Patent licensing

I mentioned that the automotive composites consortium is working with NIST, under one of the CRADAs. CRADA once an obscure acronym, has become very popular in Washington, DC. If federal research initiatives are to be fully successful, the results of this research must be transferred to industry, where they can form the basis for new and enhanced products and processes. Traditional mechanisms exist (such as contracts, patent licensing, and the like), but I don t think any of them are quite as powerful as the CRADA... 

Settlements Involving Patent Licenses or Supply Arrangements... 

Table 3-2 Settlement Agreements Involving Patent Licenses... 

Genentech and Immunex announce patent license agreement for immuno-adhesin technology forENBREL... 

The Caltech Technology Transfer Office has issued approximately 40 to 50 patent licenses and options each year. That makes it approximately number three in the nation, which is remarkable for a comparatively small institution. In short, the Technology Transfer Office succeeded because it convinced the faculty that they were there to serve the professors, not the administration or the venture capital community. 

Ned D. Heindel, Lehigh University I happen to have a reprint here from Technology Review for September 20013 which lists the institutions with the number of patents obtained. Caltech is right up there—third or fourth in the nation. Then institutions are listed based on economic return, and Caltech is down around number 20.1 quote that despite the glamour in entrepreneurship, the big money for a university usually comes from patents licensed to large, established companies—not start-ups. You indicated your administration is extraordinarily supportive of programs like that. Why ... 

During the past ten years, no less than 34 major pyrolysis projects have been proposed, designed, patented, licensed, or built (see Table 8-2). Only one or two are operational today, arguably, none on a commercial basis. Technically, tire pyrolysis is feasible but financially, it is very questionable. This section reviews some of the highlights of the financial analysis of the process and products. 

JURGEN FALBE is Executive Vice President of Ruhrchemie AG, Ober-hausen. He received his PhD in Chemistry from the University of Bonn in 1959. His responsibilities include research and development, engineering and application technologies, patents, licensing, documentation, and environmental affairs. 

Many of these characteristics still apply to much of the collaboration operating between U.S. universities and industrial firms today. Nevertheless, many of these collaborations contrast with others that center on patent licensing. There are some important contrasts to keep in mind between this old style and what we see emerging since 1980. A number of features of the post-1980 relationship between U.S. universities and industry are illustrated by the origins, growth, and decline of the Research Corporation during the 1940-1980 period. 

Pertinent patents dealing with the toluene-to-phenol process are listed in Table XXL It is difficult to judge, based on the published literature alone, which of the processes described in the patents are practiced. According to a recent article, Dow Chemical Co. apparently manufactures phenol by processes described in their own patents as well as by some California Research Corp. patents licensed to Dow (8). A schematic flowsheet illustrating the technical execution of the process is given in Figure 3. 

Because the Department intends to rely on this technology for regulatory purposes, the antibodies must be well characterized with respect to specificity, cross reactivity and other parameters. However, some individuals, wishing to protect their ability to patent, license or market antibodies and related chemicals, are reluctant to share information about the antibodies they have developed, because they are unsure about how the information might be used. 

Patent attorneys who represent institutions which are developing antibodies and related chemicals, and who wish to retain rights to patent, license or commercialize those research products, approach negotiations defensively. It is easier to find out what they are not willing to do than to determine what they are willing to do. In California, we have found it very difficult to get patent attorneys to declare the nature of their interest and to explore ways the prodicts of research can be used by public and private institutions. 

A discussion and review of legal and scientific issues that arise in negotiations for corporate/university patent license agreements and corporate sponsored university research arrangements in the area of biotechnology is presented. Some approaches for negotiation of disputed issues are also considered. The topics discussed are ... 

The university/corporate research collaboration, and a subsequent patent license, should also benefit the public at-large by making possible the rapid development and effective use of inventions. The public also benefits when a commercial entity licenses a university owned invention (perhaps created with government funding) and develops it into a viable commercial product. 

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