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Inside Iowa State, a newspaper for faculty and staff, is published by the Office of University Relations.

Jan. 13, 2006


Going to market with ISU technologies

by Anne Krapfl

The Board of Regents, State of Iowa, has directed the three regent universities to do more to contribute to economic development in the state, and Iowa's 2005 Legislature initiated a multi-year appropriation to the schools earmarked just for this purpose. Two units at Iowa State that focus on commercializing ISU technologies are the Iowa State University Research Foundation and the university's Office of Intellectual Property and Technology Transfer. In this Q&A with Inside, Kenneth Kirkland, who directs both units, talks about that process.

members of ISURF

Seated (l-r): Kenneth Kirkland, executive director; Nita Lovejoy, associate director; Todd Headley, licensing specialist. Standing (l-r): Donna Johns, IP portfolio manager; Eddie Boylston, licensing specialist; Mary Kleis, technology licensing manager; David Conrad, licensing specialist; and Julie Minot, licensing specialist. Photo by Bob Elbert.

What's the distinction between ISURF and OIPTT?

The Iowa State University Research Foundation is a not-for-profit corporation established in 1938 to own, manage and protect the intellectual property of the university. It receives no state appropriation, but relies on income from royalties on license agreements, as well as investment income from its $23 million endowment. ISURF has a governing board to which I report as executive director.

Set up in 1990, the Office of Intellectual Property and Technology Transfer markets and licenses the intellectual property assigned to ISURF. Operating funds for OIPTT come from ISURF. OIPTT reports to the vice provost for research.

Nita Lovejoy is associate director for ISURF and OIPTT, and other staff members are located either in ISURF or OIPTT.

It's my invention; I discovered it. Do I have to assign my work to ISURF?

Yes. The university's policy is that inventors have to assign their inventions to ISURF when they're using significant university resources (being a university employee qualifies as "significant.") Even when a company funds research, the invention has to be assigned to us so that we can negotiate a license agreement with the company. Since the Bayh-Dole Act of 1980, research funded by the government is owned by the university, but ISURF has a reporting responsibility to the government.

Is a patent the goal for all ideas disclosed to the ISURF/OIPTT staff?

No. For one thing, not all materials are patentable. For example, computer software (which in some instances can be patented) is usually protected under copyright. (To actually enforce the copyright, we have to register the copyright with the Copyright Office of the Library of Congress.)

Plant varieties such as soybean and corn are not eligible for patent protection per se, but in a few cases we have patents on certain novel genetic traits contained in these varieties. We have many varieties of soybeans, and even without a patent we can license them, and most are licensed on a non-exclusive basis. We also license copyrighted software.

The average U.S. patent costs ISURF $16,000 and we could spend several hundred thousand dollars filing foreign patents. (We would not do this unless we had a licensee to refund our costs.)

Sometimes we can't identify a commercial use for an invention or it'd be too expensive to produce, or the market is too small. In these cases, patent protection would not be worthwhile.

Questions about patenting or otherwise protecting your invention can be answered by Donna Johns (4-6355), who manages ISURF's intellectual property portfolio and is our in-house counsel.

What does ISURF/OIPTT add to the commercialization process?

If an invention is not disclosed to us, it will not be commercialized. In addition, if disclosure is not done promptly, valuable intellectual property rights could be lost.

Our staff has several important functions. First, we evaluate the intellectual property to see if ISURF has clear rights to it, or if there are any third-party rights. We work hard to understand the technology, research its potential commercial impact and seek patent protection when appropriate. We look at what's called "prior art" in that area -- what's out in the world that's similar. Is this different enough to be patentable? Is there enough commercial interest to patent it? Is the technology ready to market to potential licensees or is it just at the idea stage?

When companies express interest in a technology, we evaluate their ability to commercialize it. We ask for their development plan. Our mission is to get technologies used for the public good and to contribute to economic development. So, we don't want to license the technology to someone who just sticks it on a shelf. That doesn't do anyone any good.

When ISU inventors are interested in starting a company based on their inventions, we work with them to help make this possible. ISURF can provide up to $5,000 to the start-up for legal or other professional consultation and will pay the first year's rent for start-ups that locate in the Carver Co-Lab or at the research park.

Are you mostly looking for big income-generating ideas?

No, that is not our first priority. Most technologies bring in less than $5,000 annually. But the big breakthrough is nice when it happens and we do get that home run every now and then. Examples would be David Nicholas' text-to-digital encoding process used in fax machines (1971), Iver Anderson's lead-free solder (1994), and Ed Yeung's multiplexed capillary electrophoresis system (1996).

Is ISURF required to sign licenses first with Iowa companies?

We try to license our technologies to Iowa companies if we can. We don't always have the companies present in Iowa that can license the technologies. However, more than 30 percent of our license and option agreements are with Iowa companies. Sales of ISU-licensed products by Iowa companies totaled $22 million in calendar year 2004.

How do I get started?

First, disclose your invention to OIPTT. Soma Mitra (4-4742), our disclosure and database manager, can answer questions about this process.

Our staff includes five licensing specialists. They have degrees in their fields so they can talk science with inventors. But they also can talk business because they know the industry, too. Three work with technologies and one specializes in plant germplasm. Mary Kleis, technology licensing manager, oversees the licensing of technologies. Contact Mary (4-3893) or the specialist in your area:

  • Eddie Boylston, engineering and physical sciences, 4-3621
  • David Conrad, chemistry and materials sciences, 4-7707
  • Todd Headley, biological sciences, 4-4470
  • Julie Minot, germplasm, 4-9442

Licensing associates are starting to set up offices in departments -- chemistry, various engineering departments, vet diagnostic lab -- for, say, one day a month, to get to know the inventors and talk with them about their research. Those "office hours" are promoted by the departments.


(As of 6-30-05)

Active patents: 374

Active license and option agreements: 745

-- 590 for plant varieties, mostly soybeans

-- 155 for non-plant technologies

Disclosures: On average, ISURF receives 130 per year from ISU researchers

Income sharing: Over the last 10 years, ISURF has disbursed $13 million in royalties to ISU inventors and their academic units

Grants: ISURF has provided $4.5 million to the office of the vice provost for research, used primarily for start-up and retention packages for faculty. ISURF has provided another $1.6 million for applied research projects at ISU.


ISU in national rankings

FY04 (most recent data)

  • 3rd: License and option agreements executed (all universities)
  • 1st: License and option agreements executed (universities without medical schools)
  • 2nd: License and option agreements executed per $10 million in research funding

Divvying up royalties

Net* royalty:

Inventor: 1/3

Inventor's college: 1/3

ISURF: 1/3

*From gross royalties, ISURF receives a 15 percent management fee and pays the necessary fees to protect the invention (patent, copyright, etc.)