Page 10 University Daily Kansan, September 25, 1981
Obtaining patents proves costly for KU
By LISA BOLTON Staff Reporter
University-owned patents are losing money, and they are going to lose more because of a change in the patent laws enacted Jan. 1.
"The pursuit of patents has not been a moneymaker," Larry Reeb, at Kansas University Endowment Association vice president, said yesterday. "In the big picture, it has cost more than it had generated."
A patent gives its holder the exclusive right to make, use and sell his invention for the 17-year term of the patient. Beginning this year, inventors will have to pay a yearly fee to renew their patents.
According to Board of Regents policy, the association applies for patients on inventions or processes created by KU faculty.
WHEN A KU inventor wants to patent his invention, the office of research and graduate studies forms an advisory committee with representatives from the office of the general counsel and from the inventor's department to determine whether the patient is worth getting. Heeb said.
"It's an expensive proposition to seek and receive a patent because you are deadling with highly specialized lawyers," he said. "The committee looks at
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If the committee approves the patent request, the association makes the application and assumes the costs of getting the patent. The company also decides how to split any income among the inventor, his department and the association.
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INCOME IS NOT guaranteed by a patent, however. The product patented must be licensed for commercial use by a company, which then pays royalties to the University. Having applied for a patent, the association employs two private companies to find a commercial use for the product, Heeb said.
"The patent is a pretty document," he said, "but it doesn't generate any income."
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The association holds 17 patents, which Heeb said were producing virtually no income.
Matias P. Mertes, professor of pharmacology, said he had received $250 in royalties from a patent he obtained in 1987. He and the pharmaceutical company donated 10 percent of any royalties. Eighty-percent goes to the association.
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Heeb said the University association rarely applied for patents overseas because it was much more expensive. Besides needing a separate patent for
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He said he was surprised that the law had not been adopted in the United States earlier because it annually becomes a business producing patent even more costly to hold.
each country, the yearly renewal law is already in effect in other countries.
The sooner a patented product is licensed for commercial use, the better, he said.
"But professors getting into that kind of research are probably gentlymenly enough to leave their universities," he said. "but think it's a widespread problem now."
"Industry is very conservative," Swift said. "If the product is not developed to commercial standards, they're pretty cold to it."
PRODUCTS OF academic research, however, do not sell well to industries, according to George Swift, professor of chemical and petroleum engineering.
"Sometimes we'll stumble onto something, but our only product is students," he said. "We adhere to that pretty strictly."
No income has been produced from Swift's patented process for removing impurities from crude liquid helium. He said he developed the process in the mid-60s, when the helium conservation act was adopted.
Heeb said that other institutions earned income from patents through a policy of determining the current needs of the student in research toward meeting those needs.
SWIFT SAID that KU's policy is prevalent among universities, but he added that rapidly growing interest in genetic engineering had inspired commercially oriented research at larger Eastern institutions.
Swift stressed the difference between industrial and academic research.
"We at the University respond to the inventions and the ideas from professors' research," he said. "I believe I'm fair in saying that there has not been an emphasis on finding and solving the problems of industries.
HEEP CITED one invention at the University of Indiana, which he said had earned a great deal of money from Crest toothpaste. For the 17 years that the university's patent was held, Crest fluoridated toothpaste on the market.
Heeb said it was the potential rather than the actual profits that kept the Board of Regents from ending the KU patenting program. He said he doubted that the program would be ended, despite the lack of royalties and the laws which will make patents even more costly to maintain.
"If we get that right one—a Crest toothpaste we'll certainly want to pursue it," Heeb said.
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