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Patents at Work


ark Twain once wrote that a country without a patent office is like a crab: it can move side to side and backward, but not forward. This is


a useful metaphor for explaining how innovation drives economic develop- ment, but it’s only part of the story.


Patents play an essential role in economic development because they provide inven- tors with incentives to create new things. But a patent is only a piece of paper; it provides a privilege – that’s it. What’s missing is a licensee. Someone must come forward to put the technology to use.


The Technology Commercialization Office (TCO) at the University of Utah understands the importance of finding licensees, and it has found success doing so, securing an average of 60 licenses per year in the last five years alone. Some of the licenses are to startup companies, but many go to estab- lished companies.


“Licensing agreements are challenging because it can be difficult to find an equal distribution of responsibilities and outcomes,” said John Minnick, a TCO licensing manager. “There are many assumptions that come with new technologies and a high amount of risk.”


One of many great recent examples of licenses secured by the TCO involves research by Dr. Russell Stewart, a professor of bioengi- neering at the U.


Stewart’s lab is developing new types of underwater glues by studying natural ones produced by two aquatic organisms: the sandcastle worm that lives in the ocean and builds a tubular shell by gluing sand, shell fragments and other material together; and the caddisfly larvae that builds similar protective structures using a type of sticky underwater silk.


While understanding the glues is significant in itself, Stewart has been working for the last few years to perfect synthetic versions that can be used in medical applications. For example, he has made substantial progress refining a glue to hold small bone fragments and fractures together. One challenge is making the glue stronger than the natural version, and Stewart’s lab has already made it several times stronger.


“The sandcastle worm only made the glue as strong as it needed to be for its lifestyle,” Stewart said. “But our synthetic version can easily hold a 40-pound bag of potatoes on a one-square-inch bond formed underwater.”


Outreach Results


Intellectual Property Disclosures Startup Companies


Executed Licensing Agreements New Inventors Repeat Inventors


The glue’s ability to bond underwater is the most novel characteristic about the materi-


Outreach results and licenses Outreach Results


Intellectual Property Disclosures Startup Companies


Executed Licensing Agreements New Inventors Repeat Inventors


Industry Agreements Facilitated Commercial Sponsored Research Commercial Sponsored Clinical Trials Total Agreements Facilitated


FY 2010 FY 2011 205 233


19 68 32


122


23 81 55


120


FY 2010 FY 2011 81 10 91


74 2


76


Industry Partnerships and Outreach


U researcher licenses synthetic glues M


als Stewart’s lab is developing. There are many potential applications related to bone and tissue repair. In addition to bonding in wet conditions, the glues don’t swell in wet physiological conditions when cured, which provides another important advantage over existing glues and sealants.


After Stewart released his initial findings in 2008, he received widespread interest and recognition for his lab’s work, which appeared in publications including the New York Times, Economist, Chemical and Engi- neering News, and MIT Technology Review. From that point, it was a relatively short time before Stewart found a company willing to license the technology.


Following negotiations, Stewart licensed his glue technologies to a large medical-device company that is based in the United States and has thousands of employees world- wide. The company and university finalized an initial agreement in late 2010, and they extended the license agreement in summer 2011. The agreement relates to all medi- cal and veterinary applications of Stewart’s synthetic glues.


Industry Agreements Facilitated Commercial Sponsored Research Commercial Sponsored Clinical Trials Total Agreements Facilitated


“It was easy to learn about the technology and get comfortable knowing this was a technology with great potential,” said a com- pany representative. “Some universities are hard to work with, but the University of Utah was truly responsive and helpful.”


FY 2010 FY 2011 205 233


19 68 32


122


23 81 55


120


FY 2010 FY 2011 81 10 91


74 2


76


Executed Licenses, Amendments and Options 80


10 20 30 40 50 60 70


0 FY 2006 FY 2007 FY 2008 FY 2009 FY 2010 FY 2011


Executed Licenses, Amendments and Options


21 2011 ANNUAL REPORT / TECHNOLOGY VENTURE DEVELOPMENT


INDUSTRY PARTNERSHIPS AND OUTREACH


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