By Sita Pappu, Assistant Vice President for Commercialization
Washington State University (WSU) researchers untangle complex problems to enrich the quality of life for society. Research conducted by WSU faculty and staff safeguards the health of humans and animals. It helps ensure the security and abundance of our food supply. It cultivates sustainable sources of energy to power future generations. Discoveries and innovations fuel prosperity across the state, nation, and world. This work is the foundation that will help us reach our Drive to 25 goal of becoming one of the top 25 public institutions in the United States by 2030.
But how do those solutions created from research happening inside labs become game changing innovations in the market place? That’s where the Office of Commercialization (OC) comes in.
The OC provides evaluation, protection, and commercialization of innovations and discoveries. It helps to further enhance these research innovations and discoveries by bridging the gap between WSU researchers and industry.
Bringing Innovations to the Marketplace
The OC works with researchers to ensure their innovations and discoveries are evaluated, protected where possible, and licensed by industry partners or start-ups to move technologies forward and generate benefits for researchers, WSU, and the public.
An invention is defined as “something new that did not previously exist.” A researcher’s invention is the product of their unique intuition or genius, and as such, can be distinguished from ordinary mechanical skill or craftsmanship. Inventions may occur in any field and address market or technical needs.
Before researchers publicly disclose their invention, our office will make sure it is protected. Before presenting at a conference or publishing in a journal, researchers will need to submit an invention disclosure to the OC so we can protect their discovery. Disclosing an invention to us is as simple as filling out a questionnaire. To do so, visit the Inventor Portal. From here, researchers can start, save, and submit their disclosure; attach documents; add co-inventors; interact with our office; and track progress. We also help protect material when transferring to other organizations, which safeguards any intellectual property when sending it to outside sources.
Next, we look at how new and unique the innovation is and compare it to the market to see how well an innovation will do, given that the market can also be specific and unique. We use the disclosure as our launch pad to find market segments and explore areas to see if there is potential value for an invention or any competing innovations or technologies.
Once we have completed our market assessment, or sometimes concurrently, we need to ensure the innovation is protected. While the goal of protecting an innovation stays the same, filling the necessary documents to do so can be quite different based on jurisdiction. Once all necessary items have been reviewed by our office, we will fill out all necessary paperwork to patent, copyright, or trademark the intellectual property.
For example, a WSU Gene and Linda Voiland School of Chemical Engineering and Bioengineering research team led by Haluk Beyenal created a device using a mild electric current to take on and beat drug-resistant bacterial infections. The electrochemical scaffold device for wound healing reduces atmospheric oxygen to H2O2 at constant concentrations to kill the bacterial cells in the wound bed without damaging tissue. The “e-scaffold” device is a highly effective and antibiotic-free scaffold to protect wounds against biofilm invasion, and to treat infected wounds without causing oxidative damage. Basic research and data collection have been generated and initial proof-of-concept for the device have been demonstrated in laboratory models. Additionally, the effectiveness and superior performance of the device has been verified. A PCT patent application was filed. The “e-scaffold” is gaining interest from several major wound care companies. The researchers are also exploring the possibility of creating a start-up company themselves.
Creating a Start-Up
For researchers who may not want to go through the process of licensing their innovation through a third party, another option is forming a start-up company.
First, researchers will need to develop a preliminary business plan and submit it to our office. The business plan should identify product(s), the business model, markets, company management personnel, the development process and timeline, financial costs, capitalization or funding required, and financial projections for five years. The business plan needs to be specific enough that our office and the company can begin to negotiate the deal framework and identify meaningful milestones for the license. Our office will then review the company’s business model and determine whether a viable case is possible.
When a start-up company involves a University faculty member, a plan is developed describing the relationship between the company and the faculty’s university research and students. This plan identifies and mitigates potential conflicts of interest, and should be initiated as early as possible with the Office of the Vice President for Research.
A license for a technology will only be granted to a company demonstrating the capability of developing the technology into a commercial product. Once the license drafts are exchanged and the final deal terms and contract language is negotiated and agreed upon, the license agreement becomes finalized. Next, a start-up must disclose the current levels of financing, equity value or capitalization at the time of license signing and must reach specified levels of such financing within an agreed-upon time.
Protium Innovations was formed as a start-up by WSU graduate students in a researcher’s lab. The start-up develops ways that hydrogen purification technology can be used for hydrogen powered cars. With nine different technologies and 17 patents, the team is focused on the hydrogen purifier and specialized tank design. The start-up has garnered interest from NASA for other applications, as well as international companies looking to partner with Protium Innovations. The team is pursuing SBIR funding to pursue the opportunity and develop the business to bring their product to market.
Working with industry for sponsored research
For research that is funded by an industry partner, our office connects those industry partners with researchers. This contact is done in conjunction with the Innovation and Research Engagement Office (IREO). Sometimes a researcher may have an idea for a technology or product, but lacks research funding. We guide researchers through WSU policies and help facilitate discussions with industry by putting in place non-disclosure agreements to protect your discoveries. We also help develop a project scope and budget and facilitate proposal submission in collaboration with the Office of Research Support and Operations (ORSO). All industry proposals must be submitted through ORSO using the e-Rex process.
The OC also works with IREO to identify industry partners that might be interested in connecting with WSU researchers. These industry partners usually are interested in innovations that may be reaching the stage where investment for commercialization is possible. By helping to match an industry organization’s interests with WSU’s talented faculty and students, the OC and IREO assist in establishing partnerships and collaborations that are mutually beneficial for their organization and for WSU.
One example of how industry partnerships work is illustrated by the Program in Individualized Medicine – or PrIMe. Most herding breed dogs have a genetic predisposition to adverse drug reactions involving over a dozen different drugs. The most serious adverse drug reactions involve several antiparasitic agents such as ivermectin and millbemycin, the antidiarrheal agent loperamide, and several anticancer drugs. These drug sensitivities result from a mutation in the MDR1 gene, a multidrug resistance gene.
Katrina Mealey, associate dean for WSU College of Veterinary Medicine and Richard L. Ott Endowed Chair in Small Animal Medicine and Research, developed a test that will detect if a dog has a multidrug sensitivity in order to prevent serious adverse drug reactions. This technology was protected and licensed world-wide to several industry partners. The partnership with industry then created a stream of revenue for further research, created jobs within WSU, and brought additional research funding into the program. Many other similar industry partnerships are either underway or in development across the WSU system providing valuable funding support to our researchers.
Protecting your Intellectual Property
Once we have helped you decide on the best way to bring your innovation to market, we want to make sure a researcher’s intellectual property is protected. IP refers to the creations of mind, such as inventions; literary and artistic works; designs; and symbols, names, and images used in commerce. IP is protected in law through one of the various means such as patents, copyrights, plant patents, plant variety protection certificates, and trademarks as appropriate, which enable people to earn recognition or financial benefit from what they invent or create.
The Intellectual Property Committee serves as an advisory committee to the Vice President for Research on all university intellectual property (i.e., patent, copyright, trademark, and proprietary information), especially with regard to university policy on these matters. The committee also helps establish and guide the OC policies and procedures in protecting and preserving the rights of WSU researchers. You can find more information on WSU IP policies in the faculty manual and the Executive Policy 38 on IP.
Growing research through Innovation
In 2016, WSU President Kirk Schulz set forth a goal for WSU to become a top 25 public research institution by 2030. This goal requires us to not only increase our research portfolio, but also our research and development expenditures. One way we can accomplish this is through research that sparks new innovation, and doing so through industry partnerships creates new funding sources for additional research.
As innovations developed at WSU play a large part in growing our research portfolio through this means, the OC continues to work with researchers to grow the number of innovations. We have seen steady growth in active inventions and patent applications that led to growth in our royalty revenue, which reached $3 million in fiscal year 2018.
The OC is well-positioned to make an impact and help grow our research and innovation by generating new streams of funding. The innovations developed at WSU have an impact on our state, nation, and the world. For instance, WA 38, a brand new apple variety developed by WSU tree fruit breeders, has sold a record number of trees and will begin producing the first round of the Cosmic Crisp® apples for sale in late 2019. Much of the generated revenue will help advance the research that led to this discovery. Similarly, many of the wheat varieties developed by our wheat breeding programs are making significant impact in the state of Washington, as well as in the nation, with the generated revenue contributing to further the research programs.
WSU intellectual property policy (see faculty manual sections IV.G. and H) allows for sharing license income with inventors, creators and contributors. The distribution policy allows for the units and programs also to share in the revenue in order to continue to fuel the research engine.
Supporting innovation through funding and simplified, transparent and tailored processes
Over the past three years, our office has worked to make the IP protection and commercialization process more simplified for researchers looking to bring their innovations to market by providing researchers with streamlined processes and clearer policies.
For instance, we have revised our Intellectual Property policy in the Faculty Manual. This covers IP disputes, revenue, and copyright ownership. We now also have a new Executive Policy on IP (EP 38), which is now being implemented. Additionally, we have streamlined the process for IP intake, evaluation, and management with college and faculty involvement and introduced greater transparency into the process. This clarity includes market assessment and market targets, patent search reports to inform patenting decisions in combination with market assessments, and technology review panels for inventor appeals through the IP Committee.
We also recently streamlined our conflict of interest activities. This includes a complete overhaul of process, including Bylaws, forms, online tracking, COI and OC websites, FAQs, and more. We also have implemented tech transfer management plans and have created waiver forms for inventors working closely with ORSO.
The WSU Commercialization Gap Fund (CGF) was re-established in 2014 with a generous donation from the Washington Research Foundation to support projects over a two-year period. The goal of the program is to support projects that have a high chance of being commercialized but are not likely to get there without gap funding. These awards are intended to be the final funding step to advance innovations from the lab to the marketplace. The OC works closely with the awardees and provides support throughout the year to ensure the projects are reaching milestones and moving toward a commercially viable product.
The CGF has continued annually beyond the initial two-year period and since the CGF’s re-establishment in 2014, a total of over $2 million has funded 48 projects. These projects include technologies with nine issued patents, 12 provisional patents filed, two trademarks filed, and one copyright filed. Additionally, 20 of the technologies have signed licensing deals with outside companies and 11 start-up companies have been formed. The gap funding support resulted in $5.2 million follow-on funding for these technologies from external agencies.
We also offer flexible commercialization models by tailoring commercialization frameworks that fit the market opportunity. One such example is the counter bias training developed by WSU Spokane researchers. An internal model was implemented to make it possible for our researchers to offer this training program, which has brought new funding to WSU to help train the Cleveland police force.
When innovations successfully make it to the marketplace, it benefits the researcher and WSU. We know the process can seem overwhelming. But that’s where our office comes in to make the process as simplified as possible. We help inform you about what options are available and which one is the best option for your innovation. We walk you through the process and help take your innovation from the laboratory and make it market ready.
To close, we are here to support your research and move your innovation to marketplace.