New Technology Transfer Office Unveils Patent, Software Policies

New Technology Transfer Office Unveils Patent, Software Policies

BY LIA UNRAU
Rice News Staff
April 8, 1999

For many researchers, after the satisfaction of contributing to academic knowledge,
receiving a patent can provide a sense of validation that new technology or
software developed in academia is useful to society.

Rice’s new Office of Technology Transfer and its new director, Daryl Boudreaux,
recently unveiled revised policies regarding patents and software aimed at clarifying
and simplifying the sometimes complex issues surrounding intellectual property.
The new policy was developed by a special faculty task force in 18 months of
hard work and approved by President Malcolm Gillis on March 1.

The Office of Technology Transfer works to transfer Rice knowledge and technology
into new and better products for public use and to build business partnerships
that benefit Rice’s students, faculty and research programs.

The new office helps with invention disclosure and related publication issues
and assists with the patent and copyright application processes. The office
also identifies and helps develop effective relationships with licensing partners
and, when appropriate, helps with establishing new business ventures.

Also new are Web-based forms and procedures for invention and software disclosure
and copyright and trademark registration. The forms, a special section of frequently
asked questions and answers, and the new policy are available online at http://www.rice.edu/OTT.

The new policy clarifies issues from the old policy and brings software into
the picture, Boudreaux says. The revised policy allows the office to assist
faculty with marketing new technologies and finding places for them to be of
benefit to society and to the economy.

The new policy also calls for a patent committee with president-appointed faculty
and administrators to make decisions about whether a patent should be pursued.
The committee meets with Boudreaux and the inventors and makes the decision
about how the university’s resources are to be committed.

"It provides a consistent process used for evaluating potential patents,"
Boudreaux says. "I think it’s important that all the inventors be treated
fairly. After all, we’re spending a lot of money on the process [patents cost
about $10,000-12,000 each] and we want to make the best decision we can.

"I’m also trying to keep the faculty intimately involved in the process.
This is a service function to the faculty to help them accomplish their objectives."

Unlike the old policy, the new policy makes it clear that anyone doing research
at Rice as part of their university work is required to assign their rights
to Rice: faculty, researchers, graduate students and undergraduates.

"The intent here is not to grab every conceivable discovery," Boudreaux
says, "but to provide a clear legal title for us to be able to manage intellectual
property that results from bona fide university research." There are cases
in which the university would turn rights back over to inventors and students,
for example, and Boudreaux emphasizes that the policy is not meant to stifle
creativity. "This intent is difficult to express in a formal policy, and
so I try to explain it whenever I can."

Boudreaux also assists in evaluating opportunities for spin-off companies from
the university and can help make it happen. Most technologies are not suitable
for this action, but some have the potential to make a dramatic impact, he said.

"It is frequently thought that the only motivation for establishing a
technology transfer office is to earn money for the university, and that is
not the case," Boudreaux says. "The value for Rice is in reaching
out beyond the hedges, in creating relationships with companies and with individuals.
The long-term benefit of those relationships to Rice, both in financial and
nonfinancial terms, is the primary expectation for this activity."

Boudreaux comes to Rice from Stevens Institute of Technology in New Jersey.
A physicist by background, he has 25 years of business experience with Allied
Signal, where he became familiar with technology transfer and intellectual property
processes.

He started out in condensed matter physics at Pennsylvania State University
and went on to a postdoctoral research position at Cambridge University in England.
After a faculty position at Brooklyn Polytechnic Institute, he joined Allied
Signal, then Stevens Institute.

"I fell in love with this job," he says, "and all its different
aspects–the legal, business, administrative and technology facets, as well
as the interactions with people and with negotiating deals."