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  The Digital Collegian - Published independently by students at Penn State
NEWS
[ Thursday, Feb. 10, 1994 ]

Research can cash in for universities

Collegian Staff Writer

Hours spent in laboratories in front of computers and test tubes can have more than academic rewards.

Patents make research a business, with the University pulling in $507,456 in patent royalties during the 1992 fiscal year, according to the Chronicle of Higher Education. The University was ranked 32nd nationally.

The University of California system led the nation with more than $26 million in royalties.

A patent is a government-granted right to an inventor that is intended to compensate for time and expense incurred during a product's development.

Thomas Monahan, manager of the University's Intellectual Property Office, said the difference is because of Penn State's recent commitment to the game. The University developed the office to handle patent applications and licensing five years ago.

Unlike industry, where all research work is evaluated for potential patenting, University research tends to be more conceptual.

"Researchers don't do applied research, but basic research at Penn State. We help them with the business end," Monahan said, adding that it often takes from three to five years to move from the laboratory to the real world.

And in the "publish or die" University environment, Monahan said translation from pure to applied science often takes a back seat to publication. The translation entails making practical applications from research theory.

The office does not actively solicit invention disclosures -- the form filed by a researcher outlining potential patent material. Seeking a patent is voluntary.

Actually obtaining a patent is also more difficult than ever, due to a worldwide trend placing greater emphasis on the humanitarian implications of research.

"The rewarding process has to be wedded to the translated benefit," Monahan said.

Although the office considers that when selecting which disclosures to support, one of the major controlling factors is its royalty potential because of significant filing expenses.

Filing a single patent can cost from $5,000 to $10,000, Monahan said, adding that international rights can cost as much as $60,000.

"We need some reasonable probability of (financial) return on the patent," he said.

The office files about 30 percent of the disclosures it receives with the U.S. Department of Commerce's Patent and Trademark Office, after which it can take one to three years for a patent to be evaluated, Monahan said.

The wait depends on several factors, including an appeal to the Board of Patent Appeal and Interference if the application is rejected.

If patent rights are granted, the technology is usually licensed to a midsized company because large companies tend to have their own patent and research departments. In some cases, the researcher may start up his or her own company based on patented research.

Researchers whose disclosures have been rejected by the Intellectual Property Office may request to have research rights returned to them so they can seek support from industrial or private sectors.

But a scientist who finds the cure for cancer or discovers a revolutionary way to miniaturize computers will have to share royalties -- 40 percent to the University's research fund and 20 percent to the original administrative unit, usually the investigator's department, said Barbara Romano, a paralegal assistant in the Intellectual Property Office. That ratio is part of the researcher's employment agreement.

"The University contributes property rights in exchange for research," Monahan said.

 

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