The technology transfer specialist at the University of Arizona’s College of Optical Sciences describes recent efforts to ensure that the University’s optics are translated into innovations.
The College of Optical Sciences (COS) at the University of Arizona in Tucson is regarded as one of the premier optics institutions in the world. When it was created in 1964, its mission was to educate scientists in the field of optics, with an emphasis on meeting the needs of the astronomy community and the Air Force. Today, COS has met that mission and grown beyond it. In addition to educating students, COS researchers work closely with industrial partners to transfer and commercialize new technologies in the marketplace.
COS’s reach is global, and it has inspired innovations in consumer products, telecommunications, medical devices, energy production, astronomical telescopes and instrumentation and military equipment. Of Arizona’s 150 optics-related firms, 90 percent are in the private sector, and they account for annual revenues of about $650 million—up from $100 million in 1989 and $300 million in 1994. Many of those companies were started by optical sciences faculty and students at the University of Arizona.
In the early days of the Optical Sciences Center, as the College was formerly known, optical researchers were not overly concerned about protecting intellectual property (IP) rights. Although industry ties inspired new engineering solutions, IP was considered relevant only to industry. Inventions that came from federally funded research at universities belonged to the government, and the government had no mechanism for rewarding universities for their inventions.
That changed in 1980 with the passage of the Bayh-Dole Act, legislation that allowed universities, small businesses and non-profit institutions to retain and control the licensing rights of inventions developed under federally funded research grants. The Act is intended to encourage the transfer of government-sponsored research into industry, so that the public can use new technologies and enjoy the economic growth that derives from them. If a university fails to commercialize such technology, the government retains the right to license to a third party without the consent of the patent holder.
The legislation opened the door for university researchers to generate royalty revenues, but it also gave them the responsibility for managing IP—something most faculty had not been trained to do. Indeed, the first start-up companies to emerge from the Optical Sciences Center had to fend for themselves, since the University did not yet have the resources in place to assist them. Fortunately, when Bob Breault started Breault Research Organization in the late 1970s, the company was providing services using their software and “know-how” and did not need IP management. Later, when Jim Wyant (now dean of COS) co-founded Wyko in 1982, he discovered that there were no patent attorneys in the city of Tucson to help him gain protection for the technologies that were to become part of Wyko’s product line. He had to travel to Phoenix to meet his IP needs.
To help researchers manage IP, the University of Arizona created an Office of Technology Transfer (OTT) in 1988. OTT staff work closely with faculty to determine the likelihood of patentability for their disclosures and then process the disclosures through the internal system so their patent rights will be protected. They use outside counsel for the actual patent prosecution and recover the costs through licensing agreements with industry.
Today, COS generates such a large number of optics innovations that it needs its own dedicated resource. In 2008, the Arizona Board of Regents created a new position within COS, and I took on the role of technology transfer license specialist. My job is to facilitate the flow of optics-related IP to industry. With an advanced degree in optics and offices at both COS and OTT, I am able to work closely with faculty to help them process their invention disclosures through the UA system more efficiently. I also discuss ongoing research efforts with faculty in order to generate more disclosures and to market and license the IP that results.
COS balances industry-oriented research with fundamental optical science. As the applications of optics expand further into the commercial realm, COS continues to conduct fundamental research in all aspects of optical science. In fact, it has expanded its educational mission, and it currently serves more than 400 graduate and undergraduate students.
Another way that the Office of Technology Transfer bridges the educational and commercial worlds is through the work of a graduate student intern from COS. Interns are selected to help COS researchers identify novel aspects of optics-related inventions and make them marketable. The intern, whose formal title is “Technology Transfer Fellow,” provides assistance on all optics disclosures, not just those within his or her area of study, for at least one year.
He or she focuses on understanding the truly novel aspects of invention disclosures by scrutinizing all “prior art”—or material of the same nature as the invention. Prior art is publicly available through a patent, patent application, open literature or a company product description. Each piece of prior art must be compared with the invention disclosure to determine if the invention is actually new, and, if so, precisely how it is novel.
Studying prior art to assess the novelty of COS inventions teaches students what other researchers in the field of the invention are doing that they are not revealing at conferences. For example, students get a sense of what work is being presented at conferences, what the industry is doing, which technologies are succeeding and which ones need more work when put into practice. As a side benefit, they learn whether or not their own ideas for a thesis topic are original, and if the work is foundational in nature or merely incremental.
Marketing searches, another responsibility of the Technology Transfer Fellow, can teach students how to determine the likelihood that any particular company will be interested in, or capable of, licensing the rights to the IP for an invention. In other words, do the novel aspects of an invention represent an advantage sufficient to sustain or improve a business? Examining this issue provides insight into how businesses make financial decisions about whether to adopt innovations.
Today’s universities are looking to balance their fundamental mission of preparing students for professional success with their desire to generate revenue by commercializing some types of research. The College of Optical Sciences provides an exciting platform for achieving that balance.
To learn more about the University of Arizona’s Office of Technology Transfer, visit www.ott.arizona.edu. The site provides information on innovations that are available for licensing, participating companies, and how to collaborate with researchers at the university.
Amy Phillips is the technology transfer license specialist at the University of Arizona’s College of Optical Sciences in Tucson, Ariz., U.S.A.