U.Va. Patent Foundation
upgrades operations to better serve faculty inventors and commercial
By Charlotte Crystal
Jagger worried about the number of health care workers who, in the
age of AIDS, were accidentally sticking themselves with needles.
Paul Allaire was troubled by the thousands of people who died waiting
for heart transplants. Dick Guerrant wondered how certain intestinal
parasites killed children in Brazil.
satisfied simply with conducting research into these distressing
subjects, the U.Va. faculty members took the next step, inventing
medicines or medical devices to help solve the problems their research
revealed. Although not every field lends itself to this kind of
activity, many do, especially in the era of computer software applications.
And the mission of the University's Patent Foundation is to help
faculty members identify promising technologies, secure patent protection,
and seek corporate partners interested in bringing them to the marketplace.
are here to help faculty members recognize potential patents and
to bring them to the marketplace in win-win-win deals," says
Robert MacWright, Patent Foundation executive director. "The
business that licenses the technology profits, the inventor profits,
and the University profits by earning funds that will go to support
further research. Consumers also profit by having access to new
processes and services based on U.Va. technologies."
need for the U.Va. Patent Foundation has grown dramatically in recent
years. While it handled only 39 "disclosures" in 1989,
the Patent Foundation managed 155 as of June 30 -- an increase of
nearly 400 percent. Along with disclosures -- the first step in
patenting technology, which involves writing a short description
of the invention and explaining how it differs from existing technology
-- the number of U.S. patents awarded to U.Va. inventors also has
risen over time, from three in 1989 to 23 in fiscal year 1999, an
increase of nearly 800 percent.
business of home runs
as with other university technology transfer offices, the U.Va.
Patent Foundation depends on a very small number of inventions for
its revenues. According to MacWright, one patent supplies about
70 percent of the foundationÕs current income.
is a business of home runs," MacWright says. "The financially
successful technology transfer operations have a handful of technologies
that provide most of the revenues."
current home run is Adenocard, a pharmaceutical used in treating
patients with a rapid, irregular heartbeat. Created by Robert M.
Berne, a professor emeritus of physiology, and Luiz Belardinelli,
now with CV Therapeutics in Palo Alto, Calif., Adenocard was first
patented in 1982, with a subsequent patent awarded in 1987. When
Adenocard's patent protection expires in 2004, MacWright expects
income from the license to end. The push is on to find the big hits
of the future.
hired to expand operations
Patent Foundation's board of directors hired MacWright as executive
director in October 1997 to upgrade and expand operations. Previously
a biotechnology patent attorney in private practice in New York,
MacWright served as an associate attorney in the intellectual property
departments of the New York City law firms of Skadden, Arps, Slate,
Meagher & Flom and Kenyon & Kenyon. Before entering the legal field,
MacWright earned a joint doctorate in biochemistry from Rutgers
University and the University of Medicine and Dentistry of New Jersey.
He served as assistant director of the Rutgers University Office
of Corporate and Industrial Research Services, beginning in 1985,
and was promoted to director of the reorganized Office of Corporate
Liaison and Technology Transfer two years later.
his arrival at U.Va., MacWright has overseen the renovation and
expansion of the Patent Foundation's suite of offices in the Blake
Building on West Main Street. Business operations have been upgraded,
and a modern computer system and updated software have been installed,
making it easier to track the cases flowing through the office.
MacWright has hired a new staff of more than a dozen people, in
particular, seeking licensing associates with strong backgrounds
in both science and commerce. He also has brought in two experienced
patent attorneys with scientific backgrounds and a paralegal experienced
in patent law to hold down outside legal costs. (On average, it
costs about $20,000 to patent an invention using outside lawyers.)
is on outreach
most of the necessary infrastructure now in place, MacWright recently
has turned his attention to outreach -- to the community of potential
University inventors, to area business representatives who might
be interested in commercializing U.Va. intellectual property, to
U.Va. law students interested in hands-on experience with patent
law, and to technology transfer officials at other Virginia universities.
Patent Foundation's first priority is encouraging as many faculty
members as possible to send in disclosures, to start the process
of technological and commercial assessment, provisional legal protection,
and ultimately regular patent protection.
as the Patent Foundation's licensing associates build relationships
with industry representatives around the world, MacWright is working
to raise his office's profile with nearby businesses. Whenever possible,
he prefers to work with Virginia companies -- and faculty start-up
firms -- to promote local economic development.
the educational front, the Patent Foundation has conducted a Patent
and Licensing Law Clinic in conjunction with the U.Va. Law School
and made summer internship opportunities available to law students,
a collaboration MacWright hopes to expand. He also wants to promote
cooperation among the various technology transfer offices at other
can work together toward everyone's success," he says.
its founding, the University of Virginia Patent Foundation has funneled
more than $17.5 million into the University's coffers, all of it
earmarked for research. In 1997-98, the Patent Foundation received
more than $3 million in royalties and other fees, paying nearly
$800,000 to faculty inventors and nearly $1.7 million to the University,
according to Patent Foundation and U.Va. officials. The Patent Foundation
keeps about 40 percent of the total income to cover the cost of
services it provides to inventors -- assessing the potential commercial
value of the invention, filing for preliminary and regular patent
protection, licensing the technology to industry and if necessary,
defending the patents in court.
the Patent Foundation is not the University's largest source of
research funds -- its contribution stands well behind grants obtained
by faculty members from federal and corporate sources -- it helps
keep the research machinery at U.Va. well-oiled.
coming through the Patent Foundation are divided up among the inventor's
laboratory, the school in which the inventor performed the research
and the Scholarly Activities Fund, which I administer," says
Gene D. Block, vice president for research and public service. "Funds
provided by the foundation have had a major impact on the acquisition
of instrumentation for major initiatives, such as structural biology
research in the School of Medicine. Royalty income also provides
support for laboratories that have experienced a temporary lapse
in grant funding and is used to match federal grants provided by
agencies such as the National Science Foundation."
U.Va., MacWright appreciates both sides of the patenting business:
the academic -- the long, painstaking struggle of the research laboratory
and the excitement of discovery, and the commercial -- the fast-moving,
aggressively competitive world of the marketplace. He worries about
satisfying customers among faculty inventors and commercial enterprises.
But MacWright believes that his revamped office and new team are
up to the task: "We are working on tomorrowÕs technology today."
Patent Foundation was organized as a not-for-profit corporation
called the University of Virginia Alumni Patents Foundation in 1977.
The name was changed in 1993 to the University of Virginia Patent
the passage of the Bayh-Dole Act in 1980, enabling universities,
non-profit research institutes and small businesses to patent and
own inventions developed under federally funded research programs,
more than 200 U.S. universities have formed technology transfer
offices to help move inventions out of the ivory tower and into
the marketplace. Their economic impact has been considerable. According
to the Association of University Technology Managers (AUTM), university
technology generated nearly $700 million in royalties in fiscal
year 1997 with academic licensing responsible for nearly 246,000
jobs and $29 billion of economic activity over the past 20 years.
are seven technology transfer offices at Virginia institutions of
higher education: at the College of William & Mary, George Mason
University, Norfolk State University, Old Dominion University, Virginia
Commonwealth University and Virginia Tech, as well as U.Va.
Royalty Distribution for Inventions
Royalty Distribution Schedule by percentage
(as of April 1, 1997):