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Patents reward research, boost economic growth

There could be gold in that junk mail you threw out — or maybe a royalty check. Just ask Pat Moore, a scientist in the small fruit breeding program at WSU’s Puyallup Research and Extension Center. About to toss out an offer for expensive document framing, Moore realized the company was pitching it to him to frame his new patent. It was the first he’d heard that his raspberry, WSU 1090, had just been issued Washington State University’s most recent patent as of Feb. 10, 2004.

WSU Puyallup began its raspberry breeding program in 1928 and has since released nine new varieties. However, WSU 1090, sold commercially as Cascade Delight, is the only raspberry in this program to have been patented. It is unique in its tolerance to root rot as well as its high production of large, firm fruit with good flavor.

University researchers have held a stake in protecting their inventions since the first WSU patent was awarded to Mark Adams and Edward Holt in 1951 for “an alleged new and useful improvement in the production of aluminum compounds.”

Today “technology transfer” plays an important role in Washington State economic development. The successful wheat, wine and cherry industries are just a few examples of how innovations by WSU researchers are being used commercially to stimulate economic growth throughout the state and region.

From proteins to apples

Among WSU faculty with intellectual properties (IP) currently filed for patenting is Neil Ivory, professor of chemical engineering. Known for his work in the field of proteomics — the study of proteins — Ivory and his colleagues have developed and patented a new type of large-scale electrophoresis technique dubbed “dynamic focusing.” Electrophoresis is a method of separating substances, especially proteins. This technology and others have been licensed to the Protasis Corporation, a Massachusetts company, which is actively involved in further development and commercialization.

According to Ivory, dynamic focusing will be useful in many areas of biotechnology, proteomics (such as the Genome Project that seeks to identify the 30,000 genes in human DNA), industrial bioprocessing and biochemical/medical analysis.

Another active player in the IP arena is VMRD, Inc., a Pullman-based veterinary diagnostics company closely tied to the College of Veterinary Medicine. VMRD licenses many different technologies invented at WSU, such as monoclonal antibodies and tests for diseases like babesia and equine infectious anemia. The company’s latest patent involves a test for anaplasmosis, a blood parasite common in ruminants.

Tree fruit horticulturist and plant physiologist Lawrence Schrader, who works at WSU’s Tree Fruit Research and Extension Center in Wenatchee, together with colleague Rudolf Kammereck, recently patented a product to help prevent sunburn and insect damage to Washington apple crops. This technology has been licensed to a Wenatchee-based company, Fruitgard™ LLC, which is helping to market the product as Raynox™.

Although it’s tempting to stand in front of lucrative new product displays wondering “why didn’t I think of that!” the reality of getting an invention patented is a long, drawn-out process some researchers prefer to avoid. In Moore’s case, development of the Cascade Delight raspberry began with seedling crosses 15 years ago.

With the patent in place, WSU is allowed the legal right to sue if unlicensed propagation of the raspberry is discovered. However, this is not always easy or successful. VMRD President Scott Adams explained: “No IP is 100 percent protected by a patent, especially if it is something of high economic value. Having a patent is like a padlock on a building — people get out the bolt cutters and blowtorch if they want it badly enough.”

Action accelerates in 1984

Collegiate technology transfer had its origins in the late 1800s with the creation of land-grant universities such as WSU. Their three-part mission of teaching, research and extension included a service agreement for extending education and technology transfer to the public. In response to this mission, the WSU Research Foundation (WSURF), an independent, non-profit organization, was established in 1939 to manage WSU’s intellectual property assets.

“Really, not too much happened at WSU until the passage of the Bayh-Dole Act in 1984, when universities were finally allowed to take ownership of inventions funded by federal grants,” said Ken Spitzer, interim director of WSU’s Office of Intellectual Property Administration, which reports to WSURF. “The act places responsibility on the university to report, protect and commercialize their inventions for the public good.”

Indeed, only a handful of technologies were patented at WSU from 1940 until 1970. During the 1970s, a few patents were issued in wood engineering technologies and one for a new variety of barley. “Today, 80 percent of WSU invention disclosures have to do with agricultural biotechnology, including plant breeding, genomics, diagnostics or composition of materials,” said Spitzer.

For 2002, WSURF listed 147 active cases with net royalty revenue of $482,565. However, not all cases become patented; they may be licensed or protected with a copyright, trademark or trade secret instead. For example, WSU Creamery manager Russ Salvadalena said that although the name Cougar Gold is not patented, it was first used in March 1952 and later trademarked for $150 in 1967.

In 2003, WSURF received approval for 14 U.S. and nine foreign patents.

Of time and money

Jim Petersen, vice provost for research, said WSU employees are legally required to disclose potential inventions that have been developed using university personnel, facilities or equipment to WSU’s Office of Intellectual Property Administration. Depending on its economic potential, an invention may then be transferred to WSURF for legal protection and will be owned by the foundation, not WSU. In general, it takes about 2 years from licensing a technology to having a patent issued, and 7-10 years to come to market as a consumer product.

“Costs for filing and attorney fees in a simple case are about $10,000,” said Spitzer. “More complex inventions may cost up to $25,000 for a U.S. patent, and foreign patents could cost up to $200,000.” In addition to helping obtain patents, WSURF seeks to license technology to outside parties who, through further development and start-up companies, make the products available to the public. “The usual royalty is about 1-7 percent of net sales,” said Spitzer. This money first comes back to WSURF to pay off initial investment costs and then is distributed between the WSU research labs that produced the technology and the inventor(s), who are free to use the money as they please.

In Moore’s case, for propagated plants such as raspberries, 50 percent of royalties go back to the small fruit breeding program in Puyallup, 30 percent to the research team, 10 percent to the Agricultural Research Center in the College of Agricultural, Human and Natural Resource Sciences, and 10 percent to WSURF.

“Often, licensing fees and royalties are a small part of the total income associated with an invention,” said Petersen. “When we license a technology, that company often chooses to invest further into research grants at WSU to build on that technology. And along the way, students may be involved as co-inventors and benefit from learning about business,” he added. “In the end, having a good organization helps attract outstanding faculty who would like to get their ideas out into the public.”

For all to enjoy

Today, Washington consumers are enjoying the benefits of many WSU “ideas” — from Columbia Valley wines to hard red winter wheat rolls and Pardina lentil soup. When licensed, Cascade Delight raspberries will be mainly sold on the west side of the state.

But Puget Summer, a late ripening strawberry variety developed by Moore and patented in 2000, is available from Klicker Berry Farms out of Walla Walla. These strawberries are often sold at Palouse-area grocery stores and fruit stands along with WSU patented Rainier and Chelan cherries. Get your orders in early!

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