Arkansas Business Spotlight: Patent Primer: A Visit with Jeff Stinson of UALR Tech Launch

CaptureJeff Stinson leads the technology commercialization efforts at the University of Arkansas at Little Rock as director of UALR Tech Launch. He’s also executive director of the Fund for Arkansas’ Future, the state’s first private angel fund.

Stinson is plugged into the tech startup community in Arkansas and the research coming out of the state’s research-based universities: UALR; the University of Arkansas, Fayetteville; the University of Arkansas for Medical Sciences; Arkansas State University; and the University of Arkansas at Pine Bluff.

Stinson believes startups born of university research can bolster the state’s growing tech startup ecosystem. Many Innovate Arkansas client firms are university startups that hatched a patentable idea and commercialized it.

(Innovate Arkansas maintains a database of patents issued to Arkansas inventors and companies

IA recently caught up with Stinson to discuss the process of commercializing university research and the impact it could have on the state’s tech startup ecosystem.

IA: Tell us about the tech transfer process at universities.

Stinson: First, researchers have to let us know they have invented or developed something for which they want patent protection and/or they want to try to commercialize. Historically, the emphasis with university research has been to publish the results, but with federally funded scientific research, you have to go beyond publishing and use your best efforts to commercialize.

That’s part of the Bayh-Dole Act of 1980. Prior to Bayh-Dole, the federal government owned the intellectual property produced at all public universities. Because the volume of what they owned was so vast, they weren’t able to focus on commercializing the majority of it. Now universities own the IP developed on their campuses, but they have a mandate to try to commercialize it.

Bayh-Dole does have a stipulation that if a university doesn’t make its best efforts to commercialize a given technology, then the government can take back the IP, but that practically never happens. So the mandate for commercialization is why virtually all research universities have tech transfer offices.

IA: So, your primary mission at TechLaunch is to protect the IP produced at UALR?

Stinson: Yes, and to help researchers and inventors realize the full commercial potential of their technologies. We encourage our researchers to disclose to us at the same time they’re ready to publish. The trick with patenting is that we have to submit the patent application before it’s published. If the research is publicly disclosed in a publication or presented at a conference before the patent application is filed, it jeopardizes the ability to get a patent. Our promise to researchers is that within 60 days, we’ll assess the technology and let the researcher know one way or another whether or not we’ll pursue a patent.

IA: Are there specific criteria that must be met before you’ll begin the patent process?

Stinson: A technology must meet two tests: It has to be patentable, and it has to have significant commercial potential. To assess patentability, we review the patent database and the scientific literature to determine if a similar technology has already been invented. To assess commercial potential, we look at the size of the market, whether that market is growing or shrinking and whether competing technologies already exist in the market.

IA: How does UALR commercialize its technologies?

Stinson: We license a technology to either an established outside company or to a startup formed specifically for the purpose of taking the technology to market. The benefits to licensing to established companies include getting your patent costs reimbursed more quickly and getting the technology to market more quickly, which means a quicker path to royalty streams for universities. It can cost $20,000 to $30,000 for one domestic patent, so the ability to get those costs reimbursed sooner is a clear benefit.

IA: Why commercialize the technology through a university startup?

Stinson: A number of things, but it begins with economic development. Startup companies formed around university technologies create well-paying jobs in our state. We have a rich entrepreneurial history in Arkansas with companies like Wal-Mart, Tyson, J.B. Hunt, Acxiom and Dillard’s, and the seeds we’re planting now will hopefully grow to become the next generation of large employers in our state. Second, universities take equity ownership positions in the startup companies formed on their campuses. So when those companies do well, universities can often derive significant economic benefits.

Lastly, we see an increasing interest among faculty and student researchers in commercialization overall, but specifically in being part of a startup. So creating a robust environment that supports campus-based startups helps to recruit and retain talented academics.

While the majority of license agreements are still signed with established companies in industry, there’s a national shift toward licensing to startups. In fact, the number of campus-based startups increased by 16 percent from 2012 to 2013 (the last year for which we have statistics), while the number of license agreements to established companies declined slightly.

In Arkansas, we’re fortunate the chancellors of our research universities take the long-term view of economic development, and fully support our efforts to create more successful startups.

IA: How many UALR startups are active now?

Stinson: We have four with another in the works: NuShores Biosciences, Poly-Adaptive, Synanomet and Black Oak Partners, all of which are IA client firms.

IA: The Little Rock Tech Park … UALR is a partner along with UAMS and the city of Little Rock. Will UALR startups one day fill it?

Stinson: As one of the three official members of the park, we’re highly supportive of the park and its mission. We all feel responsibility to help fill the park, and have plenty of reasons to populate it. The Tech Park will provide the mechanism into which we can direct our startups to take the next stage of their development.

The park is more than a physical location; its programming and resources will help our startups continue their path to success.

Source: Arkansas Business by Mark Carter

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