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}
 }

• 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 (1996)
• 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

• 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
• Logs of all variables except indicator variables
• Probit for frequency of sponsored research
• INVDIS: number of disclosures
• TTOSIZE: number of licensing individuals
• TTOEVAL_1 = 1: if TTOs that said licenses/patents are "not very important"
• TTOEVAL_2 = 1: if TTOs that said licenses/patents are "moderately important"
• PROOF: % of licensed disclosures that were "proof of concept but no prototype"
• PTYPE: "Prototype available but only lab scale"
• MEDSCHL: 1 if med school exists
• QUAL: academic quality of faculty (1993 NRC's survey results of academic quality of Ph.D. granting departments)
• LICENSES: number of licenses executed
• SPONRES: amount of sponsored research
• SPONFREQ: frequency that sponsored research is tied to license (according to TTO)
• patent apps grow 1-to-1 with disclosures
• sponsored research grows with licenses executed
• more licenses executed at universities with large TTOs and med schools
• higher royalties with higher quality of faculty and higher fraction of licenses executed at later stages of development
• additional disclosures generate smaller % increases in licenses, which generate smaller % increases in royalties (TTOs generally effective at tapping pool of available technologies in their universities)

Thursby, J., Fuller, Thursby, M.: US Faculty Patenting: Inside and Outside the University (2009)

[3]

 @article{thursby2009us,
  title = "US Faculty Patenting: Inside and Outside the University",
  author = "Jerry G. Thursby, Anne W. Fuller, and Marie C. Thursby",
  journal={Research Policy},
  volume={38},
  number={1},
  pages={14--25},
  year={2009},
  publisher={Elsevier},
  abstract = {This paper examines the empirical anomaly that in a sample of 5811 patents on which US faculty are listed as inventors, 26% of the patents are assigned solely to firms rather than to the faculty member's university as is dictated by US university employment policies or the Bayh Dole Act. In this paper we estimate a series of probability models of assignment as a function of patent characteristics, university policy, and inventor fields in order to examine the extent to which outside assignment is nefarious or comes from legitimate activities, such as consulting. Patents assigned to firms (whether established or start-ups with inventor as principal) are less basic than those assigned to universities suggesting these patents result from faculty consulting. A higher inventor share increases the likelihood of university assignment as compared with assignment to a firm in which the inventor is a principal but it has no effect on consulting with established firms versus assignment to the university. Faculty in the physical sciences and engineering are more likely to assign their patents to established firms than those in biological sciences.},
  filename={Thursby et al (2009) - US Faculty Patenting},
 }

• only 62.4% of patents by university faculty members of 87 universities were assigned solely to universities
• identifying US university patents by institutional assignment misses significant percentage of faculty innovation in US universities
• higher inventor share increases likelihood of university assignment compared with assignment to a firm where inventor is principal
• possibilities: faculty in low share universities may be more willing to seek outside remuneration via assignment to start-up where they are principal; revenue shares may not affect startup activity but simply reduce number of inventions disclosed to university

Sources

• Faculty names from NRC
• Compared with inventor names in NBER Patent Database
• Excluded faculty who do not patent

Patent/Inventor Pairs

• MIT: 315
• Wisconsin: 232
• Stanford: 223
• UC San Diego: 216
• UC Berkeley: 207

Out of 5811 patents:

• 1513 assigned solely to firms
• 241 assigned to both firms and universities
• 327 unassigned
• faculty are principals in assignee firms for 32.3% of patents assigned solely to firms and 24% of patents assigned to both (lower bound)

Valdivia: University Start-ups: Critical for Improving Technology Transfer (2013)

[4]

• Current emphasis on licensing patents, but most university TTOs do not generate enough to cover operating expenses

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

[5]

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."
• "the Act's provisions expressed Congressional support for the negotiation of exclusive licenses between universities and industrial firms for the results of federally funded research"
• licensing revenues account for only a miniscule portion of universities' overall academic budgets
• the acceleration in growth of patenting and licensing began before the passage of the Bayh-Dole Act so this acceleration cannot be wholly attributed to the Act
• "the flow of knowledge and technology between university and industrial research is a two-way flow," despite previous characterization as wholly from academia to industry
• patents seem to be "especially important channels for technology transfer" in the biomedical sector

Data Sources

• 5 different case studies

1. Cotransformation: a process to transfer genes into mammalian cells (Columbia University).

2. Gallium Nitride: a semiconductor with both military and commercial applications (University of California).

3. Xalatan: a glaucoma treatment (Columbia University).

4. Ames II Tests: a bacteria assay for testing potential carcinogenic properties of pharmaceuticals and cosmetics (University of California).

5. Soluble CD4: a prototype for a drug to fight AIDS (Columbia University).

Critiques

• focuses on case studies as source of data

Dornbusch, Schmoch, Schulze, Bethke: Identification of University-Based Patents: A New Large-Scale Approach (2012)

[6]

Specific for German case, but certain points can help us

European convergence to US model (Bayh-Dole seen as main driver behind growing patent portfolios of US universities)

• University-owned patents (assigned to universities or their TTOs) and university-invented patents (assigned to university-affiliated authors)

• matching lists: matching lists of university staff/professors with inventor data
  • time-consuming, costly, possibly not updated
  • typically limited to tenured professors
  • does not include Ph.D. students, assistants, lecturers
• matching authors of scientific publications and inventors on patents
  • beware of homonyms

===Singh A. and Wong P.K: University patenting activities and their link to the quantity and quality of scientific publications (2009) === [AnetteSingh_PKWong.pdf]

Findings

• patenting by 281 leading world universities has consistently grown faster than

general American patenting from 1977 - 2000

• North American university patenting growth has slowed relative to universities outside North America since

the mid-1990s

• Between 2003-2005, they found that university patenting output has significant correlation with the both the

quality and quantity of scientific publishing in North America

• In European and Australian universities, patenting correlated only with the quantity of scientific publishing,

not with the quality

• In universities Europe, Australia, and North America, patenting correlated only with the quality of scientific publishing

Data Sources

• USPTO Patenting Data
• Shanghai Jia Tong University's Academic Ranking of World Universities (ARWU)
• Times Higher Education Supplement's World University Ranking (WUR)
• Quantity was measured by counts of publications
• Quality was measured by citations to said publications
• the relationship between research and patenting was evaluated in two ways

1. At the institutional level: patents assigned to universities

2. At the individual level: patents with university researchers as the inventors

Critiques

• citations are not really a perfect measure of research quality and citations have little to do with practical use

of the study (i.e. how much technological innovation is generated as a result of academic research publications)

Other Discoveries