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Robert MacWright

U.Va. Patent Foundation upgrades operations to better serve faculty inventors and commercial clients

By Charlotte Crystal

Janine 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.

Not 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.

"We 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."

The 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.

A business of home runs

Still, 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.

"This 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."

U.Va.'s 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.

MacWright hired to expand operations

The 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.

Since 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.)

Focus is on outreach

With 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.

The 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.

Even 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.

On 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 Virginia universities.

"We can work together toward everyone's success," he says.

Royalties for research

Since 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.

While 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.

"Funds 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."

At 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."

Patenting university research

The 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 Foundation.

Since 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.

There 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.