University eyes larger claims in research profits

The University would claim a larger stake of cash from researchers’ inventions under its first new patent policy in 16 years.

As GW looks to grow its research enterprise, it would pull in two-thirds of its share of income from patented and licensed inventions that reap $2 million or more, leaving one-third for researchers, according to new guidelines under Faculty Senate committee review.

It’s the first time the University set a bar for inventions that make over $2 million, a total no GW product has ever collected.

Researchers will still get half the income from inventions that earn less than $100,000 and 40 percent of the payoff for inventions between $100,000 and $2 million – components of the 1996 policy. The rest of the funds go toward researchers’ departments, schools and the Office of the Vice President for Research.

The old patent policy, however, has mostly gathered dust over the past decade as the University has begun trying to make a mark in technology transfer– turning products into dollars by patenting inventions and licensing the rights to companies.

The two-year-old Office of Technology Transfer counted only three patents issued and 11 patent applications last year. Engineering professor Charles Garris said the University generated only about $20,000 in licensing revenue last year, but Jim Chung, the office’s leader, would not comment on licensing income.

Vice President for Research Leo Chalupa said GW is “ramping up” these efforts to fuel its research enterprise.

The changes, under review by a Faculty Senate committee, alter an “outdated” policy shaped before GW had major research ambitions, Chung said.

“GW is transitioning to be a top tier research university and its intellectual property policy needs to be able to accommodate the anticipated new levels and types of research and innovation,” he said. “Top research faculty we are recruiting expect to have well-functioning support services to bring their inventions to market.”

Six universities were awarded more than 100 patents two years ago, including Massachusetts Institute of Technology, Stanford and University of California.

But as GW tries to turn researchers’ attention toward patenting their work, the new policy could drive them away, engineering professor Murray Loew said.

Loew, who sits on the Faculty Senate’s professor ethics and academic freedom committee, said the idea to decrease researchers’ share of income as their invention rakes in more dollars is “upside down.”

“I think having this reduction in the percentage is sending the wrong message, I really do,” Loew said. “A university should have a patent policy, but this one isn’t as enlightened as it ought to be.”

Garris, chair of that committee, praised the policy but said there will likely be faculty concern about the income sharing plan after it reaches a vote in the Faculty Senate, likely by this spring.

“They’re changing this patent policy with the hope that the University will benefit from this source of revenue, but they won’t benefit from the source of revenue unless there’s an incentive to let faculty participate,” he said. “That’s where this policy has to strike a fair balance.”

Chung said his office scoured top research universities and market basket schools for their best patent policy practices. While most patent policies vary across universities, GW’s new policy doesn’t differ greatly from those at Northwestern, New York and Yale universities.

Chung stressed that the money given back to researchers’ schools and departments “will go back to the inventor’s ongoing research,” helping fueling more opportunities for inventors commercialize their research.”

“It’s a draft that we’re waiting to get input on. If faculty want to change it, we’ll change it,” Chalupa said.

The policy also affirms for the first time students’ share of the income if they work on a patented product.

The University has tried to gather student interest in undergraduate research and sharpened the research focus of its graduate programs in recent years.

“We haven’t had that many things making big money, but now that we’re ramping up the licensing and ramping up the product production with potential companies, we want to make it clear that students should get some rewards for their contributions,” Chalupa said.

But while the policy declares that students have the rights to income if they contribute, it doesn’t spell out how researchers and the undergraduates, graduates or post-doctoral fellows who work in their labs would divvy up the funds.

That could be a hole in the plan, said Akos Vertes, a chemistry professor who invented a laser that provides instant analysis of living tissue – one of the most successful GW inventions in recent years.

“That is a missing link. I can just see when money becomes available, people will start to have different feelings about what the contribution was. Somehow it has to be declared at the beginning,” Vertes, who praised the plan overall, said.

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