Commercializing University Research: Pathways, Pitfalls, and Personal Observations

With ever increasing frequency, universities are seeking to commercialize in-house intellectual property, as they search for new revenue streams that will help relieve budgetary pressures which traditionally have fallen on growing the endowment, increasing undergraduate tuition, and accumulating more research overhead money.  Universities are providing attractive royalty sharing options to faculty and staff as an incentive to generate patentable IP. Technology transfer offices at U.S. universities have in-house patent attorneys or have retained an outside law firm which usually acts in a timely manner so as to not delay the public dissemination of a professor’s research results. In this regard, one can generally say that universities do a good job at protecting their intellectual property.  Often, however, universities do poorly in marketing their protected ideas and they do not have the staff to fully/adequately evaluate the commercial potential of new inventions. Research universities are slow or incapable of performing the necessary due-diligence on every invention disclosure that comes to their technology transfer office.  With limited budgets, tech transfer offices must pick and choose which inventions to protect, from a broad range of topics/disciplines, e.g., software programs from a computer science department, medical devices and new drugs from medical schools and hospitals, and new materials and processes from chemistry and chemical engineering departments.  Such a wide spectrum of ideas is rarely seen in a single company.  So it is often up to individual professors to justify and defend the importance and market value of their work.

In this presentation, two examples will be given of university research projects that generated commercial interest, based on the author’s personal experience.  The projects will be described in terms of a chronological timeline, where initial laboratory data led to all or most of the following: (1) some interest by one or more companies, (2) the filing of a patent by the university, (3) the early pursuit of third party non-industry collaborators to strengthen the credibility and acceptance of university research results by companies, (4) the marketing of the invention to companies by the university and professor, (5) the collection of new research results to expand the university’s IP position, and (6) the development/pursuit of a cooperative/licensing agreement with a company to commercialize the university invention. Issues that will be addressed in this presentation include: (a) patenting and publishing university research results; the two are not mutually exclusive, (b) pursuing process vs. product patents, (c) the new patent rule of first to file and its impact on research workplans at universities, (d) industry’s reluctance to accept at face value  university-generated data, (e) working with companies to further develop university-owned IP, (f) industry’s focus on scale-up and cost issues vs. university interest in basic research, and (g) faculty interactions with patent attorneys and the university’s  technology transfer office.

Two commercialization projects will be described: (1) the synthesis of partially hydrogenated soybean oil with a low trans fatty acid content via an electrocatalytic hydrogenation process [1,2] and (2) nanofiber particle/polymer electrode mats for fuel cells and other electrochemical devices [3].

The first project involves a process patent, where the partial hydrogenation of unsaturated fatty acids in an edible oil (e.g., soybean oil) is carried out at moderate temperature in a solid polymer electrolyte fuel cell reactor with neat oil at a reaction temperature much lower than that used in a chemical catalytic reaction scheme.  Industrial interest in the electrochemical technology revolved around the low trans isomer content of the hydro-oil product; diets high in trans fatty acid isomers increase the risk of coronary heart disease. 

The second project involves university IP where the patent has both product and process claims.  The work deals with catalyst/binder nanofiber mat electrodes for hydrogen/air proton exchange membranes fuel cells with possible spin-off applications in other electrochemical devices that require high surface area electrodes. Industrial interest stems from the low platinum loading, high power density, and excellent durability of nanofiber cathodes in a hydrogen/air fuel cell. 

 References

1.  W. An, J. K. Hong, P. N. Pintauro, K. Warner, and W. Neff, J. Amer. Oil Chem. Soc., 75, 917‑925 (1998).
2. P.N. Pintauro, M. P. Gil, K. Warner, G. List, and W. Neff, Ind. & Engr. Chem. Res., 44, 6188-6195 (2005).
3. M. Brodt, R. Wycisk, and P. N. Pintauro,  J.  Electrochem. Soc., 160, F744-F749 (2013).