Patents are in the DNA of research universities. Professors attain tenure within the universities’ “publish or perish” environment. Patents are a key vehicle to publish the professor’s breakthrough ideas. The Museum of Fine Arts in Boston presents an exhibit of early man-made flints. Apparently, the flint makers from 60,000 years ago knew almost everything there was to know about sharp technology, because 30,000 years later, flints can be made only a bit sharper. To manage a research university as if everything of significance has already been thought of is a bit Neanderthal. However, as a research university creates new patented ideas it creates a key asset for the university and society at large. Patent analytics becomes a tool for managing, monetizing and commercializing the patented ideas for these universities’ and generates a greater good for the community at large in the form of economic development.

In the previous month’s issues, we started the discussion of “Why Use Patent Analytics?” In this discussion we identified Fortune 1000 companies, New Ventures, Investors, Lawyers and Governments as potential users of patent analytics. In this list we overlooked one key potential user – Research Universities. This month we are addressing that constituent. In our previous articles we also identified four types of patent analytics that could be useful: Patent Component Analysis, Bibliometric Analysis, Expert Opinion Analysis (Subject Matter Expert), and Financial Modeling. In this article, we will look at the potential use of these analytic tools within Universities.

Universities once considered patenting to be antithetical to academic science. One of the most striking shifts is the rapid growth of patenting by universities. Now the debate continues about whether and when patents promote innovation within the university setting, but in practice, the patenting philosophy has changed – seeking revenues to further their research efforts, U.S. universities are patenting in unprecedented numbers. In 2007, universities had 3,345 issued patents.

What does a patent portfolio say about your University? Does it suggest that you are the most prolific at developing patentable technologies like the University of California System, Massachusetts Institute of Technology (MIT) or Stanford University? Does it say that you have a research program that facilitates commercializable breakthrough technologies such as E–Ink Corporation, or BOSE from MIT?

Commercialization within the U.S. economy is concentrated in regional centers of innovation that include one or more universities. A university’s insight and its ability to attract new minds is a critical driver of the innovation hubs. However, a university often needs support in commercializing the new ideas due to a lack of management talent, venture funding, and support services that all new ventures require. These are the added assets that make a university anchored innovation center blossom into the bubbling cauldron of economic growth.

How can Patent Analytics support university programs?

Patents Analytics bring more than revenue to universities – they bring insight. Patent Analytics identifies others working in the same technology that can become valuable collaborators. The analysis highlights enterprises that could apply the University-generated breakthroughs into new products and services. The analytics can show linkages between key research trajectories that need to be explored. But clearly one of the most valuable uses of patent analytics is to identify potential licensees or commercialization partners.

Patent Analytics is one methodology that provides insight into value and strategic fit in an industry. While IP professionals often talk about the ability of Patent Analytics to identify gaps, "hot spots" and emerging technologies at a microeconomic level, we often forget that the macroeconomic trends established from Patent Analytics can also speak to national competitiveness and global patterns of innovation. The macroeconomic data provides a refreshing look at the “big picture,” something that can also serve as a global innovation roadmap for any technology driven university. So how can each Patent Analytic approach support the University?

Patent Component Analysis

Patent Component Analysis can support not only the university but also the professor. As inventors are typically technologically adept but not legally savvy, they receive support in the development of a patent application. The patent component analysis can show the professor the relative strength of patent drafting approaches and provide options for the professor to participate in the drafting process in a more informed manner. It can allow the professor to understand the advantages of broadly or narrowly written claims. It can help the professor understand prior art and its impact on the patent application. In short, it provides an analytic method to involve the inventor in the patent drafting process.

With the appropriate collaboration of an inventor and the patent agent, the process will accelerate and create more defensible patents. While an inventor will not necessarily understand the form and function of a patent, the quantitative patent-to-patent comparisons provide the tools to educate the professor on the process and allow him to be more effective in the development of the patent application. Once the application is written, the inventor can also better understand the communication between his agent and the Patent Office.

With a database of patent component indicators across all agents a patent component analysis can help a university select the appropriate agent to assist in the patenting process. Patent agents can be analyzed based on their technology expertise, potential competitor independence and the style they normally use in drafting patents. In short, Patent Component Analysis can become a strong collaborative tool between the Professor/Inventor, the University Intellectual Property Leadership and Patent Agent.

Bibliometric Analysis

Bibliometric Analysis is a key tool for Professors to understand the evolution of an idea. Specifically, at the start of any research project is a scan of the current state of knowledge. This research activity is similar to a prior art search for patents. Bibliometric Analysis is a process that can accelerate this search within both patent databases and within research literature. This white space analysis can guide the initial research activities into novel areas.

Having completed a patent, Bibliometric Analysis is a process to help Universities accelerate the commercialization of the patents. While Universities are not in the business of commercializing technology, some, such as MIT, make it an institutional philosophy that commercializing patented ideas is valuable. This results in commercial spin offs that grow and support the development of the local economy and reinforce Centers of Innovation. As a process, Bibliometric Analysis can identify the partners needed to energize this cauldron of entrepreneurship.

In the event that a University is not interested in the commercialization of university ideas, the process can identify likely licensing candidates. These candidates could also become sponsors of the next step in the research process.

Expert Opinion Analysis

As discussed previously, one of the key patent analytic approaches uses an expert to generate an opinion about the patent or portfolio. The expert could have experience in the appropriate technologies, industries, accounting or legal fields. As stated, this approach is highly dependent on the skills and experience of the selected Subject Matter Expert (SME). Within the university setting, this approach is applied in the form of research collaboration and peer review for research projects. This collaboration and peer review is normally focused on the technology under the research. However, it may bring multiple disciplines together to provide new insight into a technology-focused problem.

Moreover, the professor is likely to be a Subject Matter Expert within the technology. This suggests that rather than using Expert Opinion Analysis for a patent, a university’s professor/inventor may be an Expert Opinion or SME to others patenting within the same space.

However, the Expert Opinion Analysis can support the university in an out-licensing program. Most Research Universities manage a repository of patents that have emerged from the professor’s pursuit of insight. While in some cases the professor may be interested in commercializing their ideas, in many cases the professor has no interest in this activity. Nonetheless, both the professor and the university may be interested in the compensation that can come from transforming ideas into products. Research Universities have organizations that manage patent prosecution and out-licensing of patents. This group could benefit from Expert Opinions who identify the commercial applications for existing patents and monetize the asset through licensing.

Financial Modeling

Financial Modeling is a powerful tool to estimate the value of a patent that already has a licensing revenue stream or product revenue stream that can be aligned with the patent. Within the university environment, there is little need to further understand the value of a patent once there is a revenue stream. As such, these institutions have limited use for this patent analytic approach.

Research Universities as anchors for regional Centers of Innovation

California University System

The University of California (UC) is a public university system in the State of California. At present, the UC system officially describes itself as a "ten campus" system consisting of the campuses – with the exception of Hastings College of Law – UC Berkeley, UC Davis, UC Irvine, UC Los Angeles, UC Merced, UC Riverside, US San Diego, UC San Francisco, UC Santa Barbara, and UC Santa Cruz. University of California is a part of the state's three-tier public higher education system, which also includes the California State University system and the California Community Colleges system.

The 10-campus UC system is highly successful in transferring patented technologies to firms that commercialize them, developing new products and services with the potential to give a competitive market edge and lead to company growth and job creation. UC also fuels competitiveness by educating a continuous stream of next-generation innovators, entrepreneurs and highly skilled Research & Development (R&D) workers. UC produces nearly 7-percent of the nation’s approximately 41,000 new Ph.D.’s a year. More than 300 R&D-intensive firms in California have been founded by UC scientists and engineers.

Technology to deliver and manipulate Web content was burgeoning in the early 1990s. Dr. Michael Doyle, Eola Technologies president and former UC researcher, co-invented the technology to allow interactive applications in Web pages, which previously was limited to static information and helper applications. The U.S. Patent No. 5,838,906 was issued to UC on November 1998 and licensed exclusively to Eola in October 1994. The patented technology is a key component of the interactivity available on the Internet today. It allows web page developers to embed interactive programs in Web pages. A browser, equipped with the University of California’s patented technology, is able to deliver that interactivity to the user. For example, the technology is used often with stock information, video players, games, virtual real estate tours and other interactive Web content.

Silicon Valley

Silicon Valley is the southern part of the San Francisco Bay Area in Northern California. The term originally referred to the region's large number of silicon chip innovators and manufacturers, but eventually came to refer to all the high-tech businesses in the area; it is now generally used as a synonym for the high-tech sector. Despite the development of other high-tech economic centers throughout the United States, Silicon Valley continues to be one of the leading high-tech Centers of Innovation because of its large number of engineers and venture capitalists. Carnegie Mellon University (West Coast Campus), San José State University, Santa Clara University, Stanford University and UC system all contribute to the research and work force development that has been crucial in the state’s economic growth and global competitiveness, especially in the key industry clusters of biotechnology, telecommunications, information technology and electronics manufacturing.

Route 128

Massachusetts Institute of Technology (MIT) has one of the oldest and most respected technology transfer programs in the country. MIT is located at the center of the Route 128 technology beltway around Boston, Massachusetts, which gives this Center of Innovation its name. The term "Massachusetts Miracle" refers to a period of economic growth in the state of Massachusetts during most of the 1980s. The growth was heavily centered in high-tech industry and financial services, often from ideas spawned at MIT. This innovation continues, as in each of the past five years MIT’s Technology Licensing Office has signed more than 100 option and license agreements. This innovation-centered boom is illustrated by older firms like Bose Corporation founded by Amar G. Bose, a professor of electrical engineering from MIT. Bose Corporation develops and manufactures audio equipment including speakers, amplifiers, headphones, automotive sound systems for luxury cars, automotive suspension systems, and performs some general research. As of 2005, the company had 12,000 employees worldwide and had revenues of over $2.8 billion U.S. in fiscal year 2008 (ended March 31). It can also be seen through newer ventures such as E-Ink Corporation, headquartered in Cambridge, Massachusetts, which invented small flexible electronic displays.

Research Triangle

The Research Triangle, commonly referred to as "The Triangle", is anchored by the cities of Raleigh, Durham, and Chapel Hill. The region comprises two MSAs: Raleigh-Cary, and Durham, North Carolina. The University of North Carolina at Chapel Hill, North Carolina State University (NCSU) and Duke University are located in this region. Although the name is now used to refer to the geographic region, "The Triangle" originally referred to the universities and their research facilities, as well as the educated workforce they provide. The Triangle's population is among the most educated in the United States, with one of the highest number of Ph.D.s per capita.

By combining North Carolina State University’s academic research and innovations with the expertise of global industry partners, they have maximized innovative collaborations to support real- world solutions. NCSU has 68 startup companies and over 110 commercialized products to their credit. One such success story is a patented freshness and quality protection tool that maintains the just- harvested quality and freshness of fruits and vegetables called SmartFresh℠ Quality System. The science behind the discovery was conducted by researchers at NCSU who studied the natural ripening process of apples at this university in the 1990s. AgroFresh, Inc., founded in 1999, acquired the resulting technology, called 1-Methylcyclopropene (1-MCP) technology, refined and marketed it as the SmartFresh℠ Quality System, and continue to pioneer cutting-edge commercial applications for the technology.

Top 10 Patenting Universities

To highlight some of the technological successes of universities', we can use The Patent Board's indicators to take a glimpse into the top patent innovators from research universities where they rank.

Quality vs. Quantity

The Patent Board’s patent portfolio quality-based indicators grew as a natural extension of their science literature analysis provided to the National Science Foundation for their biennial Science & Engineering Indicators report that has been presented to the President of the United States and U.S. Congress since the initial report in 1972.

One of their many indicators Industry Impact™ looks at the broader significance of a university’s patent portfolio by examining the impact its patents have with other patents. The score indicates the role each institution’s patents play in serving as a foundation for other patents and technologies. With patent increasing significantly, most research universities have significant asset value in patents. The distribution of value across a university’s patent portfolio can be highly skewed, with a small number of valuable, high-impact patents and large numbers of patents of marginal importance. Patent Analysis can help IP professionals focus their time and efforts on those patents and activities that add the most value.

While University of California continues to be a high volume patenting university with over twice that of MIT patents granted each year, they are not represented in the top 10 most impactful patent portfolios among the universities. This is in stark contrast to Industry Impact™ leader William Marsh Rice University. Rice University has developed a small portfolio with an impact of 4.395 – more than four times that of all patents.

Summary

As our society moves from the manufacturing era to the knowledge age and as our economy is increasingly innovation-based our university systems are instrumental in supporting the innovation hubs around the country. These Centers of Innovations often use local networking and relationships to stir the cauldron of commercialization that drives the economic development within that area and attracts the next generation of entrepreneurs. Patent Analysis is a critical approach to enhance the economic development of those areas and identify valuable connections to other Centers of Innovation.