Wednesday, January 30, 2008

University research gives boost to practice of IP law
Schools nationwide are using technology transfer offices, which include legal services, to protect patents, copyrights

By Katheryn Hayes Tucker, Staff Reporter  

Some of the hottest activity in intellectual property law these days is
taking place on campus.  *It is increasing,* said Chris J. Kellner, an associate GC at Emory
University focusing on intellectual property law who was hired in 2005
from Kilpatrick Stockton's IP group. *My sense is that in the past,
universities may not have been as savvy about IP issues as other
comparable-sized institutions.*

But that is changing. Universities all over the country are increasing
their patent and copyright activities related to a growing range of
research and adding to their ranks of in-house expertise.

Last fall, Georgia State University offered its first Corporate
Intellectual Property Institute, a two-day event that offered corporate
IP legal professionals information on brand licensing, patents, business
development and legal counsel. Presenters included in-house lawyers from
such corporations as Cox Communications, General Electric, IBM,
Coca-Cola, Kimberly-Clark Worldwide Inc. and Pitney Bowes. Another
presenter was Perry Binder, a legal studies professor in the GSU
Robinson College of Business. Binder also provides advice as a
consultant on IP matters, particularly copyright issues. IP activity in
the university level is "growing and evolving," he said.

Emory University alone in the past year has done $384 million in
sponsored research that led to 150 new invention disclosures, according
to Todd Sherer, associate vice president of research and director of the
Office of Technology Transfer.

In addition to using legal services from Kellner and the rest of the
Emory legal department, Sherer's operation depends on outside counsel
support from a number of law firms, mainly: King & Spalding; Morris,
Manning & Martin; Womble Carlyle Sandridge & Rice; and Sutherland Asbill
& Brennan.

To understand the practical meaning of university technology transfer,
consider the new drugs to help people with AIDS. According to Sherer, 80
percent of prescriptions used in the life-saving HIV drug cocktail were
invented at Emory and patented with the help of the university's
lawyers.

Most every large university now has a technology transfer office, which
is a place where law, business and academia converge to preserve rights
to use and commercialize new discoveries and innovations resulting from
scientific research. This definition comes from the Association of
University Technology Managers Web site www.autm.net. This is the
professional organization for university IP world.

According to AUTM, prior to 1980 fewer than 250 patents were issued to
universities each year and discoveries were seldom commercialized for
the public's benefit. In contrast, in 2002, AUTM members reported 5,327
new license agreements signed. Between 1991 and 2004, annual invention
disclosures increased more than 290 percent, new patents filed increased
nearly 450 percent and new licenses and options executed increased 510
percent.

What caused this relatively sudden explosion in academic IP
developments? In this case, it took an act of Congress.

It all goes back to the 1980 Bayh-Dole Act, according to Sherer. The
act was co-sponsored by Sens. Birch Bayh and Bob Dole. It enabled
universities, nonprofit research institutions and small businesses to
own and patent inventions developed under federally funded research
programs. The law provided incentives for universities to protect their
innovations and for industry to make investments. Before that, new
discoveries from federally funded research passed immediately into the
public domain.

According to AUTM, the Bayh-Dole Act has been called possibly *the
most inspired piece of legislation to be enacted in America over the
past half-century.* This quote came from The Economist in an opinion
piece entitled *Innovation's Golden Goose.*

Revenue realized as a result of licensing activities by universities is
shared with the creators, according to a formula developed by the
institution. Some of the money is reinvested in the research and the
institution.

For example, Emory shares a third with the inventors, Sherer said.
Two-thirds stays at the university, divided among the central
administration, the school, the dean's office and the department.
*What makes all the money-90 percent-is royalties,* said Sherer.
*It takes years.*

Indeed, it's a long-term business, which is why it's only recently that
the 1980 act has begun to bear real fruit for the universities and the
public. *It takes a minimum of three years for the first patent to
issue, probably 10 years for all the patents to finish in other
countries,* said Sherer. *It really takes time for the regulatory
clinical stages. It can take 10 to 15 years for a new drug to hit the
market.*

It's a slow-moving process in a world where change happens slowly
anyway. *It's a very new activity in a culture that's been around for
hundreds of years,* said Sherer. *It's just a cultural change. But
now everyone is thinking more about inventions.*

Staff Reporter Katheryn Hayes Tucker can be reached at ktucker@alm.com