Those who believe that professors just teach classes and then go home overlook the behind-the-scenes work that often times leads to six-figure payoffs-collaboration with commercial research companies.
Formed in the early '90s, Duke's Office of Science and Technology serves as a guide for professors traveling through the complex patenting and licensing processes. With a little luck and some help from this office, Duke researchers can turn patenting dreams into marketing realities.
"People work in their labs, and if they have patentable inventions, they notify us," said Bob Taber, director of the office. If a proposal is approved, the office then becomes involved with the expensive process of securing a patent, which often costs as much as $25,000. The biggest expense is typically outside attorneys, who must be hired to present before the U.S. Patent and Trademark Office.
Each year, the office plays a role in approximately 40 patent approvals. Of those innovations patented, some may later be licensed by commercial companies, leading to payoffs for the various parties involved.
Andrea Amalfitano, an assistant professor in the divisions of medical genetics and pediatrics, has collaborated with the office, securing patents for his work developing techniques to deliver genes into humans.
Amalfitano believes that the Office of Science and Technology is a critical part of the process. "I don't want to waste my time dealing with issues that they have to-I'm just interested in the science," he said. "They will bend over backwards to make sure you feel like you're not slowed down."
Nonetheless, Professor of Chemistry Michael Purring said that while his involvement in the patenting and marketing process has been helpful, he would like the office to be more aggressive in its case-taking. "The only complaint that I have ever had with the process is that the Office of Science and Technology is pretty conservative about what they will patent," he said.
On one occasion, Pirrung attempted to have a patent secured for one of his DNA-related innovations. The office, he said, was reluctant to proceed because of the large expenses that are incurred-especially, Pirrung said, "if they are not sure they will get money back from licensing."
When the office decided not to go ahead with the process, Pirrung said he would pay money out of his own pocket to procure a patent. When the office eventually agreed to go ahead with the process, it not only got patented but licensed as well-creating a big payback.
"I understand they have to be conservative with their resources," he said. "But my judgment about this was the right one, I think."
While the stakes are high, as the Office of Science and Technology and the scientists realize, so is the payoff. One of Pirrung's licensed patents produced an up-front royalty that was six figures.
For the first $500,000 in royalties, the investigator receives 50 percent, the investigator's lab 10 percent, the investigator's department gets 10 percent, and the University receives 30 percent.
But, as profits increase, the investigator's percentage decreases. When the payoff is over $2 million, for example, the investigator receives 25 percent of the royalties.
Kenneth Porter, an associate director at the office, said that the hardest part of the process is often finding a potential licensee-thereby making the remainder of the office's work pay off.
After securing backing, Porter said, the office must work to convince the U.S. patent office examiner of the uniqueness of the invention. This often requires a long period of review, with attorneys, businessmen, scientific experts and the inventor herself responding to concerns over the technology.
With the clock ticking, and business and academia becoming involved in a complex and often times unclear relationship, the patent and marketing process continues to move slowly and surely-despite roadblocks along the way.
"Whenever universities move on untested ground, there are difficulties. The pace and rules of business and the pace and rules of universities are very difficult to resolve in a satisfactory way," Rittschof said.
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