When UCLA Professors Ben Wu and Eric Ting first thought to
patent a new bone regeneration technique they developed, they had
little idea where to begin.
They are not alone. The process of transforming university
research into patented products and methods is a mysterious task
for the many professors who create the University of
California’s hundreds of annual patents. Additionally,
professors seeking to bring their patents to market face the
dauntingly complex legal processes of licensing or founding a
start-up company.
But through UCLA’s Office of Intellectual Property
Administration, university faculty members are able to aggressively
pursue patents for their research and potentially bring them to the
market, where the creators hope they can make a difference in
everyday lives.
“(The office’s) job is to help the UC system as a
whole,” said Wu, who researches at the UCLA School of
Dentistry.
Wu is partnering with fellow researcher Ting ““ who also
researches at the UCLA School of Dentistry ““ in an effort to
create Bone Biologics Inc., a start-up company based on the
technology developed through its new patent.
The two professors have brought their different research
discoveries together to form what Ting calls “a synergistic
collaboration.”
“My technology alone may not do much, but what (our
research) can do together is great,” Wu said. Through their
cooperation, they have created a new method of regenerating natural
bone tissue.
For their findings, Ting and Wu were awarded the Hatton Award by
the International Association of Dental Research, a first for
UCLA.
The general idea of natural bone reconstruction has been seen
before: In the 1960s, UCLA alumni Marshall Urist developed a
similar method, which uses a protein growth factor to spur the
healing of natural bone tissue. Ting said because “he
didn’t really patent it,” Urist’s method was
adopted by businesses and became very expensive, subsequently
reaching a limited scope of patients. The UC did not receive any
royalties for the discovery.
Wu and Ting hope to make their new method less expensive by
being a part of the company that licenses it. “We felt an
obligation that an invention like this should be available to the
general public,” Ting said.
Both professors agree that the Office of Intellectual Property
Administration has helped them come closer to realizing their
dream.
The office manages the majority of patents at UCLA. Staffed by
legal, business and science experts, it educates researchers in the
patent process and supports them in transferring their new
technology to the industry.
The office collects $14 million annually in gross royalties for
the UC and doles out individual royalties to researchers. As per
the UC patent policy, the inventor receives 35 percent of the
royalty, while the department or laboratory receives 15 percent.
The remaining portion goes to a general fund under the UC’s
control.
Not only does the office pay for a patent ““ which can be
$25,000 for a U.S. patent alone ““ but it supplies a legal
team to formulate its wording, which is important to prevent future
patent infringement.
UCLA researchers sign the UC patent policy, in which they
recognize that because their research is done through public
laboratories, their patents are the property of the UC. The office
at UCLA then can either license the patent to businesses to
generate royalties, or it can grant the rights of the license to
start-up companies like Bone Biologics Inc., which are expected to
competitively use the license.
The office must review which patents will be supported on a
case-by-case basis because they are so expensive. With advice from
the faculty, it determines which patents are economically
viable.
Ting expressed disappointment that the office must make choices
in what patents it can fully back, noting that it is difficult to
predict what patents will become economically viable. “A
couple years later, they may really regret that they dropped (a)
patent,” Ting said.
“There is a rational source of dollars, not an unlimited
source of dollars,” said Kathryn Atchison, the vice provost
of the office.