As published in CURE News, March 2005.

UConn’s CSTC Commercializes Faculty Inventions

This is the third in a series of articles on the activities of UConn’s Office of Technology Commercialization (OTC).

UConn’s Center for Science and Technology Commercialization (CSTC) manages the commercial application of the discoveries, inventions, and technologies developed at The University of Connecticut. Each year the CSTC receives approximately 75 new invention disclosures from UConn faculty and files about 20 new patent applications. Ten to fifteen commercial development agreements (options, licenses, etc.) are completed annually, according to Dr. Michael Newborg, executive director of the CSTC.

Along with the Technology Incubator Program (TIP) and the UConn R&D Corporation, the CSTC is part of the University of Connecticut Office of Technology Commercialization (OTC). The three programs provide a variety of resources to support entrepreneurs as they begin patenting and licensing and move to funding and commercialization.

Dr. Newborg has a background in zoology and immunology and was director of research licensing at Bayer Corporation for five years before coming to UConn to head the CSTC in 1999. Besides Dr. Newborg, the CSTC is currently staffed by three directors of technology licensing:

Donna Cyr received her Ph.D. in physical chemistry and worked for five years at Rohm and Haas before coming to UConn. She is responsible for handling inventions in the physical sciences.

Greg Gallo has a Ph.D. in molecular biology and was at the pharmaceutical division of Bayer Corporation before coming to UConn. He is responsible for evaluating discoveries in the life sciences.

Charles Goodwin received his Ph.D. in biochemistry. He worked for Rhone-Poulenc before joining UConn. Having passed the patent bar exam, he oversees patent filing and prosecution for UConn inventions.

In addition, the CSTC plans to add an electrical engineer to its staff to help evaluate the commercial potential of faculty inventions. Candidates have been interviewed and a decision will be made shortly, says Newborg.

Dr. Newborg and his staff meet twice per month to evaluate invention disclosures by the faculty and to update their progress toward commercialization. In evaluating the commercial potential of an invention, the CSTC looks at the invention’s technical strength, its potential to become valuable in the marketplace, and the likelihood that UConn will be able to obtain and enforce a patent on the invention.

If an invention is considered to be a reasonable risk, the CSTC will seek a patent on it. However, even before a patent is issued, the University may sign a confidentiality agreement with an interested party in order to expedite exploration of commercialization opportunities. That is often done in cases of sponsored research, Dr. Newborg says. If a faculty inventor already has an established relationship with a company, the chances of moving the invention into commercialization are much better than if the CSTC must “cold call” on potential commercial partners.

Rather than license to an existing partner, the CSTC may ask the UConn Research & Development Corporation, a separate entity formed to help UConn start new businesses, to form a new business entity. That is not the usual route, however. Compared with 180 patents issued over the years, most of the deals are licenses to existing companies. Nevertheless, eight or nine new companies have been formed to commercialize new faculty technologies.