Universities are becoming increasingly aggressive in the patent game, causing friction at times with companies that sponsor academic research and creating controversy over a perceived focus on short-term research and its financial rewards.
As academia's patent pot races well past a billion dollars annually, the players are multiplying, with smaller colleges finding innovative ways to assert their intellectual property and international universities portraying themselves as friendlier to corporate partners than their U.S. counterparts.
The rise in academia's patent activity is well-documented. U.S. universities, which filed just 1,584 patent applications in 1991, asked for 10,517 in 2004, three times as many as IBM, the corporate leader in worldwide patent filings.
By any measure, patents have become big money on campus. University revenue from patent licenses jumped by one count from just over $200 million in 1991 to more than $1.3 billion in 2004. Consider:
• A startup bought about 500 patents from as many as 60 U.S. colleges.
• ARM Ltd., in a deal with a top-tier university, has agreed to pay the salaries of the school's research assistants and, in turn, take co-ownership of any patents they file.
• A high-level committee is scheduled to lay out guidelines this week for handling intellectual property deals between academia and industry.
While most university patent revenue comes from royalty agreements, part comes from equity in startups spun out of university research in deals brokered by college tech-transfer offices. Universities spun out 462 startups in 2004 and took equity in 240 of them, according to a report by the Association of University Technology Managers (AUTM).
In the last decade the number of people employed in university tech-transfer offices quadrupled, going from 413 in 1992 to 1,649 in 2004, said a report by AUTM. A National Research Council report noted that in 1980 only 24 universities had a tech-transfer office. Now, nearly all do.
The growth in patent activity these days is with second-tier colleges, said Don Merino, general manager for acquisitions at startup Intellectual Ventures LLC (Bellevue, Wash.). The hope is to create multiple patent portfolios they can spin out as separate companies. Intellectual Ventures has already cut deals with as many as 60 mainly smaller colleges including the University of California at San Diego (UCSD), New Jersey Institute of Technology and Stevens College to buy as many as 500 patents it will organize into focused portfolios for licensing. Some colleges are already getting IV's royalty checks.
"I like to think of myself as a market maker, providing a lubricant to make things happen," said Merino, a former head of licensing for Intel Corp. and General Instrument Corp. "We act as an aggregator. I think that's very valuable."
So does Alan Paau. An assistant vice chancellor at UCSD who runs the tech-transfer office, Paau said, "Some people fear [Intellectual Ventures] will do assertion licensing and force people to pay royalties, but the positive side is they put a lot of effort into assembling good portfolios.
UCSD transferred several patents to Intellectual Ventures, including one on videoconferencing that started earning royalties in March. "Sometimes, we don't have the time, money or expertise to pull a whole patent portfolio together," Paau said, explaining the deal.
The university files about 100 patent applications a year and usually sees about half of them approved. It made $21 million last year on patent royalties, slightly less than half of what tech-transfer offices at Stanford or MIT rake in each year.