Intellectual property for sale

Whether you call it intellectual-property (IP) licensing, technology licensing, or technology transfer, the act of obtaining photonics technologies developed and patented by universities and corporations is becoming easier through a number of Internet sites.

Dec 1st, 2005

Gail Overton

Whether you call it intellectual-property (IP) licensing, technology licensing, or technology transfer, the act of obtaining photonics technologies developed and patented by universities and corporations is becoming easier through a number of Internet sites. While these Web-searchable technology marketplaces may compete with private companies in the business of IP technology transfer, such as www.capitalvaluepartners.com (San Francisco, CA) and www.qed-ip.com (London, U.K.), they offer users “immediate gratification” in terms of their potential to quickly link technology seekers with technology providers.

According to published reports from the World Intellectual Property Organization (WIPO; www.wipo.int; Geneva, Switzerland), approximately 11,000 international patent applications were filed each month in 2005. Although patents relating to lasers and optoelectronics can be accessed online through such patent search sites as www.freshpatents.com, www.delphion.com, and www.patentcafe.com, there are better resources that target technologies ready for licensing or transfer, often available at a fraction of the cost that was required to develop them.

irc.cordis.lu

The Innovation Relay Centre (IRC) Web site is a major European source for accessing innovative technologies and new technology solutions. The “Find a Technology” link on the IRC site offers a searchable database of E.U.-funded research and development projects in five categories: biology/medicine, energy, environment, IT/telecommunications, and industrial technologies. Once a user identifies a technology of interest in one of the categories, they are prompted to find their local IRC contact, by country and city, for further information. There are currently 71 IRCs in 33 European countries.

To access additional available technologies (both E.U. and privately funded) in focused research areas like aerospace and micro- and nanotechnology, 13 different thematic groups offer a variety of services including financing and technology transfer assistance. One institution that has benefited from the IRC is the Optoelectronics Research Centre at Tampere University of Technology (TUT/ORC; Tampere, Finland), among the largest university-based research centers for molecular-beam epitaxy (MBE) semiconductor device growth. “IRCs from Finland and Portugal helped in the technology transfer of a fiber-Bragg-grating machine that is now part of our unique service center for research and company cooperation,” notes TUT/ORC development manager, Lasse Paananen.

www.yet2.com

Yet2.com has become such a respected IP provider and expert in technology transfer that hundreds of major corporations, including DuPont, Agfa, Honeywell, Philips, Procter & Gamble, and Siemens, have chosen to use the Web site as a vehicle to promote their IP assets. In fact, the company was founded in 1999 by, among others, Ben DuPont, a family member and long-time DuPont executive, out of the very realization that the value of IP should be more accessible to the public.

Though not immediately intuitive, the founders realized that a “bulletin board” list of available technologies and patents was not enough to result in licensing transactions. “Yet2.com provides a means to make a fragile connection between technology providers and seekers more robust,” says Phil Stern, cofounder and CEO. “We help people think about the issues they are about to face: When is an NDA in order? How will technical evaluation take place? Is negotiating assistance necessary? This is why we have built a team of 20-plus licensing experts-two in the U.K., three in Tokyo, and 15 for the U.S. and worldwide. This is not a zero-sum game; we are in the business of technology commercialization-when we win, everyone wins.”

Yet2.com charges a fee to list technologies and patents on the site, but searching the IP is free for Web visitors until a licensing transaction is initiated.

www.nttc.edu

Much of the IP generated by government organizations is available to the scientific community. Congress established the National Technology Transfer Center (NTTC; Wheeling, WV) in 1989 to facilitate partnerships between government clients and U.S. industry, making it a one-stop shop for locating technologies available for licensing or forming collaborative partnerships. Their clients include the National Aeronautics and Space Administration (NASA; Washington, D.C.) and the Missile Defense Agency (MDA; www.mda.mil). The website can be searched for available technologies by keyword or category and also has postings for “needed” technologies that, according to Steven Infanti, NTTC’s vice president for public affairs, give companies and inventors the opportunity to have their innovations developed and used by NASA and other agencies.

The NTTC works with NASA’s Innovative Partnerships Program (IPP), which also maintains a collection of resources on the Web “to access opportunities for technology transfer, development and collaboration with NASA.” A free-to-search list of dozens of technologies by subject, including image processing, electronics/optics, and sensors/actuators, is found at www.nasatechnology.com.

Academic IP

An often-overlooked source of IP is that generated by universities and other academic institutions worldwide.

In the United States, thanks to the passage of the Bayh-Dole act of 1980-which gave universities the right to license patented technologies to industry-most major institutions have an office for IP and technology licensing.1 The Bayh-Dole ruling also lets universities retain royalties from the license, some of which are paid directly to the inventors, while the remainder are invested back into the university.

European and other non-U.S. academic IP has become more accessible through sites like the IRC; however, a number of individual universities in Europe and other foreign countries offer very good online technology access services.

www.ucop.edu/ott/

The Web site for the University of California (UC) Office of Technology Transfer (OTT; Oakland, CA) has a searchable database including numerous science and photonics categories. The 2004 annual report posted on the site boasts that the UC system was named the leader among the nation’s universities in developing new patents for the 10th consecutive year, with 6600 active inventions by year-end that resulted in 373 new license and technology transfer agreements.

www.university-technology.com

The university-technology.com searchable database assists in the transfer of knowledge from Scotland’s universities to industry by providing information on innovative technologies available for licensing or collaborative development. On the day I searched the site, 165 technologies were listed, with 24 in the optoelectronics category.

The database includes a subset of listings that appear on individual university Web sites such as the University of Strathclyde (Glasgow, Scotland), which maintains its own new technologies database at www.strathclydetechnology.com. Business development coordinator Madeleine Rooney says that “Scottish universities now generate more IP than industry, and this is evidenced in the explosion of university commercialization offices. Similarly, academics are becoming increasingly aware of the market and are keen to progress their research from blue sky to boardroom.”

REFERENCE

1. Code of Federal Regulations 37 CFR part 401, Public Law 96-517, the Patent and Trademark Law Amendments Act (or the Bayh-Dole Act), 1980.

Every other month, associate editor Gail Overton presents her view of what the World Wide Web offers optics and photonics engineers, researchers, and technical professionals. Topics will help readers identify Internet sites that provide links to databases, tutorials, collaboration and technology licensing opportunities, scientific blogs and chat rooms, and other online resources of interest. To share your best Web-site finds with our readers, please contact Gail Overton at gailo@pennwell.com.

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