Ian McClure with Dr. Eli Capilouto
Ian McClure with Dr. Eli Capilouto
As one of the country’s top research-based institutions, the University of Kentucky has a proven track record of advancement across a number of fields.
UK’s newly reorganized Office of Technology Commercialization (OTC) aims to better capitalize on these achievements through patents, partnership deals and start-up companies that could potentially provide a lucrative revenue stream for the university and for the inventors of the technology, as well as strengthen UK’s reputation as an innovation leader.
“Technology transfer, as a discipline and as an industry, has evolved over the past 10 to 15 years towards a much more proactive, deal-making space,” said OTC Director Ian McClure. “We want to make sure that we are as best-positioned as we can be to take advantage of all the opportunities that we know exist here in Lexington.”
UK ranked 69th among the top 100 universities worldwide that were granted the most U.S. patents in 2016, according to the National Academy of Inventors. According to recently released figures from the OTC, the department has already received more issued patents at the close of this fiscal year than any year prior, doubled the number of license agreements it executed compared to the previous year, and increased its total number of patents filed.
Additionally, the OTC has created a searchable database of its saleable technology so that companies can more easily see what’s available; created a UKAccel program in partnership with the Von Allmen Center for Entrepreneurship and Lexington’s Awesome Inc. business accelerator to mentor inventors in launching a new company; and provided support though its UK Pitch program for researchers to attend conferences and events in order to promote their projects to potential investors; among other outreach efforts.
“The intellectual property development process is only the beginning,” McClure said. “The real value proposition that an office like ours can provide is the ability to develop those networks and pathways to get things licensed, develop industry partnerships, and also to cultivate and harvest startup companies along a path to VC tech funding.”
McClure, who was recently named among the top 300 IP strategists in the world by Intellectual Asset Management magazine, started in his position last October. Soon after, UK’s former “Intellectual Properties Development Office” was rebranded as the Office of Technology Commercialization to signal its focus on the monetization and ongoing support of university-generated advancements, rather than just on administrative patent filing.
The department was also restructured into three distinct teams — Intellectual Property Development, Strategic Alliances and Programs, and Licensing and Commercialization — in order to better serve its mission.
Several new hires have also helped bolster the OTC’s Licensing and Commercialization division, including associate director Eric Castlen, a senior tech manager from the University of Louisville; commercialization manager Alex Porter, who previously worked in pharmacy and biotech with the Sedulo Group in Louisville; and contracts coordinator Ali Bocook, a 2016 graduate of UK’s College of Law.
The OTC also employs five part-time fellows — graduate students and Ph.D candidates — who conduct most of the initial research on new inventions brought to the OTC from throughout the university. Very few will past muster as a unique and potentially valuable innovation, but those that do move forward through the patent process and other steps needed to protect the intellectual property. The OTC also uses its resources to either seek a commercial license for the invention with an established company, or helps to fund, organize and launch a startup company built around the product.
Under this structure, 40 percent of all revenues are returned to the inventor, 40 percent go directly to the college and to the department of the inventor, and the final 20 percent is retained by the UK Research Foundation, which uses the funds to build other research-based programs.
“At minimum, 60 percent of all revenues get pumped right back into what I call renewable research,” McClure said.
About 60 percent of the OTC’s portfolio is health care related, McClure said, while UK’s College of Agriculture and the Center for Applied Energy Research also generate a large number of new patents and licensing agreements.
“Tech transfer is a volume game,” McClure said. “Very few things that are disclosed through university-based research actually become licensed and return royalties and get used as products in the market, but for those that do, there’s real success and the ceiling is quite high.”
A strong technology transfer office also has great implicit value when it comes to recruiting and retaining top-talent research faculty.
Said McClure: “They want to be able to benefit from their inventions, and they need to see a well-run tech transfer office that can support their career and support their inventive activity.”