By Richard P. Morin
This year the Brown University Research Foundation (BURF) will collect more than $1 million in revenues from the commercialization of technology developed at Brown. The income is generated by 20 license agreements with companies in fields ranging from computer software to medical technology.
Over the last three years, revenues for BURF have increased steadily: $295,841 was collected in 1994, $664,951 in 1995 and projected revenues for 1996 are $1,025,000. "A large role in our growth has been that the number of license agreements has increased substantially," said William Jackson, president of BURF.
The increase in licenses has not come overnight, though. It has taken time and patience for Jackson to build a significant revenue stream generated by faculty research. "When I first came, we had no income, no patents, no licenses and no office," said Jackson, whose office now sits on the second floor of the Graduate Center.
Since arriving in 1983, Jackson has tried to educate faculty about the process of bringing an invention from the laboratory to the marketplace. "Most faculty are savvy to viable business opportunities," he said.
Some faculty, however, are reluctant to pursue such avenues, believing themselves to be academics, not manufacturers. Jackson counters that notion by saying faculty should view bringing their research to the marketplace as "an important means of disseminating research results." For instance, if a faculty member hits upon a medical innovation, the marketplace can help numerous patients. But if the information "is only published in a journal, only a handful of scientists will ever see it," Jackson said.
The invention disclosure process is the first step BURF uses to ascertain the marketing potential of a faculty member's patentable innovation. "We then use these to tune in to the marketplace to see what people will buy," Jackson said. Of the 30 reports BURF receives each year, Jackson said, five to ten will have commercial interest.
BURF helps the faculty member get a patent and then negotiates a license with the interested company for the use of the technology. There is a first-time payment made by the company; royalties are paid on the sales of items that use the patented Brown technologies. Brown, the inventor and the department in which the researcher works receive varying amounts of royalties. (The royalties the University receives are placed in the general operating budget.)
Although seemingly straightforward, bringing an invention to the marketplace can be a long and tedious process. Take the case of Humphrey Maris, professor of physics. In 1985 Maris sought a patent from the federal government for a process he invented to measure thin-film thickness. The patent was granted in 1987. That process is just now being brought to the market by Rudolph Research, a major supplier for the semiconductor industry. "Part of the delay is that the work that is being done at Brown is leading-edge science," said Jackson. "It takes time for the rest of world to catch up."
"The single most important requirement for successful licensing is patience," Jackson added.
Research at Brown has spawned entire companies as well. CytoTherapeutics, Inc., a medical technology company based in Providence, was founded on bio-medical technology created at the University. Under the license agreement set up by BURF, the company has been allowed to commercialize methods developed at Brown for the treatment of diseases with living cells. In turn, CytoTherapeutics pays royalties to the University on the sale of products that use Brown technology. "Most importantly, the company has sponsored several million dollars worth of continuing research at Brown," Jackson said. "Without a commercial partner, Brown's basic research on potentially important treatments for chronic pain and diseases like Parkinson's disease, Lou Gehrig's disease and diabetes would not be taken through the long and expensive process of clinical trials and FDA approval."
Many private companies, however, will not invest in research that has been published, but not yet patented. "Companies want to have exclusive rights to a technology so they can recoup the money spent on research and development," Jackson said.
Computer software is quickly becoming an area of fruitful private industry and University partnership. The Department of Computer Science places on its World Wide Web home page copyrighted software developed by faculty and students. This practice, according to Jackson, has resulted in several companies contacting BURF to explore licensing agreements. (The Department of Computer Science has created a department endowment with its share of the royalties.)
Stephen Reiss, professor of computer science, has a licensing agreement, administered by BURF, with Digital Equipment Company. The agreement for a software program that Reiss created was originally negotiated between Digital and the General Counsel's Office several years ago. Now BURF has taken over, leaving Reiss free to do what he does best -- teach and research.
"This can be a sometimes thorny process," Jackson said. "We are there to help faculty members navigate the process. It shouldn't be [the faculty member's] job to negotiate an agreement or collect a royalty check. That is why BURF is here."