Q
& A: To market, to market
Where
does all the research the Magazine covers in "Investigations"
go? Some ends up in the hands of Alan Thomas, MBA'91, director
of UCTech, a.k.a., the University's Office of Technology &
Intellectual Property. He figures out whether the work is something
the University should patent and market to investors.
Since
the office's 1987 founding as a University affiliate called
ARCH Development Corporation, it has seen some 1,500 inventions.
Revenues from patents on those discoveries-about $3 million
in royalties per year-are growing at an annual rate of 15 percent.
When ARCH's senior management spun off from the University in
July 2001 to form their own private venture-capital firm, the
provost reconfigured ARCH as UCTech, an internal University
office, naming Thomas, ARCH's licensing director, its head.
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Alan Thomas of UCTech shepards U of C inventions to
market.
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Under
Thomas, a former chemical engineer who interned at ARCH in the
late 1980s while earning his MBA, the office has increased "invention
disclosures" -the forms faculty complete when they think
their work has market potential-from a one-time high of 60 in
1998 to the current average of 120 per year, three- quarters
in biological-sciences research.
How
do you find inventions?
When
you have been on campus awhile, you get to know the labs. You
have a group of "usual suspects" who have invented
in the past and whose research you understand, and they know
you. We also track the press, keep in touch with other administrators-the
provost's office, deans, development folks-and keep our ears
to the ground. The longer we're around, the more of a reputation
we build and the better we cultivate those feeder networks.
How
can you tell if something has market potential?
We
ask three sets of questions. First we address what we call "hygiene"
or "encumbrances." For instance, patent law has fairly
strict rules regarding public disclosure of research. If you
publish, present your work at a conference, put it on a Web
site, submit it as an abstract-that constitutes an absolute
bar on ever getting foreign patent protection and gives you
12 months to get patent protection in the U.S. Loss of the ability
to get good patent protection can severely circumscribe an invention's
commercial potential.
Second
are the compared-to-what questions. Not, What is it?, but, How
does it stack up against what's out there? For example, if someone
invents a car that can go 200 miles per hour, you have to compare
that to other fast cars. It's not the 200 m.p.h., it's the difference
between it and the one that goes 198 m.p.h.
Third:
"Who cares?" A car that can go 200 m.p.h. backwards
is novel but not useful. Will someone pay for an invention's
distinctive advantage?
At
the end of the day, alongside the analysis, it's about risk
management, hunch, and intuition.
How
do you reconcile the need to publish with the patent rules?
We
recognize publishing as an imperative, but we spend a lot of
time raising the faculty's awareness. The message we try to
convey is, Call us early and call us anytime. Don't think you
have to wait until something is about to be published or meets
your standards as worthy of publishing to disclose.
In
fact, commercialization can be the most effective way of disseminating
inventions and discoveries. Here's a classic example: if someone
in the BSD were to discover a life-saving drug and wanted to
be altruistic by publishing it and giving the recipe away, the
odds are it would never be developed. The average cost to develop
and test a drug is $800 million. No one will invest that if,
after they bring it to market, all the generic manufacturers
can step in and make it too.
An
example from Chicago is a computer-aided diagnosis tool for
reading mammograms developed by our radiologists since the 1980s.
On average, mammographers miss 15 percent of early-stage breast
cancers. Working with a correctly trained computer, they only
miss 5 percent.
The
researchers, led by Kunio Doi and Maryellen Giger, PhD'85, could
have dedicated those algorithms to the public. But that would
likely have delayed development. Instead, the research was patented
and licensed to R2 Technology, which has raised some $100 million
in venture capital to productize those algorithms, conducted
extensive clinical trials, and received FDA approval in 1999.
Sales have exploded, and over 3.5 million women have now been
screened with the tool.
Is
it difficult to find investors far from the venture-capital
hubs?
It's
not easy. But a growing number of people in Chicago work with
early-stage technology.
Part
of what makes this job enjoyable is building relationships with
investors in the city and region so they're there when deals
come along. We do it in dialogue, not trying to create the perfect
investment package. Instead, I'm constantly asking, Is this
something you're interested in or do you have ideas about potential
partners for development?
What
are some sleepers that you think hold big promise?
SmartSignal,
a company we founded, is based on technology that came out of
Argonne. It's a computer-software platform that anticipates
a machine's failure long before it happens. SmartSignal's technology
was first disclosed in 1988. Now its customers include Delta
Air Lines, for jet-engine monitoring; Archer Daniels Midland,
for chemical plants; and Sun Microsystems, for computer hardware
and software reliability.
In
the physical sciences, David Grier's holographic optical tweezers
licensed to Arryx, a company we cofounded, are going to be the
internal combustion engine of nanotechnology.
But
I hate to leave anyone out. This business is similar to Hollywood's
blockbuster-based economy. You make all your money on one film-and
sometimes it's not the one you expected.
UCTech's
current list of inventions ranges from surgeon John Alverdy's
device for "laparoscopic gastric volume reduction"
and linguist John Goldsmith's software for "unsupervised
learning of the morphology of a natural language." Learn
about these and other discoveries at http://uctech.uchicago.edu.