Protecting Value of Discoveries Can Be Tricky for Researchers

Find out how researchers use the Office of Technology Management for intellectual property protection and technology transfer.

Going from discovery to the marketplace can sometimes require researchers to make the transition from scientist to entrepreneur. For some the change in perspective is more difficult, but for Beckman Institute researcher John Rogers the move was made easier by his academic background.

"It was natural for me because most of my graduate work, my Ph.D. work at MIT, was sponsored by a consortium of companies," said Rogers, a professor and researcher who has won numerous awards both inside and outside of academia. He also holds dozens of patents that have commercial value, starting with technology patents arising from his work at MIT.

"There was always that sort of industrial, commercial aspect to my research," Rogers said. "Participation in that kind of group highlights, more than otherwise might be the case, the importance of IP (intellectual property), the intellectual value of what you are doing. My case was a little bit different, but I think most campuses these days are pretty actively trying to educate researchers on the value of the IP that they may be creating and may not be aware of."

"(Researchers) are inventing things and their focus, of course, is on publishing and getting grants. Their focus is not on getting patents and commercializing. By being here at Beckman we think we can help them out there." - Steve Wille, OTM

The importance of intellectual property protection is a topic that not only more universities but also a growing number of researchers are focusing on. For some researchers the idea of commercialization, with its non-academic aspects like gauging marketplace potential and understanding the vagaries of the patent process, can be daunting. For those researchers, however, there is help on campus - and if they are in Beckman, that help can now be found on the fifth floor.

The University of Illinois has worked in recent years to strengthen its efforts to protect intellectual property developed here and facilitate technology transfer. The Research and Technology Management Office was created in 1995, and now goes by the title of Office of Technology Management (OTM). Their mission statement says that OTM exists to "encourage innovation, enhance research, and facilitate economic development through the transfer of intellectual property."

In order to reach out to more faculty members engaged in research with potential IP value, the OTM has now set up satellite offices, including one in room 5261 of the Institute. Steven Wille is a Senior Technology Manager for OTM who spends one day a week at Beckman, with help from an OTM associate on other days, in what is called "OTM in Residence at the Beckman Institute."

"Researchers are very busy people," Wille said. "They are inventing things and their focus, of course, is on publishing and getting grants. Their focus is not on getting patents and commercializing. By being here at Beckman we think we can help them out there."

The OTM offers researchers help with identifying and evaluating IP, as well as guidance and education though the patent, licensing, and commercialization processes. Even someone as experienced with the process as Rogers uses their services because of the challenges involved in the commercialization process.

Rogers saw some of his earlier work evolve into a successful start-up company, and now he is a co-founder of a new company, Semprius, that is commercializing his discoveries in the areas of novel, high-performance semiconductor technology. And while his earlier experience at MIT made for a smoother transition to the commercial world, he admits it's still not an easy switch to make.

"It is really hard to take research out of the lab and make a real product," Rogers said. "To make it robust and "manufacturable" and cost effective and competitive against entrenched technologies is incredibly difficult."

The world of research and business, he said, are two very different places.

"When you move it into a company it's a different environment, there are different pressures," Rogers said. "There are pressures for revenue, so it's hard to continue the kind of research and development that went into the initial development of the idea in that company environment."

Rogers advises researchers to make sure their discovery is developed before taking it to commercialization, but both he and Wille say that it is good to start thinking about the patent process as soon as possible.

"More and more we are encouraging inventors to disclose to the OTM early, not later," Wille said. "If we wait too long, we will probably lose the ability to patent because the invention will probably have been disclosed to the public in some way, which severely limits patentability."

"I agree with Steven that sooner is generally better for filing patent applications, particularly because ideas in a patent application do not have to be reduced to practice to form the basis of valid claims," Rogers said.

This article is part of the Fall 2007 Synergy Issue, a publication of the Communications Office of the Beckman Institute.