovative thinking – so university authorities are sitting on a virtual goldmine of IP. But managing IP in an academic environment is much more complex than in the corporate world. As Kathryn Atchison, vice provost for IP and Industrial Relations at UCLA and head of OIPA (The Office of Intellectual Property Administration), acknowledges, some of the gifted researchers on her campus will use their academic freedom simply to publish their discoveries via academic journals. It is their privilege. After all, as the first principle of the university’s code for partnering with industry states: ‘The most fundamental tenet of the university is the freedom to interpret and publish or otherwise disseminate research results in order to support the transfer of knowledge to others and maintain an open academic environment that fosters intellectual creativity.’

Yet, notwithstanding this commitment to the ‘open academic environment’, the commercialising of UCLA’s research findings and its sponsored research is of huge financial significance to the university. ‘The scope is huge,’ says Kathryn, who took over her current role with OIPA earlier this year. ‘We are talking about $800 million per year in funded research at UCLA.’

As a result, OIPA is now recognised as having a key function within the university and has recently been granted more resources and staff – especially people qualified in business development and IP management. Kathryn, who herself qualified as a dentist before switching into health research, now includes in her team six licensing officers plus a similar number of specialist IP attorneys. She also regularly calls on a number of local specialist law firms to help carry the strenuous workload. ‘There is so much going on we can’t do it all ourselves,’ she explains.

One of the biggest stresses is the constant flow of business suitors contacting her department seeking tie-ups with academics to undertake commissioned research. At the same time Kathryn and her colleagues are also keeping tabs on the work being done out in the laboratories, looking out for work which could have a commercial application. Putting researchers and investors together is a matter of personal chemistry as well as hard science – or in Kathryn’s words: ‘It’s like being a matchmaker.’

No more ivory tower
In fact, the whole process of commercialisation is a relatively recent development. Until the 1980s, American universities focused primarily on basic sciences. ‘Historically there was an ivory tower atmosphere which favoured pure science and in which applied science was the stepchild,’ describes Kathryn. Federal legislation, however, prompted change and led to the establishment of a sophisticated apparatus for securing IP Rights and marketing those to business partners.

As it happens, UCLA was not the quickest off the mark. ‘While UCLA is among the top five universities in the nation for the amount of research funding it receives, the university’s progress in technology transfer, moving creative ideas from the lab to the marketplace, was lagging until recent years,’ reported the newsletter UCLA Today in June 2003.

Yet, it would be a mistake to dismiss UCLA’s record. For example, as Kathryn points out, the nicotine patch was disclosed by UCLA in 1984 and in the 2004 financial year it was still bringing in over a million dollars to the university’s coffers. Meanwhile the treatment of intercranial aneurysms, first disclosed in 1989, clocked up a massive $8 million last year.

The range of OIPA's contacts is enormous but, as you might expect, the Internet now plays a major role in linking researchers to investors.

The process
For inventors starting out on this journey (2,500 have worked with OIPA), the first step has normally been to file an ‘invention report’ which represents a preliminary statement of where they think a patent registration could be made. Based on the presumption of ‘prior art’ (the expectation that this invention is really new and unique) provisional application for protection is then made. This gives one year of grace for further investigation and also for the marketing teams to start scouring the business world for possible partners.

The range of OIPA’s contacts is enormous but, as you might expect, the Internet now plays a major role in linking researchers to investors. The section of OIPA’s website titled ‘Inventions Available for Licensing’ – covering Life Sciences, Medical, Physical Science and Engineering – means that potential investors are spoiled for choice. ‘It’s difficult to quantify the number of companies we work with at any one time,’ says Kathryn. ‘But we market to hundreds, exchange non-confidential and confidential information with a subset of those, and eventually license to a smaller group. As of the 2005 financial year we had active licences with 33 companies.’

Complications?
A key issue on the legal front is whether the research has had external funding. Sometimes the inventions date back years and the scientists or technologists who undertook the work may no longer be with the university. But the legal authority to negotiate the deals lies with the university, so it is important to go back into the files and clarify as soon as possible whether there was any funding or shared ownership of the work.

In terms of protecting the university’s rights, Kathryn’s policy is that ‘The best protection is through prevention.’ The university is committed to making strong patent applications which effectively wrap up the relevant area. OIPA only ever shares data as part of a confidentiality arrangement and when developing licence agreements the due diligence process will define the terms of use. And when it comes to possible infringement, the OIPA team knows that their academic colleagues are effectively their ‘eyes and ears’ in the field looking out for any possible abuse.

Ironically, perhaps, when ‘grey areas’ do appear they are often with faculty members themselves, many of whom operate their own research companies in parallel with their academic work. As Kathryn points out, however, her membership of the Conflicts of Interest Committee at a previous stage in her career means she is ideally placed to be sensitive to these issues.

OIPA is deeply aware that it must strike the right balance between the financial good of the university, the legitimate interests of staff and the value to students (in career terms) of working on these projects. Plus, pre-eminently, there is the wider responsibility, as a university, to society at large.

Nonetheless, Kathryn is in no doubt that the commercialisation of UCLA’s IP is of vital importance to the future of the university. ‘It is now a critical element of the academic mission,’ she says.

For more information visit about OIPA www.research.ucla.edu/oipa

This article first appeared in IP Review, issue 12

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