Rice inventors keep Office of Technology Transfer in business

Rice inventors keep Office of Technology Transfer in business

BY LIA UNRAU
Rice News Staff

New inventors,
step right up. You are not alone on the Rice campus. Less
than halfway through the academic year, the Office of Technology
Transfer has seen about as much action in terms of new inventions
as it did all of last year.

Invention disclosures,
which measure the amount of activity going on, have been
on a sharp increase, and if the pace continues, Rice is
set to double its inventions over last year’s.

In fiscal year
2000, there were 33 invention disclosures received and 47
patent applications filed, and the office completed license
negotiations with one start-up company.

To date this
fiscal year, there have been 29 invention disclosures, 45
patent applications and license negotiations either completed
or in progress with six start-up companies.

Invention disclosures
are an important measure because they initiate the tree
of activity, says Daryl Boudreaux, director of the technology
transfer office. The technology is then considered, analyzed
and presented to a patent committee to decide whether to
proceed. Next, a patent application is filed, and at that
point, Rice starts marketing the technology to potential
licensees.

One of this year’s
new inventors is Seiichi Matsuda, assistant professor of
chemistry and of biochemistry and cell biology, who has
developed genetically engineered yeasts that produce potentially
valuable chemical compounds.

Others who recently
have been through the patent process include Vicki Colvin,
assistant professor of chemistry, who has created new nanoscale
materials, including those for holographic data storage
and polymer membranes with controlled pore size for filtration
of nano-sized material.

Andrew Barron,
the Charles W. Duncan Jr.–Welch Professor in Chemistry
and Materials Science, Mark Wiesner, professor of environmental
science and engineering, and Colvin each have invented different
micro- and nano-filtration processes and three different
types of products, and they have joined forces in a company.

Two researchers
who have been busy inventing separately and in collaboration
are Naomi Halas, professor of electrical and computer engineering,
and Jennifer West, assistant professor of bioengineering.
In one effort, they are finding new uses for Halas’ light-manipulating metal nanoshells in drug delivery, testing
and anti-cancer uses and in nonmedical applications. In
fact, Halas and West have formed a company, Nanospectra,
based on applications of metal nanoshells.

Fathi Ghorbel,
associate professor of mechanical engineering and materials
science, is in the process of forming a company called eMechatronics,
which focuses on Web-based interfaces used to remotely control
mechanical equipment.

Tony Mikos,
professor of bioengineering, formed a new company last year
called Desmogen Inc., which is developing applications of
new tissue engineering materials and techniques that he
and his colleagues have developed.

Richard Smalley,
the Gene and Norman Hackerman Professor of Chemistry and
professor of physics, joined the ranks of business entrepreneurs
with the creation of Carbon Nanotechnologies Inc. to get
larger quantities of carbon nanotubes into the hands of
researchers and to develop applications for these exciting
new materials.
Jim Tour, the Chao Professor of Chemistry, formed Molecular
Electronics Corp. earlier this year with colleagues at Yale
and other universities to commercialize his invention of
molecular computer switches and memory.

Boudreaux’s
arrival more than two years ago and the creation of the
Office of Technology Transfer as it exists today have bolstered
the activity and given rise to the increased invention disclosures.
A key factor for the increased number of companies in particular
may be the creation of the Rice Alliance, the partnership
between the schools of management, engineering and natural
sciences to support the development of new start-up technology
businesses by the Rice community.

“I think
there was latency here in the sense that when I came on
there was not a system to help inventors,” Boudreaux
says. Establishing a system not only encouraged people in
the beginning to get started, but also allowed people to
see the opportunities that existed. “Not necessarily
opportunities for profits, but recognition that what they
had as part of their research programs was something of
value, and they didn’t want their ideas to lose out
on that value. Part of it is that we’ve tried to make
it fairly easy for inventors to disclose their creations.
The technology transfer office does the work of technology
and patentability assessment, commercial potential, marketing
and licensing negotiations. Inventors are involved in the
process only as much as they want to be.”

Another key
part, Boudreaux says, is that the process is structured
so that researchers don’t have to compromise their
academic obligations.

“The university
is here for training students and for creation and dissemination
of new knowledge. Technology transfer is somewhere else
in that importance diagram. OTT does not attempt to control
the flow of information on inventive technologies and delay
publications. We absolutely refuse to do that,” he
says.

Fortunately,
a type of patent application created in 1995 allows universities
to file patents very quickly and at a low cost.

“It allows
us to put a stake in the ground and protect our technologies,
get a priority date in the patent queue and still allow
the faculty and students to go ahead and publish papers
and theses and discuss their work at meetings because that’s
their primary objective.”

To get an idea
of where Rice stands in invention activity as compared to
other institutions, Boudreaux compared statistics from the
Association of University Technology Managers, looking at
invention disclosures, number of patents filed and issued,
companies started and various other measures.

“For example,
if you look at the number of invention disclosures per $10
million worth of research or for faculty number and compare
to other universities, then Rice exhibits about the same
level of innovation as Stanford, Carnegie Mellon and MIT,” he says.

As for other
trends, Boudreaux is seeing a growth in disclosures of software,
both patentable and nonpatentable, which is consistent with
the fact that the Rice policy was changed in March 1999
to embrace software as well as inventions.

Boudreaux also
sees room for more expansion in biotechnology. “I expect
to see an impact on the collaborations that the biotech
researchers have with the Texas Medical Center. We already
have had a couple of joint inventions by Tony Mikos and
Jennifer West, for example, and some joint faculty appointments
with Baylor, such as Mike Barry, assistant professor of
bioengineering, are producing new inventions. I’d like
to see a lot more of that.”

Looking to the
future of technology transfer, Boudreaux suggests that interuniversity
collaboration and pooling of inventions from various universities
will be on the rise.

At a recent
meeting of technology transfer officers, collaborative packaging
of technologies was a topic of discussion. Universities
may combine inventions and technology to strengthen it into
something of more value to industry—so-called platform
technologies with a broad technology that serves as a platform
of multiple products and perhaps even multiple industries.

“Forming
these platform technologies is not something that usually
comes out of a single research group,” Boudreaux says,
“so technology transfer people are spending more effort
trying to collaborate between universities to recognize
synergistic efforts of their various programs so that we
can present something of more value. This hasn’t really
taken off around the country yet, but I think it’s
going to.”

Hold on to your
invention disclosures.