Soapbox Science

Two Towers, Two IP Stories

Chad Haney is a scientist at the University of Chicago. He earned his Ph.D in Bioengineering at the University of Illinois at Chicago. As a graduate student he started out researching artificial blood. He did his postdoctoral work at the University of Chicago, learning medical imaging and cancer biology.  He now uses many medical imaging techniques to assess response to therapy in cancer research.

A lot of people can tell you exactly what they were doing on historic dates, like September 11, 2001. Some can even tell you what they were thinking. I can tell you that I was thinking about intellectual property (IP) on September 11, 2001. While the news was focused on trying to understand what was happening with the twin towers, I was meeting people from the Technology Transfer Office (TTO) at the University of Illinois at Chicago. I was talking to the TTO people and filling out the necessary paperwork to disclose (claim) the work in my Ph.D. thesis.

The No Patent Story:

Most people know what IP is. For those that do not know, IP can be inventions, processes, unique materials/compounds, copyrightable work, trademarks, and the physical embodiments of intellectual effort. One thing students may not know is that, in the majority of cases, the university has the rights to the intellectual property developed during your studies. Of course there are exceptions when there are licensing agreements with some funding agencies and industry sponsored research. Also, if one can prove that the work did not benefit from any resources at the university, including salary, then you may have a case where the university cannot claim the rights to the intellectual property. This was not the case with my thesis research.

Spoiler alert, I did not get a patent for my work and therefore am not filthy rich. There are several reasons why there was no patent for my thesis work. I developed a blood substitute, or in the parlance of the field, a hemoglobin based oxygen carrier. The most important reason there was no patent for my work was that it did not work [1]. At least it would not have worked in humans. It could be a fantastic research tool, but not the panacea for emergency medicine. It would be unlikely to find a licensing partner for it and that usually makes the university less interested in financing a patent application. The idea for the chemistry was from my co-advisor, who had left the university by the time I was writing my thesis. He was clearly not interested in patenting the work. Finally, at least for most foreign patents, it was already publicly disclosed at the 2000 Shock conference [2] which voids most foreign patents. In the end, I was able to publish my work, after agreeing to a one year delay, and I received my Ph.D.

IP Successfully Transferred:

In the lobby of the Center for Advance Molecular Imaging (CAMI) at Northwestern University, you will notice that the molecular structure for pregabalin is depicted in the tile work. CAMI is part of the Chemistry of Life Processes Institute in Silverman Hall on the Evanston campus. Dr. Richard Silverman, the John Evans Professor of Chemistry, invented pregabalin, which is marketed under the name Lyrica by Pfizer. In 2007, Royalty Pharma, a company that acquires intellectual property like a brokerage, paid $700 million for a large piece of Northwestern’s royalty interest in pergabalin. Lyrica is most notably approved for fibromyalgia, a chronic pain disorder. The building, Silverman Hall, was constructed using $100 million, funded in part from a generous donation from Dr. Silverman’s royalties. You should probably note that each university has its own policy for revenue sharing. In my opinion, this is a huge success story for IP transfer in an academic setting.

Clearly income, recognition, and prestige are benefits of IP. However, there are downsides such as delaying publication for fear of disclosing your work prior to patenting. Patent envy can be a distraction. I have experienced professors trying to patent technology that would be better suited to early publication, in part due to envy of another colleague’s successful patent application. Misguided greed can cause people to hide information or attempt to take technology from “competing” labs. Are these impediments to the openness of research? On balancing IP protection with the need to maintain public access: “what has been the impact of IP and technology transfer activities on the direction of research? Quantitative studies tend to show that patenting has led universities to conduct more applied research.

By making university research more responsive to the economy, is there a danger that basic research will suffer? On the one hand, several studies in the United States have found that universities and individual researchers that have seen the largest increases in patenting are also those which experienced the greatest gains in academic publications. On the other hand, the rate at which academic patents are cited in other patents fell (relative to the average) between the early 1980s and late 1990s in the United States and is now lower than the citation rate of patents granted to business. This could suggest a possible drop in the quality of public research – or at least of its patented component. Alternatively, it may reflect the inexperience of newly founded technology transfer offices[3]. The National Institutes of Health (NIH) requires that the results from their funding should be made available to the public and inventions from that effort are covered by the provisions of the Bayh-Dole Act of 1980. Basically, the NIH allows universities to engage in technology transfer agreements as long as there is still free competition i.e. future research is not encumbered[4].

In conclusion, it is becoming more common for students and junior faculty to be aware of IP and to work with TTO at their institutions. The more you know about IP, the better chance you have of successfully navigating from idea to technology transfer and revenue sharing. Also, the TTO can help you protect yours and the university’s IP while still fulfilling the goals of academic research.

The views expressed in this essay are those of the author and do not necessarily represent those of his employer (past or present).

References

1. Haney, C.R., P.W. Buehler, and A. Gulati, Synthesis and characterization of a novel DTPA polymerized hemoglobin based oxygen carrier. Biochim Biophys Acta, 2005. 1725(3): p. 358-69.

2. Haney, C.R., et al. Polymerization of albumin does not improve its resuscitative actions following hemorrhagic shock, when compared to non-polymerized albumin. in 23rd Annual Conference on Shock. 2000. Snowbird, UT.

3. Mario Cervantes, Academic Patenting: How universities and public research organizations are using their intellectual property to boost research and spur innovative start-ups. http://www.wipo.int/sme/en/documents/academic_patenting.html 4. http://grants.nih.gov/grants/policy/nihgps_2011/nihgps_ch8.htm

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