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Who owns University of Utah professors' inventions?

Published May 28, 2013 10:29 am

Proposed changes could enrich faculty, give school ownership.
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In five years, doctors could be using a powerful glue inspired by an ocean-dwelling worm to perform fetal surgery on babies with birth defects.

The concept comes from University of Utah bioengineer Russell Stewart, who studied a secretion the sandcastle worm uses to cement together a home from bits of sand and shell.

The glue that binds in wet environments could be ideal for in-utero surgeries.

"Amniotic membranes get damaged and don't heal," Stewart said. "If we could solve that problem … [it would] make more procedures in the uterus possible."

His invention, now in the pre-clinical trials stage, was licensed by the U. to an undisclosed large medical device company two years ago — one of 81 licenses executed by the school that brought in about $37 million in revenue, according to the Association of University Technology Managers.

On Tuesday U. trustees will consider changes to the rules governing U. faculty inventions. The revisions could give more royalty money to inventors while bringing more of their ideas under school ownership.

The changes, approved by the school's Academic Senate earlier this month, came about after a 2011 U.S. Supreme Court decision that "dramatically changed the landscape of patent ownership," according to a U. memo. The case centered on a professor who created a test to measure the amount of HIV in a patient's blood while conducting research at a drug company, according to a New York Times report. His idea was used to create a testing kit now widely used in hospitals and clinics. Stanford sued, saying the professor's ideas belonged to the school by contract, but the Supreme Court sided with the drug company because its contract was more precise.

The U.'s policy was similarly fuzzy, according to Glenn Prestwich, a U. biochemistry professor who helped write the proposed revisions.

"It was very ambiguous as to what constituted an invention by the faculty and what didn't," he said. Under the proposed changes, the U. would claim faculty members' ideas within their area of expertise at the school, whether those ideas are conceived in a laboratory or on a beach vacation.

The location "work-around has been used, and it's not really consistent with the way it should be," he told the Academic Senate.

Under the changes, "anything you do in your area is owned by the U.," said Bryan Ritchie, the director of the U. Technology Commercialization Office.

Inventions made outside a professor's field are different. If a chemist invents a better lawnmower, for example, the concept doesn't automatically belong to the U.

The proposed new policy also gives inventors a greater share of the profits made off their ideas. Rather than getting 40 percent of the first $20,000 in royalties, a faculty member could get 40 percent of the first $100,000 — a potential bump of $32,000. It's not yet clear whether that change would be retroactive.

Very few U. inventions make that much money, according to Ritchie. Still, the extra cash is a substantial carrot.

"It's the potential for a really big win that keeps people coming back," Prestwich said. Still, "the whole goal of commercialization is not really about making money, it's about putting [the idea] out there so it makes an impact."

The new policy is also designed to make it easier for professors to declare their inventions and find out which ones the university wants to market.

"It's always a conflict-laden situation," said Prestwich. Researchers can feel like filling out declaration forms is a load of unnecessary paperwork rewarded with frustration when the idea "disappear[s] into a black hole."

The U. has three years to develop an idea. Under the proposed revisions, that would change to "reasonable length of time," a metric designed to change depending on the invention, Prestwich said. A software concept could be stale in a week, while a pharmaceutical breakthrough could stay cutting-edge for years. Timing is important because if the U. doesn't bite, inventors could sell the idea themselves.

The new policy also increases the number of days that faculty members can do consulting work from two days to four.

The proposed changes "put the university in a strong position," said Ritchie. "The university is walking a fine line — it wants to maximize the value to the university at the same time it wants to protect the faculty member."

lwhitehurst@sltrib.com Twitter: @lwhitehurst






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