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Highlights
from the bio-innovation conference
Maine Science and Technology Foundation
July 15, 2002
DAY
TWO
University-Industry
Collaboration, Biotechnology Licensing and Technology
Transfer
David
Einhorn, Esq., The Jackson Laboratory, Bar Harbor, ME
Irene
Abrams, MIT Technology Licensing Office, Cambridge,
MA
Alfred
"Buz" Brown, Ph.D., Yale School of Medicine Office of
Cooperative Research, New Haven, CT
Moderator:
William Worden, Esq., Pierce Atwood, Portland, ME
Why
do universities work so hard to license out technologies
they develop under federally funded research? To bring
innovation to the public, foster economic development,
and obey the law.
The
Bayh-Dole Act, passed in 1980, "granted universities
the right to take ownership of the federally funded
patents that come out of research at the universities,"
said Irene Abrams. Before Bayh-Dole, she said, the federal
government owned patents on university discoveries and
little economic development flowed from research investments.
Ceding
patent rights to universities has helped "promote transfer
of taxpayer funded research from the lab to the marketplace
for the public benefit and economic growth," said Abrams.
And local control of intellectual property management
"brings the inventor, the tech transfer people, and
the companies together in one place, and this is really
critical because in my experience at MIT... the inventor's
participation in the process is really critical to the
successful commercialization of technology."
Abrams
said federal agencies fund about 90 percent of university
research. She cited statistics showing that about 2,500
new companies and 40,000 new jobs were formed between
1980-1998 as a result of the Bayh-Dole Act. They also
brought about $3 billion in revenue to the federal government
in fiscal year 1996.
Patent
licensing generates revenue for Yale, too, said Buz
Brown. Over 100 licenses already earn money and "in
2001 we executed over 130 agreements," he said. Discoveries
include novel compounds, drug targets, proteins, mechanisms
and assays.
Part
of Yale's success has come from an Office of Cooperative
Research program that assists startups with nonmonetary
services traditionally offered by venture capitalists.
Brown said Yale technology has served as the foundation
for about 36 startups in the past decade or so; 16 of
those companies received university assistance.
Companies
based on Yale technology also raised $116.8 million
in funds during the fourth quarter of 2001, nearly half
the $246 million in venture investments made to New
England biotech companies during that period, according
to figures from a PricewaterhouseCoopers MoneyTree survey.
Besides
benefiting regional development, bringing royalties
to Yale, and enhancing Yale's reputation, Brown said
following the law motivates licensing.
"We
do it because Bayh-Dole tells us this is what we should
do. We should be using our best efforts to commercialize
these technologies for the public benefit."
Working
for the public benefit also plays a role in mouse distribution
services at The Jackson Laboratory, which stocks around
3,000 strains of research mice. David Einhorn said about
97 percent of the mice are unique to Jackson, and mice
are crucial to preclinical research for human drugs
because of genetic similarities between mice and humans.
Mice, said Einhorn, "suffer the same diseases" as people.
Einhorn
said Jackson first began stocking other organizations'
mice in the early 1990s, after "a mouse had been made
by Baylor College of Medicine, called P53, which has
a knockout of a tumor suppressing gene [making it] a
very valuable mouse for studying cancer." Baylor granted
an exclusive license to the mouse to a company called
GenPharm, said Einhorn, but GenPharm wanted to recoup
its investment by offering a licensing strategy that
included reach-through rights.
Einhorn
said that agreement meant "if you're an academic and
you want the mouse, you have to give GenPharm rights
to any inventions you may develop as a result of using
them. The research community basically rebelled. It
said that was too broad a claim. The community was used
to getting research tools like mice freely," shared
by academic scientists without license agreements.
The
rebellion led to Jackson receiving National Institutes
of Health and private sector funding. It then brought
in 1,000 strains of mice from other institutions, enabling
federally funded researchers to use the mice without
license agreements.
In
the end, said Einhorn, the definition of a research
tool is "in the eyes of the beholder," and regulations
are murky for academic researchers who use special strains
of mice as research tools. Academic scientists infringe
patents everyday as they conduct their research, he
said, but infringement is "an enormous value for academia,"
because licensing would slow their work.
Einhorn
said the exemption for academic research is an uncodified
custom, raising concerns that as the commercial and
academic worlds grow closer, academic researchers may
lose some of their ability to practice their work without
licenses.
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