 Office of Technology Licensing (OTL) |
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| Q: What is your profession?
Q: Who can use your services to license a potentially marketable idea? KU: Faculty, students and staff are the biggest users. All Stanford personnel sign intellectual property rights agreements that channel their inventions through us for licensing if they've made more than incidental use of Stanford facilities to make their discoveries. Q: What is incidental use? KU: Telephones and computers, for example, but the use of reagents or out-of-the ordinary equipment not found in a typical work environment probably wouldn't be incidental. Practicing physicians who see patients here but work in a lab elsewhere probably wouldn't be required to assign inventions to Stanford. By the way, since 1994, projects funded by gifts are no longer exempt from Stanford's intellectual property rules. Q: How do you pitch projects?
Q: Could a nonfaculty physician use your services? KU: Yes, if the physician has a Stanford University affiliation of any type, such as a clinical faculty appointment. Q: Would there be any reason for someone to voluntarily license an idea through you and pay your 15 percent overhead levy? KU: Yes, there could be. If the idea required extensive expertise to pitch to a potential developer and/or if the inventor was too busy to deal with details, we could probably get an idea into the marketplace that might otherwise have gone nowhere. Q: What should a practicing physician look for when assessing whether his or her invention has patent potential? KU: Something that is new and commercially viable and not a "me, too" item that solves an existing problem in a different and hopefully superior way. It's important to look at benefits realistically. For example, we'd really be interested in talking about an idea that would significantly save surgery time, while improving cost effectiveness, efficiency or safety. But significance plays in here, too. A device that can shave one minute from a two-hour operation but increases the cost of surgery substantially is probably not going to be viable. SMITH: You have to be able to define the item in a distinctive way that carves out legal protection for it. Oftentimes you don't get over that hurdle. Q: When should people with ideas contact you? KU: Often people come to us fairly early in the process, generally after they've talked with someone else who says, "You should talk with OTL." Q: How do inventors ensure their ideas are translated accurately into a patent? SMITH: Understanding the invention is the patent attorney's job. The discussions involve a lot of give-and-take and dialogue. Q: Do you get cold calls? How do you triage them? SMITH: Yes. Cold calls are directed to associates. Usually people are pretty articulate, and if they are willing to spend 20 minutes on the phone and follow up by filling out our invention disclosure form, we can pretty well figure out whether we've got something with potential. Sometimes we'll do some research, on the Web, for example. We may find items that are similar. Then I go back and say, "This is what I found. How is your invention different from these kinds of things?" Sometimes they're not different at all. KU: Busy practicing docs may not always be aware of what has been invented already. They don't see something in the marketplace, so they think, "I've discovered the solution." Sometimes, the solution has already been patented, but for various reasons - manufacturing complexities, the market wasn't ready, etc. - it just hasn't been commercialized. Sometimes, an item may be a small improvement but is vastly more complex - and consequently more expensive to manufacture. That kind of invention is difficult to patent, obviously. Syringes are a good example of this phenomenon. Everyone is interested in safer syringes, but manufacturers may not be enthusiastic if they have to retool their entire plant to manufacture an item that will raise overall health costs - especially if the benefits are ultimately marginal. SMITH: Too many bells and whistles can be a downside. Q: Do you ever get excited about a product only to find it's already on the market? KU: That's really rare, but it has happened. We were excited about an off-road jogging bike someone came up with only to find it was on the market with comprehensive patent coverage. SMITH: What typically happens is that someone thinks he or she is going to have a big invention only to realize that pieces of the pie have already been invented, so what you wind up with is something that may be too narrow to be useful even though it may be patentable. KU: What Jesse is describing is called a "narrow patent." We're not looking for narrow patents because these can be "invented around" really easily. So what we would really like are broad conceptual patents that could last a fair number of years without being invented around. We're looking for broad enabling patents, not just a lot of little inventions to boost our statistics. Q: OK, can you discuss a recent invention that looks better than what's out there? SMITH: For example, we have a stent developed by researchers in Astro/Aero [Department of Aeronautics and Astronautics]. It's called an expandable space frame. The frame is a tubular structure that can be collapsed to a small size and then expanded to a diameter several times the collapsed diameter without a change in length. Expansion ratios as high as 10 to 20 can be achieved, which is a real improvement over existing technology in the historically crowded stent field. Q: How did you get involved with the stent? SMITH: Because the inventors are aeronautical engineers, they weren't associated with cardiovascular physicians who could give the stent a real-world evaluation. The Medical Device Network was really launched when we put the engineers in the same room with Paul Yock and a few of his colleagues. Everyone was well motivated and the engineers were able to articulate their device in terms the physicians could understand. Q: Paul, could you tell us about the Medical Device Network?
Q: You're running a contest for the best idea to eliminate the anastomosis problem in heart surgery. Is that an example of this cross-pollination? YOCK: Absolutely. We found that while Stanford surgeons were pioneers in less invasive heart surgery, the technology had reached a bit of a plateau. In March, we held a couple of public and private meetings, including a session that brought together inventors, doctors, venture capitalists and other business folks. We developed a set of priorities, clinical and technical. One of the key issues was that the surgeons found it was just too darn hard to work on a beating heart. We listened, and then said, "Great, we're going to turn that around and issue a challenge to the Stanford community to develop a better anastomosis device." Kathy agreed to support it. There's a $2,500 prize for the best idea. We've got an enthusiastic group of young physicians, engineers, students and staff working on the problem. If the winner has a really great idea, we'll go to OTL and ask Kathy to consider taking this forward through patenting and licensing. We hope to have a couple of these challenges every year. Q: Is there a barrier in getting people to share? I think if I had a hot idea, I'd be reluctant to go public. YOCK: That's an important point to discuss. Understandably, people are very worried about telling the wrong things to the wrong people. They're very worried about whether they should come through the university or go outside the university. There needs to be a faculty-student advocacy group that helps people walk through this very complicated set of issues. The MDN is designed to offer this service - to be a safe and confidential resource to provide information and advice. And, yes, there are all kinds of landmines. When we issued our anastomosis challenge, the first e-mail we got back was, "If I submit an idea, does my idea automatically belong to Stanford?" There is a lot of misunderstanding of how the whole system functions. I think that's something that we can help with. Q: What reassurances can you give that their ideas won't be lifted? YOCK: For any idea evaluation, we'll be happy to sign a nondisclosure agreement, which is a legal document stating that we understand that this idea is being brought to us. It documents the fact that it's their idea. And that is about as safe as you can get. Beyond that, like any other business relationship, the basis is trust. KU: At some time anyone with an idea will have to go to someone knowledgeable for some feedback. YOCK: Yes. What many people are doing now are making connections that are sometimes haphazard and dangerous. I hope we can convince people that it's going to be safer to work with this organization that has an identity; it has accountability within the university and to the Office of Technology Licensing. That isn't necessarily true if they go to their neighbor, who is a venture capitalist. Q: Is the Medical Device Network open to nonfaculty physicians? YOCK: They are certainly welcome. Our overarching goal is technology transfer. Q: Why should researchers who are on the fast track take time to talk to neophytes? YOCK: We have a leadership group in the Medical Device Network, and these people have committed to putting in time and energy. The main reason is that they like doing it. They have had a measure of success themselves; they're interested in mentoring other people to share that success. And they also are very much aware that major progress in device development stems from cross pollination. Q: Can you mention some examples of items OTL helped move to the marketplace? KU: Yes, we recently set up a display of such items for a party. We found HIV sequences that are being used on Affymetrix's Gene Chip. It's a diagnostic tool that assesses a patient's therapy and progress. We licensed the MultiFit care package, developed by faculty cardiologist Robert DeBusk and colleagues. This is a series of multimedia products that help people triage risk for heart disease. Another cardiologist, John Cooke, started a company, Cooke Pharmaceuticals, which manufactures food bars based on an amino acid, L-arginene, reputed to lower the risk of atherosclerosis. J. Martin Brown, a cancer biology researcher, in collaboration with SRI discovered a drug, tirapazamine, for treating head and neck cancer patients. That drug is in phase III clinical trials, and the manufacturer, Sanofi-Winthrop, has expressed optimism that FDA approvals are coming soon. These are biomedical products. We also have a huge range of inventions outside the biotechnology realm - from semiconductors to telecommunications. Q: What do you recommend to a faculty member who is faced with a dilemma of publishing data for academic reasons or withholding information that might be patentable later? KU: We often joke that faculty have a better chance of winning the Nobel Prize than of making millions and millions of dollars from a licensed invention. Put another way, we don't recommend withholding publication. Overall, it's much better to be "the first one out there." Cohen/Boyer was a U.S. patent only, which meant, he published and then we filed. In theory we might have made more money in that case if Cohen and Boyer had withheld publication. That would have facilitated foreign patent rights. But then again, because foreign patents are very, very expensive, we do not always file them. SMITH: However, for sponsored projects, there is often a contractual obligation not to publish for a period of time, usually a maximm of 90 days. KU: The university is really quite protective of a researcher's right to publish. Q: What is your relationship with sponsored projects? KU: For awhile a few years ago, we were a co-joined office. The Sponsored Projects Office handles research agreements before the research happens, and OTL handles arrangements after the research has happened. There is obviously a close relationship since most of our inventions arise out of sponsored research, both government and industrial. We do have within OTL the Industrial Contracts Office (ICO) which gets involved at the sponsorship stage by developing industry contacts. We have the ICO in this office because typically the area of intense negotiation revolves around intellectual property; OTL has expertise and experience in intellectual property. Q: How do you work with UCSF Stanford Health Care? KU: We have a short letter agreement that says we could handle Stanford Hospital inventions if they want us to. We have handled a couple of inventions from UCSF Stanford Health Care by request. Q: Is Stanford unusual in its ability to put together medicine and biotech? KU: I think so. The other comparison is always Boston. But MIT doesn't have a medical school. Harvard doesn't have as strong an engineering program as we do. And I think Silicon Valley is much more entrepreneurial than the area around Route 128 in Boston. YOCK: I think there are some other special qualities. One, there is the willingness to fail among people in the valley. Second, there is a very horizontal sort of organization between the engineers and the academics with a lot of flow back and forth, rather than the more hierarchical, vertical structures that exist in the Boston area. Networking happens so naturally. People meet in the same restaurants, the engineers go out and have a beer with students. That cross-fertilization is unique. Q: In what areas do you expect inventions next? YOCK: The functional restoration area - better prostheses for knees, hips. The next big breakthrough area involving Stanford I think is going to be in the area of the lining of joints to support metal prostheses. In cardiovascular medicine, we have an extraordinary collection of individuals who have been successful in catheter-based devices and in less invasive cardiac surgery. Those two areas are going to produce things. SMITH: I would suggest tissue-engineering - collagen replacement, for example. YOCK: Yes, that's an important area that we could give more attention to at Stanford. Two other areas are therapeutic blood vessel growth (angiogenesis) and image-guided surgical planning and navigation. KU: Diagnostic chips, real integration of small-scale engineering - all this nano stuff - with biotech. Q: Before I leave, I can't help asking: What was the most creative - not necessarily practical or lucrative - potential invention that you can recall? KU: I'd probably have to say the holographic stop sign that was supposed to be easier to see on the highway at a greater number of angles of view than usual signs. We sat there and talked about it a little bit. Would it be distracting on the highway? We talked about the cost. Would the sign be a help or a hindrance? It turned out not to be marketable for us, but it certainly was interesting. Return to |
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KU: We're bees. We
pollinate. We're at the interface of business, science and law. Another interface is
university, industry and government relations. We have a niche, and our work requires a
wide background, including sales and marketing. 
SMITH: We're on
the phone a lot, certainly, talking with appropriate people at companies, sending
nonconfidential abstracts to companies, etc. 
YOCK: It's a
grass-roots organization, develped around faculty who have been successful on their own at
medical device development but until now haven't cross-pollinated much. We're interested
in putting these people together, developing a little bit of a community and, hopefully,
accelerating the device development process. We're also anxious to connect folks in
academics with industry. Finally, MDN will provide a mentoring service for young faculty
and students. 