8A = THE UNIVERSITY DAILY KANSAN
INVENTIONS
FRIDAY,MAY2,2003
Perfecting Patent Policy
A change in University policy means less profits for professors
Story by Amy Potter apotter@kansan.com Kansan staff writer Graphics by Donovan Atkinson
Funding for further research $333
Under the change, inventors would get one third of the overall revenue generated by the University. The second third would go toward the administrative cost of the patents.The final third of the money would go toward the department.A third of the revenue that would go toward the department would then be given back to the inventor for future research.
In 30 years, Valentino Stella has accumulated 27 patents from his research at the University of Kansas. The distinguished professor of pharmaceutical chemistry has two patents that are generating what he terms as "not an insignificant" amount of money for the University and himself. His money making patents are for antiseizure drugs licensed out to pharmaceutical companies.
If the University General Council approves a proposed policy change, less money will go into the hands of inventors like Stella and more money will go to their departments.
The idea for the change in policy came after comparing KU to its peer institutions where researchers receive less of a percentage of the patent money. The decision to change the policy will be reviewed by the provost and then forwarded to the faculty senate execu-
Currently, Stella receives 50 percent of all royalties the University receives.
rded to the faculty senate executive committee. There is no specific date as to when this will happen, said Arjun Sanga, corporate counsel for the KU Center for Research, Inc.
The University's current practice is to give inventors 50 percent of the revenue generated from royalties they receive from a patent. The new policy will give researchers only a
third of the revenue. They will receive additional money from the departments to further their research.
Some professors have mixed feelings about the policy.
George Wilson, distinguished professor of chemistry, has a patent on a glucose monitor. He supports the policy change, but he doesn't understand why the departments need additional funding.
"There needs to be adequate support for pursuit of technology transfer. I really don't see why the department should get the
Stella said the new policy would take away some of the incentive for researchers. He admitted he benefited personally from the 50 percent.
money in most cases," Wilson said.
"I would like to have seen it stay at 50 percent," Stella said. "I'm not angry, it's not an unfair policy."
Stella's patents generated about $600,000
last year,
said Jim
Baxendale,
executive
director of
technology transfer and intellectual property at The University of Kansas Medical Center Research Institute, Inc.
revenue generated by the University. The second third would go toward the administrative cost of the patents. The final third of the money would go toward the department. A third of the revenue that would go toward the department would then be given back to the inventor for future research.
Under the change, inventors would get one third of the overall
Sanga is a member of the chancellor's task force on technology transfer. The task force looked at peer institutions and found the percentage of revenue KU inventors received was much higher than other universities.
"You're not going to be building new buildings or driving fleets of Cadillacs with the average invention."
"It's very uncommon for researchers to get up to 50 percent of the revenue," Sanga said.
This left the task force asking the question: why has KU been giving its researchers sometimes double what other institutions give?
"We're required by the regents policy to give a minimum of 25 percent. But 50 percent has been the practice," said Baxendale. "I don't know what happened many years ago but there is no good answer for that."
Lester Mitscher Professor of chemistry
The University of Kansas received a little more than $1 million in revenue from patents last year. That gave KU inventors $500,000.
Patent revenue at KU can range as high as $600,000 to as low as $1,000, Baxendale said.
According to the U.S. Patent and Trademark Office, KU was granted nine patents in 2001, five patents in 2000 and 11 patents in 1999.
KU doesn't get paid every time a researcher is granted a patent. Most inventions are rarely licensed out and small inventions —which the University produces the most— rarely generate money, said Charles Decede, executive director of the Higuchi Biosciences Center.
Lester Mitscher, professor of chemistry, said the number of patents a university has doesn't matter. It is rare for inventions to return much money.
"You're not going to be building new buildings or driving fleets of Cadillacs with the average invention," said Mitscher.
"It's a benefit to be at KU. What's important to understand is the drive for the scientist is to do the work. It's never the money."
money.
The University of Kansas has been very generous to its inventors, Decedue said.
Charles Decedue Executive director of the Higuchi Biosciences Center
"It's a benefit to be at KU," he said. "What's important to understand is the drive for the scientist is to do the work. It's never the money."
Researchers at the University of Missouri receive one third of royalties obtained by the university, according to the MU Office of Technology & Special Projects. The University of Colorado researchers receive 25 percent. The University of Oklahoma gives 35 percent according to its Office of Technology Development.
The University of Iowa is also in the process of changing their policy—but it's to give a higher percentage of royalties to inventors. The university currently gives researchers 25 percent of the revenue generated by patents, said Bruce Wheaton, executive director of the University of Iowa Research Foundation.
Other Universities Researchers at the
The University of Iowa gives 25 percent to the individual researcher, 25 percent to the academic unit, 25 percent to the research enrichment fund, and 25 percent to administrative costs. The amount of increase is yet to be determined.
"Currently we have no consensus. Everyone has to decide which of the good things we do with the money are the best good things," Wheaton said. "We'll have to make some tradeoffs."
inventions support the graduate program, said Ken Audus, chairman of the pharmaceutical chemistry department. It pays for graduate student tuition and health insurance.
"I think the best way to put it, is having access to those royalty funds is really a safety net for our graduate program," Audus said. "We fall back on those funds when we are admitting new students and when we are stretched by other available funds."
D departments Benefit
At KU, money from $
"It hasn't made us rich, but has allowed us to continue to operate with a bit more flexibility as if we weren't totally dependent on state resources," Stella said.
Any additional revenue generated for the department would go to further support the graduate program, Audus said.
Mitscher has a couple dozen patents on antibiotics that work to fight bacterial infections. He sees his relationship with the University as a partnership.
"The University provides the laboratories and my salary. The electricity and the water, all that sort of business. In return I teach and I invent," he said.
Mitscher was in private industry for several years before he came to KU to teach. He said the big difference between private industry and a university research setting is that the company requires you to be inventive. There, the motive to invent is to make a profit.
"Our product is our students and everything else is sort of an added benefit," Mitscher said.
As for the decrease in royalties going back to the researcher, Mitscher said money was not his priority.
"I'm sure some of us are happy as clams and some of us are sour pusses," Mitscher said. "If your primary objective is making money, then the University is not a good place to come."
Edited by Leah Shaffer