With government funding becoming stingier by the day, commercialization budgets are getting squeezed at a time when disclosures are on the increase. This mismatch is frustrating, to say the least, and many TTOs are scrambling to find ways to stretch their patent budgets. One of the more intriguing approaches to the problem is being piloted at the University of South Florida (USF) in Tampa.
In October, USF introduced a new option that will enable faculty to reap greater royalties from their innovations if they kick in some funds on the front end to go toward patent costs. Called the “Revenue Incentive Patent Cost Sharing Program,” the specifics are pretty simple: Faculty who choose to kick in 25% of the costs related to protecting and maintaining patent rights for their innovations will then be set to receive an additional 5% of any proceeds. At USF, this would bring the share that faculty receive from licensed innovations from 45% to 50%.
At press time, even as the approach was only just being introduced to the faculty at USF, the idea was already catching fire at TTOs around the country. However, while some TTO directors are already gauging whether the approach would fly at their institutions, others see potential problems with the approach.
Administrators at USF stress they are piloting the program for one year to see what comes of the approach, although they don’t anticipate much in the way of any potential downside. “It is not mandatory. All of our faculty are not paying 25% of the direct costs. It is a not a requirement,” stresses Valerie McDevitt, the assistant vice president for patents and licensing at USF. “This will be used only in circumstances where the faculty have a direct interest.”
Innovations that have already been licensed or are under option are not eligible for the program, but there are no other exclusions, says McDevitt. “If the faculty have a desire to participate, they would make a request to us,” she says. “We would then go through a process of verifying that there are no conflicts or issues related to that participation, and then we would enable them to participate.”
Paul Sanberg, senior vice president for research and innovation at USF, and president of the USF Research Foundation, explains that the idea for the program came in part from his discussions with TTOs in other countries that give faculty inventors more options to invest in their discoveries in exchange for a greater stake on the backside. “In the past, if I had been offered this kind of option, and I really believed in my innovation, I probably would have gone for this,” he says.
At the same time, Sanberg is hopeful that the program will enable USF to pursue more of the technologies that are promising but tend to fall by the wayside now. “There aren’t many TTOs at American universities who can afford to patent all the disclosures that are submitted. You want to do the best you can, but there are some [innovations] that are always on the verge. They are good, but when you prioritize, they end up on the margin,” he says. “We thought this is an opportunity. If faculty truly believe and we believe in a technology, and it is on the margin, if we both go in as more of a partnership then we will go with it.” A detailed article on the patent cost sharing program appears in the November issue of Technology Transfer Tactics. To subscribe and access the full article, and hundreds of other case studies and success strategies in our online archive, CLICK HERE.