Widgets Magazine

Innoventions

University news reports seem constantly flooded with research findings and inventions developed year round. In fact, according to the Association of American Universities, universities brought on average more than one new product to market every day between 1998 and 2006. But while the product is usually described with vivid detail, the behind-the-scenes process that makes these new inventions official is rarely explored.

Professors like James S. Harris, professor of electrical engineering, who have issued nearly 30 patents and have even more pending, are no strangers to Stanford’s Office of Technology Licensing (OTL), which manages the University’s intellectual property.

One Solar Junction wafer contains about 25 solar cells. (Courtesy of James S. Harris)

For example, when Harris founded Solar Junction, a company he developed with his lab that manufactures super high-efficiency solar cells, he worked closely with the OTL to protect the product of his lab’s innovation. Just last month, Solar Junction broke the world record with its solar cell efficiency of 43.5 percent.

As stated on its website, the OTL’s mission is to “promote the transfer of Stanford technology for society’s use and benefit while generating unrestricted income to support research and education.”

The implication of Stanford’s patent policy is that any patentable invention implemented “in whole or in part by members of the faculty or staff of the University” will have to be licensed through the OTL. This holds true for research supported by any funding source–University or otherwise.

Whenever a student, faculty or staff develops an invention, they must submit a disclosure form to OTL, who will evaluate whether the product should be licensed to the industry.

If the product is licensed, an administrative fee is paid to the OTL before profit is divided into thirds between the inventor, the inventor’s department and the University. But if the product is not licensed, the OTL releases the inventor from the University’s patent policy, which gives the inventor freedom to try to patent the invention on his or her own.

“As part of our charter [we] try and make our research publicly accessible [so] that it does something for society,” Harris said. “It’s important to have exclusive licensing and to do it in a right way. And I think the OTL has found a good way to do that, and I think very few other institutions have done so.”

Harris stressed the importance of granting exclusive licenses.

“You can imagine if Google didn’t have an exclusive license as things were starting to look attractive, Microsoft, with about 100,000 times the resources to a startup company, could just come in, license the patent and just destroy them,” Harris said.

Dean of Research Ann Arvin described the important role the OTL and its counterparts at other universities play in translating ideas into something with tangible public benefit.

“We want faculty and students to be engaged in inventing things, and that’s part of the way in which ideas become products and useful for the public good,” Arvin said.

To Harris, licensing inventions is a critical step to attracting investors who are willing to support the idea’s development. Investors often have less interest in publicly owned patents, which makes the OTL critical to researchers on campus.

Shan Wang, professor of material science and engineering and electrical engineering, licensed an invention he produced with his lab to the startup MagArray.

MagArray was created in 2005 by Wang and Robert White, professor of electrical engineering, to improve molecular diagnostics. The startup uses nanotechnology to refine methods for diagnosing complex diseases such as cancer.

Despite the many intricacies of the licensing process, Wang said the patent process would be “much more difficult…and complicated” to navigate without OTL.

Jeffrey Schox, consulting associate professor and founding member of Schox Patent Group, also described the licensing process as extensively nuanced. According to Schox, there are three pillars for dealing with patent rights: scientific understanding of the technology, legal understanding of intellectual property and, of course, business consultation.

The founders of Solar Junction gather in the Quad for a photoshoot. (Courtesy of James S. Harris)

He said that there is often tension between the inventor’s tendency to downplay the potential of his invention and the OTL’s interest in optimizing its commerciality. After all, Schox said the OTL “does not want to get this wrong” and “miss the next Google.”

Another obstacle can be the ambiguity of a product’s ownership. In many cases, it may be unclear whether the product belongs to Stanford or to the inventor.

“This confusion could restrain the inventions here on campus and it could also restrain the funding of those startups,” Schox said, adding that the inventor’s uncertainty can be a deterrent and make investing seem less attractive.

For example, in Stanford v. Roche, an intellectual property case that recently reached the U.S. Supreme Court, the University challenged professor of medicine Mark Holodniy’s right to give the rights of his patent for a method of HIV detection to Roche, a biotech company not affiliated with the University.

Yet, despite the potential ambiguities that have arisen and continue to plague the licensing process, director of OTL Katharine Ku emphasized that Stanford’s policy is “very similar to most universities’ policies.”

Despite this, the OTL and other licensing centers are key to making projects like Harris’ super-efficient solar cells a reality and to changing the way people live today and in the future.