SAESARD Workshop

1
SAES/ARD Workshop

• Trends in Intellectual Property Management
  Past, Present and Future
• Bryan Z. Renk
• Director of Patents and Licensing
• Wisconsin Alumni Research Foundation

2
WARF

• Established in 1925 by Professor Harry Steenbock.
• Commercialized Steenbocks discovery that UV
  radiation produced Vitamin D in food,
  preventing rickets.
• A tax exempt, not-for-profit corporation,
  maximizing research grants to the UW-Madison.
• Over 1 billion of products are sold each year
  under license from WARF.

3
WARFs Mission

• To support scientific research at the University
  of Wisconsin at Madison by
• Moving inventions arising from UW-Madison
  research to the marketplace, for the benefit of
  the University, the inventor(s) and society as a
  whole.
• Investing the licensing proceeds to fund further
  research at UW-Madison.

4
WARFs Patenting and Licensing Profile

• Received 360 disclosures
• Accepted 63 for patenting and licensing
• Filed 239 US patent applications and 125 Foreign
  patent applications
• Executed 160 licensing agreements
• Currently we gift in excess of 40 million back
  to the University annually
• Pay royalties to over 300 inventors
• Thanks to UW-Madisons Research Prowess

5
Past

• U.S. Constitution
• Article I, Section 8
• The Congress shall have the Power to promote
  the Progress of Science and useful arts, by
  securing for limited Times to Authors and
  Inventors the exclusive Right to their respective
  Writings and Discoveries

6
Past

• 1862 Morrill Act
• 1887 Hatch Act
• 1930 Plant Patent Act
• 1961 UPOV Convention
• 1970 Plant Variety Protection Act
• 1980 Diamond v. Chakrabarty
• U.S. Supreme Court held that a genetically
  modified microorganism was patentable

7
The Bayh-Dole Act (1980)

• A Recognition by the U.S. Congress
• That imagination and creativity are a national
  resource
• That the patent system is the vehicle which
  permits the delivery of that resource to the
  public
• That placing the management of the results of
  government supported research conducted by
  universities and small business was in the public
  interest.
• That the existing Federal patent policy was
  placing the U.S. in peril during a time when
  innovation was becoming the preferred currency in
  foreign affairs.

8
Institutions Having Technology Transfer Programs

• 1972 30
• 1997 275

9
AUTM Survey Data (FY 2001)

• Inventions disclosed 13,569
• U.S. patent application filed 11,265
• U.S. patents issued 3,721
• New companies formed 494
• Based on university license
• New licenses and options 4,058
• 62 with small business
• Adjusted gross license income 1,071,375,978
• 190 institutions reporting

10
Future

• Licensing offices have and will become more
  sophisticated in their operations
• Patent pooling will become a viable option in the
  life sciences
• Material transfer agreements are showing negative
  trends in certain industries
• Economic development becomes a component of the
  research universitys mission

11
Future

• Cross Licensing will increase in the Agricultural
  sector
• Out licensing from commercial entities will
  increase
• PIPRA

12
Conclusion

• Coming together is a beginning
• Keeping together is progress
• Working together is success.
• Henry Ford