University Patents

McNair Project

University Patents
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Project Overview

Goal: list of all universities and # of patents each university and patent licensing

patent reassignment to startups associated with these universities

clinical trials (from Catherine) data to rank universities R&D engagement

identify list of universities: board of regents, universities in patent data (find patterns associated with university assignees)

AUTM?

What to get from other people

Avesh has clinical trial data on wiki and bulk drive (FDA Trials Data), need to build it into normal form, use clinical trials data to rank R&D engagement of universities, will be building up portfolios of different types of companies

Marcela is cleaning up patent data

Catherine has zip codes of medical centers, use to look through patent data

Questions

• How innovative are universities compared to publicly-traded firms, etc.? (firms: 100 active patents at any given time)
• How do universities license?
• What does the average portfolio look like for universities? (compared to publicly traded, VC-backed, etc)
• What can explain the differences in rankings? (size, quality of universities, TTOs and quality/experience of workers - searched LinkedIns, geography, entrepreneurship programs, NIH/NSF grants)

To Do

1. lit review (look at for 1-2 days), look for holistic picture, what has/hasn’t been done? what are the questions people are asking?

2. look at patent data, determine how to find universities in patent database: board of regents, universities in patent data (find patterns associated with university assignees)

Lit Reviews

Thursby, J. & Thursby, M.: Who Is Selling the Ivory Tower? Sources of Growth in University Licensing (2002)

[1]

 @article{thursby2002who,
   title={Who Is Selling the Ivory Tower? Sources of Growth in University Licensing},
   author={Thursby, Jerry G. and Thursby, Marie C.},
   journal={Management Science},
   volume={48},
   number={1},
   pages={90--104},
   year={2002},
   publisher={INFORMS},
   filename={Thursby Thursby (2002) - Who Is Selling the Ivory Tower}
 }

• Reliance of industry on university inventions has increased
  • AUTM surveys show 7.1% growth in yearly inventions disclosure from 1994-1998 for 64 universities that responded every year
• Primary reason for more disclosures may be increased propensity for faculty to disclose, rather than change in research focus
• Universities becoming more receptive to industry contracts
• Negative total TFP growth of licenses executed (-1.7% annual growth) - growth in disclosures and patent applications greater than the corresponding growth in licenses executed.
  • Marginal university innovation offered to the market has declined in commercial appeal
  • Universities are delving more deeply into the available pool of innovations to increase commercial activities
• No evidence on the importance of learning by doing on the part of TTOs except to note negative association between TTO growth and TFP growth in licensing
  • Suggests at least the possibility of learning by doing effects

Other literature

• On the role of patents and publications in the transfer process: Adams 1990, Henderson et al. 1998, and Jaffe et al. 1993
• On consulting, sponsored research or institutional ties: Cohen et al. 1998; Mansfield 1995; Zucker et al. 1994, 1998
• On the nature of university licensing: Jensen and Thursby 2001, Mowery et al. 2001a,b, Mowery et al. 2001, Siegel et al. 1999, Thursby et al. 2001, Thursby and Kemp 2001

Thursby, J., Jensen, Thursby, M.: Objectives, Characteristics and Outcomes of University Licensing: A Survey of Major U.S. Universities (2001)

[2]

 @article{thursby2001objectives,
   title={Objectives, Characteristics and Outcomes of University Licensing: A Survey of Major U.S. Universities},
   author={Thursby, Jerry G., Jensen, Richard, and Thursby, Marie C.},
   journal={The Journal of Technology Transfer},
   volume={26},
   number={1},
   pages={59--72},
   year={2001},
   publisher={Springer},
   abstract={This paper describes results of our survey of licensing at 62 research universities. We consider ownership, income splits, stage of development, marketing, license policies and characteristics, goals of licensing and the role of the inventor in licensing. Based on these results we analyze the relationship between licensing outcomes and both the objectives of the TTO and the characteristics of the technologies. Patent applications grow one-to-one with disclosures, while sponsored research grows similarly with licenses executed. Royalties are typically larger the higher the quality of the faculty and the higher the fraction of licenses that are executed at latter stages of development. Sponsored research is more likely to be included in a license if the new technology is at an early stage of development or if the TTO evaluates it as important. We find that additional disclosures generate smaller percentage increases in licenses, and those increases in licenses generate smaller percentage increases in royalties.},
   filename={Thursby et al (2001) - Objectives, Characteristics and Outcomes of University Licensing}
 }

Findings

• University licensing has increased dramatically post-Bayh-Dole (1980)
  • According to AUTM 1996, licenses executed increased 75% from 1991-1996, (total: 13,087)
• Survey of TTOs of 62 major US universities
  • Majority of universities retain titles to inventions
  • All universities split income with inventors
  • Royalties generate most of the revenue of licensing

• Open question: Is the increased propensity of faculty to disclose a response to financial incentives or an increase in the effectiveness of TTOs in inducing disclosure?

Survey

• 62/135 universities responded
• 63% public, and 62% of public universities that responded were land-grant
• 37% private
• average industry sponsored research $16.9 mil, federally sponsored $149.6 mil (1996)
• average TTO: 26.3 licenses executed, 92.3 invention disclosures, 30.1 new patent apps, $4.2 mil income (1006)
• 35% of respondents had reorganized TTO since 1990
• 90% of universities allow faculty to establish and operate businesses based on technology owned by university but developed in faculty's research
• Inventions disclosed: 33% med schools, 29% engineering, 22% science, 6% agriculture, 10% other
• Majority of invention disclosures in nascent stage (proof of concept - 45% or prototype - 37%)
• Patents often applied for after knowing commercial viability, licensed technologies often not protected by patents
• 60% of universities said small companies more likely to take early stage technologies and large companies more likely to take late stage - small firms may have advantage in "innovative" research (Holmstrom 1989)
• TTOs obtain smaller upfront fees the more uncertain the technology being licensed is
• Universities usually do not take equity in the license

Regression of licensing outcomes (sponsored research, royalties, patents) to stated objectives of the TTO and invention characteristics

• Dependent variables: royalties, sponsored research, patents (new applications), licenses executed
• Independent variables: importance of outcome to TTO, types of inventions, measure of size of university's licensing operation/potential

The Bayh-Dole Act and High-Technology Entrepreneurship in U.S. Universities: Chicken, Egg, or Something Else? (2004)

http://citeseerx.ist.psu.edu/viewdoc/download?doi=10.1.1.484.1612&rep=rep1&type=pdf

Findings

• University research has an unusually significant impact on industrial innovation in the biomedical sector
• " This work also suggests that academic research rarely produces “prototypes” of inventions for development

and commercialization by industry—instead, academic research informs the methods and disciplines employed by firms in their R&D facilities."

• The U.S. higher education system is much larger and more heterogenous than other developed countries - this encourages competition
• The passage of the Bayh-Dole Act was one part of a broader shift in U.S. policy toward stronger

intellectual property rights

• "Universities increased their share of patenting from less than 0.3% in 1963 to nearly 4% by 1999, but the rate of growth in this

share begins to accelerate before rather than after 1980."