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Bringing Technology to the Marketplace
University of Virginia
Patent Foundation
2003 and 2004 Report
Contents
1 Message from the Executive Director
2 How a U.Va. Invention Becomes a Licensed Patent
3 Fiscal Years 2003 and 2004: More Patents, More Deals
4 Patents Issued in Fiscal Year 2003
6 Patents Issued in Fiscal Year 2004
8 2003 Inventors of the Year: William A. Petri, Jr. and Barbara Mann
10 2004 Inventor of the Year: Haydn Wadley
12 Featured Technologies: Moving to the Marketplace
14 Dana Elzey: A New Breed of Metals
16 Bill Walker: Turning Ultrasound on Its Ear
18 Featured Publication: Patent Foundation Operating Manual
20 Boris Kovatchev: Bringing Mathematics to Medical Research
22 Patent Foundation News: Spinner Technologies
24 U.Va. Patent Foundation Board of Directors
26 U.Va. Patent Foundation Faculty Advisory Committee
28 U.Va. Patent Foundation Staff
30 U.Va. Patent Foundation 2003 and 2004 Financial Reports
32 U.Va. Patent Foundation Mission Statement
Cover photo: Model of the thioesterase enzyme from Pseudomonas aeruginosa. Thestructure was determined using software developed by U.Va. professor Wladek Minor anddistributed commercially by HKL Research, Inc. Minor is a co-founder of HKL Research.
Any good business manager will tell you,to find financial success, you must focus on meeting the needs of your
customers. At the University of Virginia Patent Foundation, we have been
applying this principle to the business of university technology transfer for
more than twenty-five years.
As our customers, faculty inventors have the most to gain from our
emphasis on service. They work with our in-house patent attorneys to file provisional patent
applications. They walk through the commercialization process with our experienced licensing
professionals. They receive regular briefings about negotiations with licensees and they receive timely
payment of any royalties they earn.
We believe that this level of service keeps inventors working with us. The proof is in the statistics. In
2003, U.S. universities received an average of thirty-nine inventions for each $100 million in research
funding they received. That same year, the Patent Foundation received sixty-nine invention disclosures
for every $100 million in University research funding. More inventions mean more licensing
opportunities, and more licensing opportunities mean more potential income.
Since our faculty entrepreneurs want their inventions to make it to the marketplace, we focus on
negotiating the deals that make commercialization possible. In 2003, the Patent Foundation completed
nearly twenty-three license and option agreements for every $100 million in University research
funding—more than double the national average of eleven agreements per $100 million in funding.
More importantly, we have maintained a high level of deal flow over time. For the five fiscal years 2000
through 2004, the Patent Foundation executed 255 license and option agreements, about fifty a year.
Since it generally takes about seven years from the time a license agreement is signed until a product is
launched, we are hopeful that significant revenues from some of these agreements are on the horizon.
In the meantime, we continue to pursue initiatives aimed at better serving U.Va. faculty inventors.
In 2004, we completed a comprehensive Operating Manual, which describes every step in our technology
transfer process. A flow diagram can be found at www.uvapf.org. We also developed an “abridged”
version of the Manual for our faculty. As expected, we are already beginning to see benefits as this
document helps demystify the technology transfer process. (For more information on the Operating
Manual, please turn to page 18.)
We also continue to serve U.Va. faculty who wish to start their own technology companies. Our
subsidiary, Spinner Technologies, Inc., provides early-stage business expertise to faculty entrepreneurs.
The biggest challenge that remains is finding investment funds to help young businesses develop. To
make this process easier, Spinner is forming an “angel” group of individual investors who will contribute
to a pooled fund, and then work together to evaluate companies and decide where and how much to
invest. In addition to helping U.Va. start-up companies, we hope the group will encourage established
venture capital firms to consider investing in University spin-offs.
We are proud that the quality and range of services the Patent Foundation provides to the U.Va.
faculty has never been better. This Annual Report, which includes data from the 2003 and 2004 fiscal
years, is a “report card” to help you gauge our success for yourself. We hope you believe, as we do, that
our commitment to faculty service will continue to yield new benefits.
From the Executive Director
Robert MacWright
How a U.Va. Invention Becomes a Licensed Patent
12345
1. The inventor discloses it
• Submits the invention disclosure form (find it at
www.uvapf.org)
2. A Patent Foundation licensing associate
evaluates it
• Conducts a patent search to determine whether it
is “patentable”
• Assesses its commercial potential by identifying a
market and potential licensees
3. A Patent Foundation lawyer protects it
• Files a provisional patent application (good for
one year)
• Converts it to a regular application before the
provisional expires
4. A Patent Foundation licensing associate
markets and licenses it
• Identifies interested companies, markets the
invention, and negotiates a license agreement
• License includes provisions to assure the company
will be diligent in commercial development and
product marketing
5. A Patent Foundation business expert
monitors the license
• Ensures the licensee is meeting its contractual
obligations
• Shares royalty income with the inventor and U.Va.
The process of patenting and
licensing a new technology is a
complex one. The U.Va. Patent
Foundation makes the process
easier. From the day the
invention is disclosed until the
day the patent expires, the
foundation staff works closely
with U.Va. inventors to help bring
their technology to the
marketplace.
2 University of Virginia Patent Foundation 2003 and 2004 Report Bringing Technology to the Marketplace
Bringing Technology to the Marketplace 2003 and 2004 Report University of Virginia Patent Foundation 3
Fiscal Years 2003 and 2004: More Patents, More Deals
The U.Va. Patent Foundationentered its second quarter-century of marketing and
licensing University inventions by marking its two
most successful years ever. The number of deals
negotiated with companies and institutions was at an
all-time high, as was the number of provisional
patent applications filed.
Inventors from the School of Medicine
continued to provide approximately half of all
invention disclosures received in fiscal year 2003 and
fiscal year 2004. These 158 inventions were disclosed
by twenty-nine different departments across the
school during the past two years.
The School of Engineering & Applied Science
contributed eighty-two invention disclosures during
this time period—including twenty-eight from the
Materials Science and Engineering Department.
College of Arts & Sciences inventors
contributed twenty-eight disclosures in fiscal year
2003 and thirty-two disclosures in fiscal year 2004.
The Chemistry Department led all Arts & Sciences
departments with thirty-five invention disclosures
during the two-year period.
The remaining eleven invention disclosures for
fiscal year 2003 and fiscal year 2004 were submitted
by the Curry School of Education, Darden Graduate
School of Business Administration, Elson Student
Health Center, Kluge Children’s Rehabilitation
Center, McIntire School of Commerce, School of
Nursing, and the Information Technology &
Communications Department.
Many of the inventions resulted from
collaborations between two or more schools in which
each school received partial credit for the disclosure.
School of Engineeringand Applied Science 23.7% (36)
College of Arts & Sciences 21.1% (32)
Other 3.3% (5)
School of Medicine 51.9% (78)
INVENTION DISCLOSURES BY SCHOOL
For example, the Biomedical Engineering
Department, which comprises faculty from the
School of Medicine and the School of Engineering &
Applied Science, contributed twenty-three invention
disclosures during the 2003 and 2004 fiscal years. |||
School of Engineeringand Applied Science 29% (46)
College of Arts & Sciences 17.5% (28)
Other 3.8% (6)
School of Medicine 49.8% (80)
t 2003 t 2004
Years at a GlanceU.Va. Patent Foundation Fiscal Years
2003 and 2004
03 04
Inventions
Invention Disclosures by
U.Va. Inventors 160 151
Patents
Provisional Patent
Applications Filed 122 131
U.S. Patent Applications Filed* 47 48
U.S. Patents Issued 17 16
Deals with Companies
and Institutions
License Agreements 35 41
Option Agreements 14 13
Inter-Institutional Agreements 3 1
Settlement Agreement 1 0
License Fees and Royalty Revenue Earned (in $millions) 6.3 5.3
*Includes U.S. designations in Patent Cooperation Treaty(international) patent applications
4 University of Virginia Patent Foundation 2003 and 2004 Report Bringing Technology to the Marketplace
6,413,967
6,447,991
6,448,235
6,467,285
6,478,931
6,514,949
6,531,306
6,531,457
Inhibition of novel calcium entry pathway inelectrically non-excitable cells acting as an anti-proliferative therapy
Smart aerogel
Method for treating restenosis with A2Aadenosine receptor agonists
Automated storage and retrieval apparatus forfreezers and related method thereof
Apparatus and method for intra-layermodulation of the material deposition and assistbeam and the multilayer structure producedtherefrom
Method and compositions for treating theinflammatory response
Polynucleotides encoding mammalian DNA-dependent ATPase A polypeptides
Methods and compositions for treatinginflammatory response
Lloyd S. Gray,Doris M. Haverstick,John J. Densmore, andGabor Szabo
Charles E. Daitch,Jack S. Brenizer, Jr.,Bouvard Hosticka,L. Roger Mason, Jr.,Pamela N. Norris,Ming Luo, andLawrence J. DeLucas
Joel M. Linden,Gail W. Sullivan,Ian Sarembock, and W. Michael Scheld
Robin A. Felder,B. Sean Graves, andJames P. Gunderson
Haydn N. G. Wadley,Xiaowang Zhou, andJunjie Quan
Joel M. Linden,Gail W. Sullivan, and W. Michael Scheld
Joel W. Hockensmithand Rohini Muthuswami
Joel M. Linden,Gail W. Sullivan,Ian J. Sarembock,Timothy L. Macdonald,Mark Okusa,Irving L. Kron, and W. Michael Scheld
U.S. Patent Number Title Inventor(s)
Patents Issued in Fiscal Year 2003
Neurology 1%Neuroscience 1%Neurosurgery 1%
Obstetrics & Gynecology 1%Orthopaedic Surgery 1%
Pathology 12%Pediatrics 7%
Pharmacology 6%Physical Medicine & Rehabilitation 1%
Psychiatric Medicine 4%Radiation Oncology 1%
Radiology 3%Urology 3%
Biochemistry &Molecular Genetics 5%
Biomedical Engineering 9%
Cell Biology 11%
Emergency Medicine 1%
Internal Medicine 17%
Microbiology 16%
SCHOOL OF MEDICINE49.8% OF 2003 INVENTION DISCLOSURES
t INVENTION DISCLOSURES BY DEPARTMENT, 2003
6,537,791
6,538,024
6,543,983
6,545,002
6,547,731
6,558,671
6,572,856
6,573,060
6,581,395
Mammalian DNA-dependent ATPase Apolypeptides and fusions thereof
Felbamate derived compounds
Robotic pick up and delivery system
Substituted 8-phenylxanthines useful asantagonists of A2B adenosine receptors
Method for assessing blood flow and apparatusthereof
Cysteine-depleted peptides recognized by A3-restricted cytotoxic lymphocytes, and usestherefor
Methods for the prevention and treatment ofcancer using anti-C3b(i) antibodies
Methods and compositions for targeting DNAmetabolic processes using aminoglycosidederivatives
Automated storage and retrieval apparatus forfreezers and related method thereof
Bringing Technology to the Marketplace 2003 and 2004 Report University of Virginia Patent Foundation 5
Biomedical 15%
Civil 2%
Computer Science 2%
Electrical &Computer 29%
Materials Science& Engineering 35%
Mechanical &Aerospace 15%
Systems &Information 2%
Physics 19%
Chemistry 56%
Biology 25%
SCHOOL OF ENGINEERING29% OF 2003 INVENTION DISCLOSURES
COLLEGE OF ARTS & SCIENCES17.5% OF 2003 INVENTION DISCLOSURES
School ofCommerce 50%
ITC 25%
Kluge Children’sRehabilitationCenter 17%
StudentHealth 8%
OTHERS3.8% OF 2003 INVENTION DISCLOSURES
Joel W. Hockensmithand Rohini Muthuswami
Timothy L. Macdonald,Thomas A. Miller,Charles D. Thompson,and Christine M. Dieckhaus
Robin A. Felder,Randy Turner,William Holman, andChris Estey
Joel M. Linden,Kenneth A. Jacobson,and Yong-Chul Kim
D. Jackson Coleman,Katherine W. Ferrara,Dustin E. Kruse, andRonald H. Silverman
Craig L. Slingluff,Donald F. Hunt,Victor H. Engelhard,and David Kittlesen
Ronald Taylor,Alessandra Nardin,William M. Sutherland,Mitchell H. Sokoloff,and Leland Chung
Joel W. Hockensmithand Rohini Muthuswami
Robin A. Felder,B. Sean Graves, andJames P. Gunderson
U.S. Patent Number Title Inventor(s)
6 University of Virginia Patent Foundation 2003 and 2004 Report Bringing Technology to the Marketplace
6,585,661
6,595,762
6,596,534
6,599,935
6,607,495
6,617,355
6,621,079
6,626,902
6,630,126
Device and method for monitoring asthma
Hybrid magnetically suspended and rotatedcentrifugal pumping apparatus and method
Utilization of osteocalcin promoter to delivertherapeutic genes to tumors
Felbamate derived compounds
Apparatus for fluid transport and relatedmethod thereof
Treating asthma by preventing and/oraccommodating S-nitrosothiol breakdown
Apparatus and method for a near fieldscanning optical microscope in aqueous solution
Multi-probe system
Diagnostic procedures using direct injection ofgaseous hyperpolarized 129Xe and associatedsystems and products
John F. Hunt andBenjamin Gaston
Pratap S. Khanwilkar,Paul E. Allaire,Gill B. Bearnson,Don B. Olsen,Eric Maslen, andJames W. Long
Leland W. Chung,Chinghai Kao,Robert A. Sikes,Song-Chu Ko, andJun Cheon
Timothy L. Macdonald
Thomas C. Skalak andPatrick S. Cottler
Benjamin Gaston,Jonathan S. Stamler,and Owen W. Griffith
Zhifeng Shao,Gabor Szabo, andAnders Mannelqvist
John Kucharczyk andGeorge T. Gillies
Bastiaan Driehuys,Dennis Fujii,James R. Brookeman,and Klaus D. Hagspiel
U.S. Patent Number Title Inventor(s)
Patents Issued in Fiscal Year 2004
Anesthesiology 5%Biochemistry & Molecular Genetics 5%
Biomedical Engineering 6%Cardiology 1%
Cardiovascular Research Center 2%
Cell Biology 18%
Center for Cell Signaling 1%
Health Evaluation Sciences 3%
Internal Medicine 10%
Medical Affairs 1%
Urology 1%Surgery 1%
Radiology 8%Radiation Oncology 3%
Psychiatric Medicine 5%Plastic and Maxillofacial Surgery 3%
Physiology 1%Pharmacology 3%
Pediatrics 3%Pathology 1%
Orthopaedics 6%Neurology 1%
Molecular Physiology 3%Microbiology 10%
SCHOOL OF MEDICINE51.9% OF 2004 INVENTION DISCLOSURES
t INVENTION DISCLOSURES BY DEPARTMENT, 2004
Bringing Technology to the Marketplace 2003 and 2004 Report University of Virginia Patent Foundation 7
6,649,746
6,660,276
6,670,334
6,688,123
6,692,439
6,713,638
6,723,703
Biological production of stable glutamine, poly-glutamine derivatives in transgenic organismsand their use for therapeutic purposes
Peptides recognized by melanoma-specificcytotoxic lymphocytes, and uses therefor
Method and compositions for treating theinflammatory response
Automated storage and retrieval apparatus forfreezers and related method thereof
Angular scatter imaging system usingtranslating apertures and method thereof
2-amino-3-aroyl-4,5 alkylthiophenes: agonistallosteric enhancers at human A1 adenosinereceptors
Therapeutic use of aerosolized S-nitrosoglutathione in cystic fibrosis
Biomedical 12%
Civil 3%
Computer Science 10%
Electrical &Computer 11%
Materials Science& Engineering 33%
Mechanical &Aerospace 25%
Systems &Information 6%
Astronomy 4%
Statistics 4%
Biology 18%
Chemistry 62%
Physics 12%
SCHOOL OF ENGINEERING23.7% OF 2004 INVENTION DISCLOSURES
COLLEGE OF ARTS & SCIENCES21.1% OF 2004 INVENTION DISCLOSURES
School ofNursing 40%
InformationalTechnologyInformation 20%
DardenGraduate Schoolof BusinessAdministration 20%
Curry Schoolof Education 20%
OTHERS3.3% OF 2004 INVENTION DISCLOSURES
Michael P. Timko andRichard L. Guerrant
Craig L. Slingluff,Victor M. Engelhard,Donald F. Hunt,Jeffrey Shabanowitz,and Andrea L. Cox
Joel M. Linden,Jayson M. Rieger,Gail W. Sullivan, andTimothy L. Macdonald
Robin A. Felder,B. Sean Graves, andJames P. Gunderson
William F. Walker,Michael Jason McAllister,and Gregg Trahey
Joel M. Linden,Ray Ollson, andPeter Scammells
Benjamin Gaston andJonathan S. Stamler
U.S. Patent Number Title Inventor(s)
8 University of Virginia Patent Foundation 2003 and 2004 Report Bringing Technology to the Marketplace
2003 Inventors of the Year
committed to ensuring the test—a dipstick-like
device similar to a home pregnancy test that changes
color when inserted in infected fecal matter—will be
produced in a cost-effective manner. “That means it
may well be manufactured in the countries where it
will be used rather than in the U.S., where it would
cost much more,” says Petri, the Wade Hampton
Frost Professor of Epidemiology, a professor of
medicine, microbiology, and pathology, and chief of
the Division of Infectious Diseases and International
Health. “We want it to be cheap enough that health-
care workers in even the most impoverished nations
have access to it and can immediately prescribe the
proper treatment.”
While acknowledging that developing diagnostic
tools is an honorable achievement, Petri and Mann
have set their goals even higher. Their team is one of
only two research groups in the U.S. working to
develop a vaccine to immunize children against
amoebiasis. With support from the NIH, they have
identified a candidate vaccine that should be ready
for human testing within five years.
A vaccine will be a huge advance in the
treatment of a disease that has plagued mankind for
thousands of years. According to an article in the
February 2004 issue of the journal Transactions of the
Royal Society of Tropical Medicine and Hygiene, the
technology behind Petri’s and Mann’s diagnostic tool
has already helped researchers identify the
E. histolytica organism in specimens of desiccated
feces from 5,300-year-old mummies and organic
sediment in South America, North America, Africa,
and Europe. “This disease is much more ubiquitous
than we ever imagined,” says Mann. |||
William Petri’s commitment toeradicating intestinal diseases began in the 1980s
after he heard a lecture by one of his medical school
professors at U.Va. It has culminated in his
designation—along with his research partner,
microbiologist Barbara Mann—as the University of
Virginia Patent Foundation’s Edlich-Henderson
Inventor of the Year for 2003. The pair has developed
the first clinical test to diagnose amoebiasis, an
intestinal infection caused by the E. histolytica
organism that is a leading cause of death in children
in developing countries.
“He made a convincing argument that
motivated a number of people,” says Petri of Richard
Guerrant, professor of medicine and head of the
Division of Geographic and International Medicine,
who told Petri and his classmates that one in ten
children in Bangladesh die of an intestinal disease by
the age of five. “How could you not care about that?”
Petri’s quest took off in 1989 when he received a
National Institutes of Health (NIH) grant to study a
protein on the surface of E. histolytica and needed
someone with training in molecular biology to help.
He recruited Barbara Mann, a friend from graduate
school at Virginia then working at the University of
Wisconsin, to join his team.
“I was attracted to Bill’s project because it had
the potential to help people,” says Mann, now a U.Va.
associate professor of medicine and microbiology.
She cloned the surface protein so it could be used to
develop antibodies that would result in an accurate
diagnostic test.
The test identifies the E. histolytica organism in
children and adults suffering from diarrhea and
dysentery. The Patent Foundation has licensed the
technology to TechLab, Inc., a small Blacksburg, VA-
based manufacturer of clinical tests. TechLab is
William A. Petri, Jr. an d Barbara Mann
n d Barbara Mann
While acknowledging that developing
diagnostic tools is an honorable
achievement, Petri and Mann have
set their goals even higher.
Winners of the Edlich-HendersonInventor of the Year Award
2004 Haydn Wadley
2003 William A. Petri, Jr. and Barbara Mann
2002 Joel Linden
2001 Doris Kuhlmann-Wilsdorf
2000 Ron Taylor
1999 John Herr
1998 Not awarded
1997 Richard Guerrant andTimothy Macdonald
1996 Jessica Brand, Patrice Guyenet,Richard Pearson, and Janine Jagger
1995 Donald Hunt, Jeffrey Shabanowitz,and George Stafford
1994 Gerald Mandell and Gail Sullivan
1993 Joseph Larner
1992 Robert Berne, Luiz Belardinelli, andRafael Rubio
Edlich-Henderson Inventor of the Year Award
The Edlich-Henderson Inventor of the YearAward is presented by the Patent Foundationto recognize an invention with notable valueto society. The brainchild of Richard Edlich,M.D., U.Va. professor emeritus and currentlyeditor-in-chief of the Journal of Long-TermEffects of Medical Implants, the award is alsonamed for Christopher J. Henderson, presi-dent and chief financial officer of Robbins &Henderson, LLC, a New York firm specializingin financial and related services for institu-tions. Deeply committed to the University ofVirginia, Henderson promotes partnershipsbetween universities and industry.
Bringing Technology to the Marketplace 2003 and 2004 Report University of Virginia Patent Foundation 11
With twenty-five patents to his name,Haydn Wadley is a natural choice for the University
of Virginia Patent Foundation’s 2004 Edlich-Henderson
Inventor of the Year. Like many successful inventors, he
is strongly motivated by finding better ways to do things.
“I never believe that the solution I’m seeing is
necessarily the best way to solve a problem,” says
Wadley, University professor, Edgar A. Starke, Jr.
Research Professor of Materials Science, and senior
associate dean for research in the School of
Engineering and Applied Science.
He was drawn to U.Va. by the reputation of
materials scientist and former Engineering School dean
Edgar A. Starke, with whom he and colleague Phillip
Parrish launched the Intelligent Processing of Materials
Laboratory in 1988. Working with faculty and students
from across the University, the group develops
innovative technologies to facilitate the creation of
new—and frequently expensive or unstable—materials
and devices. The lab creates models for predicting what
might happen to materials during their synthesis and
tracks the changes that result. The goal of the
research group—optimizing quality and reducing
production costs—is as important to government
and industry as it is close to Wadley’s heart.
A search for a more effective way to coat thin
silicon carbide fibers with titanium to make
composites for high-temperature use on hypersonic
vehicles has led Wadley to develop a process called
directed vapor deposition (DVD). This technology
uses an intense electron beam to evaporate titanium
and a rarefied supersonic gas jet to entrain the vapor.
With these tools he has created a method much like
spray-painting to coat objects with atoms. But DVD
has a unique twist: the resulting atomic vapor
reaches far beyond the surface of objects to infiltrate
every nook and cranny.
“We realized we had a tool that enables all sorts
of truly novel thin films and coatings to be
synthesized, and that we could create coatings that
appear to be better than any others available today,”
Wadley says. “The majority of improvements in
aircraft engines are being made because of the
emergence of these types of coatings.”
Not surprisingly, Wadley and co-inventor James
Groves, now an assistant professor in the Department
of Materials Science, can imagine additional
applications for their invention. James and several of
Wadley’s former graduate students created a
Charlottesville-based company, Directed Vapor
Technologies International, to develop new industrial
coatings and bring them to the marketplace.
Wadley’s collaboration with scientists at
Cambridge University in the UK, Harvard, Princeton,
and the University of California at Santa Barbara led
U.Va. researchers to make important discoveries in
another area. They have created cellular metals which
typically weigh only five percent as much as normal
metals but are twenty times stronger than existing
metal foams of the same weight and material. In
addition to being effective for supporting stress and for
heat exchange and thermal isolation, these materials
absorb the energy of sudden dynamic impacts,
attenuate sound, and can even morph in shape.
“We know there are no materials that are able to
do this any better than the ones we are developing—
and we’re working to make them even better,”
Wadley says.
The U.S. Navy is interested in utilizing these new
metals to protect against the blast waves that accompany
explosions and for a host of other applications where
thermal energy must be removed efficiently and rapidly
from a system. But Wadley can imagine additional
uses. He has helped launch a second Charlottesville
start-up company, Cellular Materials International,
Inc., to develop and market these new materials. |||
Haydn Wadley
2004 Inventor of the Year
These technologies developed by
U.Va. inventors were licensed to
various companies during the
2003 and 2004 fiscal years.
An Apparatus for Fluid Transport
Inventor: Patrick Cottler
This invention is a vacuum-assisted mechanical
device that simulates the action of medicinal leeches
in restoring blood flow and alleviating complications
following reconstructive and plastic surgery. Called
Aspiraide™, it is a low-cost, sterile, aesthetically
acceptable and readily available alternative to leech
therapy. Aspiraide™ is the first product brought to
market by Cottler Technologies LLC, a U.Va.
spin-off company.
Human Low-Voltage-Activated T-type
Channel cDNA Constructs and
Corresponding Cell Lines
Inventor: Ed Perez-Reyes
This inventor developed mammalian cell lines that
encode and express three low-voltage-activated,
T-type channel proteins found in sensory and
thalamic neurons, where they play important roles in
pain perception and in setting brain rhythm. When
these proteins (called Cav3.1, Cav3.2, and Cav3.3) are
expressed abnormally, a rhythm characteristic of
neurological disease results, making the channels
excellent drug targets for epilepsy and neuropathic
pain. This invention has been licensed to two
biopharmaceutical companies: Actelion
Pharmaceuticals Ltd., based in Switzerland; and
Neurocrine Biosciences, Inc., based in California.
12 University of Virginia Patent Foundation 2003 and 2004 Report Bringing Technology to the Marketplace
Moving to the Marketplace
Featured Technologies
Bringing Technology to the Marketplace 2003 and 2004 Report University of Virginia Patent Foundation 13
Phonological Awareness Literacy
Screening (PALS)
Inventors: Marcia Invernizzi et al.
This invention consists of two screening instruments
designed to help educators identify children who
have not mastered important reading fundamentals
and may be in need of additional and specialized
instruction. The instruments—PALS-K for students
in kindergarten and PALS 1–3 for students in grades
one through three—were developed under a grant
provided by the Virginia Department of Education
and are currently in use in 98% of Virginia’s school
districts. In addition, the Patent Foundation has
licensed the materials to Nevada, Connecticut, and
Delaware to determine PALS’s compliance with their
reading assessment guidelines. Furthermore,
Wireless Generation, Inc., a New York-based
company that packages assessment software in
mobile computing devices, is licensed to distribute
PALS on handheld computing devices to teachers
nationwide.
Precision FRET Data Analysis Software
Inventors: Ammasi Periasamy, Ye Chen, and
Masilamani Elangovan
This software technology provides a new and
improved way for biotechnology researchers to see
the dynamic behavior of specific proteins inside
living cells and tissue. Called Precision Fluorescence
Resonance Energy Transfer, or PFRET, this product
corrects images to create a cleaner and more accurate
picture of energy transfer efficiency and the distance
between donor and acceptor molecules. PFRET is
licensed to CircuSoft Instrumentation, LLC, a
Delaware-based company that develops hardware
and software tools for biomedical research.
RSK Inhibitors as Therapeutics and
Investigative Tools
Inventors: Deborah Lannigan, Sidney Hecht, Jeff
Smith, Yaming Xu, Celeste Poteet-Smith, and David
Brautigan
This technology is a plant-extracted chemical
compound that can inhibit unregulated activity of
the Rsk protein in breast cancer cells. When a
molecule binds to the estrogen receptor in a breast
cancer cell, a pathway inside the cell is activated.
Using this new compound to regulate Rsk activity
along this pathway prevents the growth of cancer
cells without harming healthy cells. This technology
has been licensed to Luna Innovations, a Virginia-
based company. It will be developed into a cancer
therapy through a new start-up company,
LunaQuest. |||
Bringing Technology to the Marketplace 2003 and 2004 Report University of Virginia Patent Foundation 15
Dana Elzey likes to solve practicalproblems. If he can work with others to develop
solutions, so much the better.
As an associate professor of materials science
and engineering, he gets to do both. A graduate of
Rensselaer Polytechnic Institute, where he earned a
B.S. and an M.S. in mechanical engineering, he
received his doctorate from the University of
Stuttgart in Germany. He came to Virginia as a post-
doctoral fellow and stayed on to join the research
faculty in 1993.
Elzey revels in his contact with students.
Recognized for his ability to explain complex concepts
clearly and concisely, he is an award-winning teacher
who enjoys introducing undergraduates to the basics
of engineering. “It’s fun to teach them to think like
engineers,” he says. “I find brainstorming with them
so enjoyable that it’s truly the high point of my day.”
Brainstorming with students as well as academic
colleagues helps to inform Elzey’s research, which he
says represents the “synthesis” of two research areas.
In addition to working with low-density, cellular
materials that do not change in response to stimuli,
he uses so-called “smart” materials that respond to
stimuli in exaggerated ways and then return to their
original shape.
As a scientist, Elzey develops new materials—
primarily composites—combining existing materials
to create new ones with unique properties. As an
engineer, he thinks of ways the new materials can be
put to use. These ideas have led to several inventions
he has disclosed to the U.Va. Patent Foundation in
recent years. Collaborating with Engineering School
colleague Haydn Wadley, Elzey developed a class of
metals capable of recovering their original shape and
thickness after impact or crushing. This technology,
which can be used for energy absorption in
packaging and other structural applications, has been
licensed to Cellular Materials International, Inc., a
Charlottesville-based start-up company Wadley
launched with Jim Ross, a businessman and
entrepreneur.
Elzey also invented a new form of cellular metal
structure useful in energy-absorbing applications.
This technology features a layer of metal ductile
material—produced in the form of slender upright
supports—sandwiched between zig-zag-shaped
metallic panels.
“When pressure is applied to the panels,
deformation is effectively channeled into the ductile
material, sacrificially absorbing energy and
dissipating it in the form of heat,” he explains,
cradling a small prototype of the invention in his
hands. “This structure can support a great deal of
weight. It could be used to construct more damage-
tolerant bridges or earthquake-resistant structures, to
name but a few possible uses.”
Elzey has found at the University the perfect
combination of teaching, research, and partnerships
with colleagues across the Grounds. “Coming here
was a great choice,” he says. “Virginia has so many
good things going for it that I’m committed to
making it my academic home.” |||
Dana ElzeyA New Breed of Metals
Inventor Profile
“When pressure is applied to the panels,
deformation is effectively channeled
into the ductile material, sacrificially
absorbing energy and dissipating it in
the form of heat.”
16 University of Virginia Patent Foundation 2003 and 2004 Report Bringing Technology to the Marketplace
“He had just come off a rotationon the pediatric ICU and he was really frustrated,”
recalls Walker, an associate professor of biomedical
engineering who joined the Virginia faculty in 1997.
“He was trying to draw blood from a very tiny, very
sick baby, and he had to admit defeat and call for
help. He challenged me: ‘You do ultrasound; I need
some sort of tool to help me find an artery so the
baby—and I—don’t have to go through all that
anguish again.’”
Trying to envision such a tool, Walker drew
upon his technical knowledge of ultrasound and his
experience with the people who use it. Conventional
ultrasound systems send sound waves beneath the
skin, where they reflect off what lies beneath,
creating an often-murky image. Yet conventional
ultrasound systems image only a thin, vertical
section—much like a slice of bread—underneath the
skin. For most people this image geometry is not
intuitive; it’s not much help when medical personnel
are looking for the proverbial needle in a haystack: a
tiny artery.
Walker described his quest to two fellow
University researchers trained as engineers. Travis
Blalock, an expert in integrated circuit design, and
Bill WalkerTurning Ultrasound on Its Ear
Inventor Profile
John Hossack, who focuses on the transducers that
receive the echoes used for ultrasound images, were
intrigued by the challenge and eager to work
together.
“I knew we needed something that would give
doctors a horizontal, not vertical, view of the area
beneath the skin,” Walker recalls. “It also needed to be
small, affordable, and ubiquitous—something every
medical student would carry around, much like a
stethoscope.”
Armed with a $1.5 million grant from the
National Institutes of Health, the trio intends to
turn traditional ultrasound on its ear. They are
developing a battery-operated device about the
size of a matchbox. It consists of a grid-like,
non-linear transducer, a customized integrated
circuit, and a signal processor chip nestled
beneath an LCD display screen. To the casual
user, the system does not look much different
than a hand-held game console. Walker, Blalock,
Hossack, and a team of graduate students have
assembled their first prototype, which they are
already using to view images.
The new technology—dubbed the Sonic
Window™—has been licensed to Roanoke, VA-based
Carilion Biomedical Institute. Meanwhile Walker,
Blalock, and Hossack have launched their own
company—called Pocketsonics—to work with the
Institute to market their invention.
“When talking to companies, they’re amazed
we’ve been able to collaborate in such a pure way,”
says Walker, who has disclosed thirteen inventions
since coming to the University. “We work not as
individual experts, but as a team of three equals. This
project shows that true collaboration can achieve
something we could never have done before.” |||
As a biomedical engineering graduate
student at Duke University, Bill Walker had
a conversation with a medical student
friend that set the stage for one of his
U.Va. inventions.
Bill Walker, at right, with Travis Blalock, left,and John Hossack, center.
18 University of Virginia Patent Foundation 2003 and 2004 Report Bringing Technology to the Marketplace
The Patent Foundation evaluatesnew inventions for their commercial potential and
patentability, investigates domestic and international
markets for these inventions, and negotiates licenses and
other complex transactions for the transfer of rights
to commercial partners. These activities, which make
up the Technology Transfer Process, can be perceived
as perplexing and even somewhat impenetrable to
those not in the business—including the faculty
inventors with whom the foundation works every day.
In order to make the process more transparent
to faculty, foundation staff decided to develop a
manual describing each step in the Technology
Transfer Process, identifying at what points decisions
are made, and crafting the forms, documents, and
other tools used to assist in making such decisions.
The staff first formalized each step of the
process and depicted it graphically in the form of a
flow diagram (see above). Next, they developed a set
of forms and documents to assist in the decision-
making steps of the process. Finally, they brought all
of the individual pieces of the process together into
one cohesive text called the Operating Manual. The
staff then created an abridged version of the manual
to share with faculty, and began using the
“unabridged” Operating Manual to provide a
Removing the Black Magic fr om Technology TransferThe Patent Foundation Introduces New Resourc e for Faculty Inventors
Featured Publication
Bringing Technology to the Marketplace 2003 and 2004 Report University of Virginia Patent Foundation 19
uniform process and standardized documentation
for each invention.
Both versions of the Operating Manual had an
immediate impact. The abridged Operating Manual
made the day-to-day operations of the foundation
more transparent to faculty, and demystified the
many complex decision points in the Technology
Transfer Process. The unabridged Operating Manual
was quickly used in operations, where it has
standardized records and reports to faculty. The
unabridged version’s forms have enhanced how the
foundation conducts market analysis and markets
each technology.
Suspecting the manual might have broader
appeal, the foundation staff made the abridged
version available to other academic licensing offices.
The response was immediate and very positive: The
foundation received several hundred requests the first
few days after making it available. The abridged
version is now available to faculty and others in the
academic technology transfer profession through the
foundation Web site (www.uvapf.org).
A number of institutions have ordered the
unabridged Operating Manual, generating several
thousand dollars in sales which helped to defray
development, production, and printing costs. In
order to assist other academic institutions in
Virginia, the foundation supplied unabridged
Operating Manuals to them free of charge. This
version comes complete with form letters, model
agreements, and analysis forms, together with a CD
containing electronic versions of all forms so that
purchasers can tailor them to their own needs. It is
hoped that the Operating Manual will be seen as a
comprehensive resource, not only for U.Va. faculty
inventors, but also for our academic colleagues in the
U.S. and abroad. |||
A Few Words from Our Peers
“I recently received the abridged version of
your Operating Manual via e-mail. Needless to
say, it is an excellent model for Tech Transfer.”
“We are a new office with 1.5 FTE and this
resource will be extremely valuable for us.
Thanks for your work and willingness to share!”
“Thank you for providing the abridged version
of your Operating Manual. I believe this will be
instrumental in assisting my development of
this office as we continue to progress in our
Technology Transfer ventures.”
“Thank you for offering to share the operating
manual that you have prepared—a truly
collegial gesture. Since I am continuing to
teach a course in Nonprofit Technology
Transfer …, the operating manual would be an
excellent resource for my law school students.”
“This is a great piece of work. Thanks to all
who produced it.”
r om Technology Transferc e for Faculty Inventors
Bringing Technology to the Marketplace 2003 and 2004 Report University of Virginia Patent Foundation 21
Boris Kovatchev believes the bestmedical researchers have backgrounds in the
mathematical sciences. “Their very structured
education and analytical thinking style serves them
well,” says the Bulgarian-educated mathematician,
who has been contributing to medical research at
U.Va. since completing a post-doctoral fellowship
here in 1992.
Consider Attention Deficit Hyperactivity
Disorder (ADHD). The 2000 National Institutes of
Health Consensus Statement concluded that ADHD,
a disorder affecting individuals’ abilities to sit still, to
stay on task, and to transition between tasks, is
notoriously difficult to diagnose. Daniel J. Cox, U.Va.
professor of psychiatric medicine and internal
medicine, and others elsewhere, suspected that
individuals afflicted with ADHD exhibit brain-wave
inconsistencies that could be measured by
electroencephalographic (EEG) tests. Yet test results
have been inconclusive, frustrating those seeking a
diagnostic tool.
Enter Kovatchev, who brought a new perspective
to the problem. He noted that EEG tests sample
brain waves 200 times every second, and readouts
show brain activity at one-to-two-second intervals—
way too often to recognize overall patterns of the
much slower attention dysfunction processes. “Trying
to get results from EEGs in this way is like
determining the height of a mountain by measuring
it inch by inch. You have to step back and look at the
whole thing. The resolution of the measurement of
an event has to match its duration.”
Kovatchev focused on identifying a
mathematical model to apply to the stream of
millions of numbers generated during a thirty-five-
minute EEG test. The model would help measure
how well the subject’s brain transitions between
Boris KovatchevBringing Mathematics to Medical Research
Inventor Profile
tasks. Brain-wave activity in tested individuals would
be expressed as a standardized number—a consistency
index—to determine whether the transitions occur at
normal or abnormal rates. Abnormal transition rates
suggest an ADHD diagnosis. “When asked to
transition between a reading and a math task, folks
with ADHD get lost along the way,” he says. “While
the consistency index for normally functioning brain
waves is close to 100 percent, the index for an
individual with ADHD is forty percent or less.”
Kovatchev’s “consistency index” offers medical
personnel a rapid and cost-effective tool for
diagnosing ADHD and assessing treatment
effectiveness. Licensed to Virginia-based Carilion
Biomedical Institute, the invention is currently being
tested in children and adults.
Kovatchev has also applied mathematical models
to other medical problems with similar ground-
breaking results. Working with U.Va.’s nationally
recognized diabetes researchers, he has developed an
algorithm that, when applied in testing devices used
by diabetics several times daily to monitor their
blood sugar levels, can predict with a high degree of
accuracy whether they will experience low blood
sugar within the next twenty-four hours. “A
hypoglycemic event can cause an individual to have
an accident or even lose their life,” he says. “This is a
useful warning system.”
Kovatchev believes he has found success at U.Va.
in part because of the University’s endorsement of
interdisciplinary medical research. “I’ve found
researchers here very open to my ideas, even when it
isn’t immediately obvious that math might be able to
help. By finding new ways to measure how the body’s
systems function, we’ll be better able to keep it in
balance.” |||
Spinner’s services include the following:
Hands-on Help and Business Advice
Spinner Technologies mentors the brains behind
a new business by walking faculty entrepreneurs
through each step of the business creation process.
The Spinner staff consults on issues ranging from
corporate governance to financing, helps business
owners negotiate the best deals to get their products
to the marketplace, and offers workshops and
reference materials.
Affordable Real Estate
Spinner Technologies has made about 3,500
square feet of wet laboratory and office space
available to client companies at reasonable rates.
Approximately half of this space is in the Corner
Building on U.Va.’s Grounds. The rest is located in
the new Emerging Technology Center at the
University of Virginia Research Park.
Referrals
Spinner staff refers client companies to the
experts they need: lawyers, accountants, business
consultants, regulatory advisors, insurance agents,
and others. Spinner Technologies has developed
working relationships with venture funds and angel
investors whose involvement is critical to the success
of many new technology ventures.
U.Va. Policy Guidance
Spinner staff advise client companies about
U.Va. policies and procedures regarding faculty
consulting, leave, and conflict-of-interest issues,
among others. These specialists also work with U.Va.
decision makers who can help ensure a smooth
launch to new technology businesses.
22 University of Virginia Patent Foundation 2003 and 2004 Report Bringing Technology to the Marketplace
Spinner Technologies’ portfolio ofservices to University of Virginia faculty
entrepreneurs has expanded almost as quickly as the
faculty disclose new inventions. Established in 2000
as a for-profit subsidiary of the U.Va. Patent
Foundation and approved by the University’s Board
of Visitors, Spinner meets the needs of faculty
entrepreneurs by drawing upon the Patent
Foundation’s expertise in licensing, legal issues,
management, and financing.
Spinner Technologies Expand s Services to Faculty Entrepreneurs
Patent Foundation News
Spinner Member Companies
Adenosine Therapeutics, LLC
Biopharmaceuticals
Allomics, Inc.
Bio-detection devices
ContraVac, Inc.
Reproductive health
Cellular Materials International, Inc.
Advanced materials
Goha Learning, LLC
Educational software tools
PluroGen Therapeutics, LLC
Wound management
Pinnacle Pharmaceuticals, Inc.
Biopharmaceuticals
“As a bridge between the University and thebusiness world, Spinner Technologies has helped us shape
our business model and development strategies. It also provides
access to local management expertise and talents.”
—Sitong Sheng, Ph.D., Co-Founder and President, Allomics, Inc.
Bringing Technology to the Marketplace 2003 and 2004 Report University of Virginia Patent Foundation 23
Spinner Case Study: ContraVac, Inc.
According to John Herr, contraception is not
just for women anymore. In fact, several research
groups and at least two drug companies are currently
testing various combinations of steroids for use as
male contraceptives. At U.Va. Herr’s discoveries have
led to the development of SpermCheck Contraception, a
diagnostic device for men using male contraceptives. His
start-up company, ContraVac, Inc., is introducing this
and two other diagnostic products with the potential
to transform today’s reproductive health marketplace.
“We do the very best basic science that we can
while considering the clinical uses of new reproductive
genes and proteins that we discover,” says Herr,
professor of cell biology and urology at U.Va. He has
worked in the field of reproductive biology since 1970.
ContraVac was formed to commercialize
technology resulting from work underway at U.Va.’s
Center for Research in Contraceptive and
Reproductive Health (CRCRH), where the group is
“mining” the human genome for proteins involved in
fertilization. The company’s new products are
antibody-based immunodiagnostic tests—similar in
principle to kits currently used by women to monitor
ovulation and pregnancy—that men can use at home
to monitor their fertility. ContraVac products under
development include:
• SpermCheck Vasectomy, for use by recently
vasectomized men to determine when their sperm
counts have fallen below fertile levels;
• SpermCheck Fertility and SpermCheck
Fertility/Motility, to help couples experiencing
fertility difficulties determine if the male partner has
normal concentrations of motile sperm present in his
semen; and
• SpermCheck Contraception, a sperm-detection
test for men taking male contraceptive pills.
d s Services to
These products use the SP-10 antigen, unique to
sperm and discovered by Herr and his colleagues.
CRCRH researchers were the first to develop
monoclonal antibodies that detect the presence of
human sperm. These antibodies and ways to use
them were patented by the Patent Foundation.
Given the broad nature of the patent coverage,
ContraVac tests are expected to be the first in-home
immunodiagnostic products for sperm testing
approved for use anywhere in the world. Princeton
BioMeditech Corporation (known as “PBM”) is
scheduled to produce the first SpermCheck
Vasectomy tests for ContraVac next year.
“We believe SpermCheck tests will provide men
convenience, cost savings, and privacy in monitoring
their fertility status,” Herr says.
No stranger to the world of business, Herr
launched Humagen (now Humagen Fertility
Diagnostics) in 1983 to market antibody probes for
identifying semen in sexual assaults. These days, he is
enthusiastic about the help his latest venture receives
from Spinner Technologies. In addition to leasing
Spinner lab space in the Corner Building at very
competitive rates, he has taken advantage of
marketing, financial, and negotiating services from
Spinner and the U.Va. Patent Foundation.
“Spinner, the Patent Foundation, and the
University all have an interest in fostering local
entrepreneurship,” Herr says. “They share my
commitment to keeping this technology in the
community, where it will generate useful products,
royalties for the University, and most importantly,
new jobs in basic and applied research.” |||
“Spinner Technologies is a one-stopshop for the one-person company.”
—Ed Leary, CFO, ContraVac, Inc.
Bringing Technology to the Marketplace 2003 and 2004 Report University of Virginia Patent Foundation 25
Erik L. Hewlett, M.D.
Senior Associate Dean for Research
Professor, Internal Medicine and Pharmacology
U.Va. School of Medicine
David Highfield
President and CEO, Chemecol, LLC
Charlottesville, VA
Anita K. Jones
University Professor
Lawrence R. Quarles Professor of Engineering &
Applied Science
U.Va. School of Engineering and Applied Science
James Murray
Managing Partner, Court Square Ventures
Charlottesville, VA
Michael H. Van Vranken
Retired IBM Executive
South Salem, NY
Haydn N.G. Wadley
University Professor
Senior Associate Dean for Research
U.Va. School of Engineering and Applied Science
Edgar A. Starke, Jr. Research Professor of Materials
Science and Engineering
Susan Wray, D.D.S., J.D.
Director, Industry Relations
University of Washington School of Medicine
Seattle, WA
U.Va. Patent Foundation Board of Directors
Charles E. Hamner, Jr., D.V.M.
Chair, Patent Foundation Board of Directors
CEO, Hamner Advisory Services
Chapel Hill, NC
Thomas C. MacAvoy
Vice Chair, Patent Foundation Board of Directors
Paul M. Hammaker Professor of Business
Administration (Emeritus)
Darden Graduate School of Business Administration
Terence P. Ross
Board of Visitors Representative
Gibson, Dunn & Crutcher LLP
Washington, DC
Gene D. Block
U.Va. Vice President and Provost
Kathryne Carr
Partner, Tall Oaks Capital Partners, LLC
Charlottesville, VA
R. Ariel Gomez, M.D.
U.Va. Vice President for Research and
Graduate Studies
John C. Herr
Director, U.Va. Center for Research in Contraceptive
and Reproductive Health
Professor, Cell Biology
Professor, Urology
U.Va. Patent Foundation Faculty Advisory Committee
The Faculty Advisory Committee(FAC) provides one-on-one advice and counseling to
U.Va. faculty members on the patenting process,
including strategies for dealing with prior art and
publications, managing strategic alliances with
industry, negotiations, licensing, start-up companies,
research and development agreements, and industrial
grants. Emphasis is placed on how to disclose
inventions, how to manage interactions with patent
attorneys, the structuring of broad and relevant
patent claims, and most importantly, the types of
data required to successfully obtain key patent
claims. The FAC may also be approached for
suggestions on research strategies to enhance the
patentability of basic discoveries by focusing on
proof of principle experiments. The FAC serves as a
sounding board for U.Va. faculty seeking to
understand and critique the process and the pitfalls
of intellectual property management, patenting, and
technology transfer. The FAC also provides advice to
the Patent Foundation on matters of policy affecting
U.Va. faculty.
The FAC helps faculty inventors
learn how to disclose their
inventions, manage interactions
with patent attorneys, explore
the full scope of their inventions,
and develop data needed to
obtain the best patent claims
possible.
26 University of Virginia Patent Foundation 2003 and 2004 Report Bringing Technology to the Marketplace
Bringing Technology to the Marketplace 2003 and 2004 Report University of Virginia Patent Foundation 27
Robert E. Burnett
Associate VP for Research and Graduate Studies
Professor, Chemistry
Office Phone: 434.924.4571
E-mail: [email protected]
Thomas W. Crowe
Research Professor
Director, Semicon Device Lab
Electrical and Computer Engineering
Office Phone: 434.924.7963
E-mail: [email protected]
Richard Guerrant
Thomas H. Hunter Professor of International Medicine
Director, Center for Global Health
Office Phone 434.924.5242
E-mail: [email protected]
John C. Herr
Committee Chair
Director, Center for Research in Contraceptive and
Reproductive Health
Professor, Cell Biology
Professor, Urology
Office Phone: 434.924.2007
E-mail: [email protected]
Joel Linden
Professor, Internal Medicine
Office Phone: 434.924.5600
E-mail: [email protected]
Tim Macdonald
Professor, Chemistry
Office Phone: 434.924.7718
E-mail: [email protected]
Gary Owens
Associate Dean, Graduate and Medical Scientist
Programs
Director, Medical Scientist Training Program
Professor, Molecular Physiology and Biological Physics
Office Phone: 434.924.2652
E-mail: [email protected]
Ronald P. Taylor
Professor, Biochemistry and Molecular Genetics
Office Phone: 434.924.2664
E-mail: [email protected]
Alfred Weaver
Lucien Carr III Professor of Engineering and Applied
Science
Professor, Computer Science
Office Phone: 434.982.2201
E-mail: [email protected]
Robert S. MacWright
Executive Director and CEO
Registered U.S. Patent Attorney
J.D., admitted to practice in NY and NJ;
admitted for patent, copyright, trademark
and trade secret causes in VA
Ph.D., Biochemistry
434.982.0378
Licensing Department
Alan R. Bentley
Assistant Director
Engineering and Physics
Registered U.S. Patent Agent
M.S., Physics; B.S., Physics and
Electrical Engineering
434.982.1615
Marie C. Kerbeshian
Senior Negotiator
Medical Technology and
Biotechnology
Registered U.S. Patent Agent
Ph.D., Zoology
434.982.1608
Miette H. Michie
Senior Licensing Associate
Medical Technology and
Biotechnology
M.S., Molecular/Cellular Biology
434.982.1610
Christopher M. Harris
Senior Licensing Associate
Engineering and Physics
Registered U.S. Patent Agent
Ph.D., Nuclear Physics
434.243.5792
Stephen J. Susalka
Licensing Associate
Medical Technology and
Biotechnology
Registered U.S. Patent Agent
Ph.D., Neuroscience
434.982.3709
U.Va. Patent Foundation Staff
Veena Rao-Mirmira
Licensing Associate
Engineering and Medical Devices
Ph.D., Chemical Engineering; M.B.A.
434.243.7183
Cathryn Good
Licensing Paralegal
434.982.3791
Kelli Megill
Receptionist
434.924.2185
Patenting Department
Rodney Sparks
Biotechnology Patent Counsel
Registered U.S. Patent Attorney
J.D., admitted to practice in PA
Ph.D., Cell Biology
434.243.6103
Robert J. Decker
General Counsel and Senior Patent
Counsel
Registered U.S. Patent Attorney
J.D., admitted to practice in DC,
PA, and VA
B.S., Electrical Engineering
434.924.2640
Sue Ann Carr
Patent Paralegal
434.924.2232
Shawn Harris
Legal Assistant
434.924.2173
Business Department
Jeffrey A. Wilk
Chief Financial Officer
M.B.A.
434.982.3703
V. Lynn Pillow
Assistant Business Manager
B.A., Human Resources
Management
434.982.3689
Spinner Technologies, Inc.
Andrea Alms
General Manager
M.S., Pharmacology
B.S., Economics
434.982.0852
Bringing Technology to the Marketplace 2003 and 2004 Report University of Virginia Patent Foundation 29
30 University of Virginia Patent Foundation 2003 and 2004 Report Bringing Technology to the Marketplace
U.Va. Patent Foundation Statement of Activity for the Fiscal Years Ending June 30, 2003, and June 30, 2004
* does not include $377,835 in patent costs paid by licensees directly to outside counsel on the Patent Foundation’s behalf.** does not include $445,994 in patent costs paid by licensees directly to outside counsel on the Patent Foundation’s behalf.The Patent Foundation’ s financial statements for the years ending June 30, 2003, and June 30, 2004, were audited byHantzmon, Weibel & Company, a certified public accounting firm. This condensed financial information is derived from thosefinancial statements.
.5
1
1.5
2
2.5
78
79
80
81
82
83
84
85
86
87
88
89
90
91
92
93
94
95
96
97
98
99
00
01
02
03
04
DISTRIBUTION TO INVENTORS(in millions of dollars)
2
4
6
8
10
12
14
78 79 80 81 82 83 84 85 86 87 88 89 90 91 92 93 94 95 96 97 98 99 00 01 02 03 04
ACCUMULATED DISTRIBUTION TO INVENTORS(in millions of dollars)
Revenues 6/30/03 6/30/04
License fees and royalties $6,304,380 $5,327,164
Research grants 20,500 20,601
Patent costs reimbursed 881,136 778,585
Interest and other income 151,151 81,791
Total revenue 7,357,167 6,208,141
Distributions
Distributions to University of Virginia 2,461,234 2,025,157
Distributions to inventors 1,278,533 1,198,302
Other distributions (CIT, CME, ATI, etc.) 36,544 38,226
Total distributions 3,776,311 3,261,685
Net revenues 3,580,856 2,946,456
Operating Expenses
Salaries, benefits, and taxes 1,629,730 1,723,256
Conventions, training, and travel 23,809 42,860
Outside Patent costs 567,971* 500,241**
General legal and professional fees 71,896 86,980
Rent and depreciation 145,205 189,944
Office expenses 122,616 125,782
Marketing and public relations 38,486 31,112
Board of Directors’ expense 5,937 4,833
Reserve for uncollectible royalty and patent costs 79,127 68,551
Other 34,641 35,908
Total expenses 2,698,489 2,809,467
Income From Operations 882,367 136,989
Other Income (expense)
Unrealized loss on marketable equity securities 85,277 123,840
Loss on sale of securities -240,166
Net Income $727,478 $260,829
Bringing Technology to the Marketplace 2003 and 2004 Report University of Virginia Patent Foundation 31
Years Ending June 30, 2003, and June 30, 2004
.5
1.5
2.5
3.5
4.57
8
79
80
81
82
83
84
85
86
87
88
89
90
91
92
93
94
95
96
97
98
99
00
01
02
03
04
5
10
15
20
25
30
35
78
79
80
81
82
83
84
85
86
87
88
89
90
91
92
93
94
95
96
97
98
99
00
01
02
03
04
ACCUMULATED DISTRIBUTION TO UVA(in millions of dollars)
DISTRIBUTION TO UVA(in millions of dollars)
Patent Royalty Distribution Schedule
Royalty Distribution Schedules
Inventors’Income
50%
30%
25%
15%
Inventors’Research
7.5%
20%
15%
15%
Patent Foundation
42.5%
42.5%
40%
40%
Inventors’School
—
7.5%
10%
20%
Scholarly Activities
Fund
—
—
10%
10%
Authors’Income
50%
30%
25%
Authors’Research
25%
30%
25%
Patent Foundation
25%
25%
25%
Authors’School
—
10%
15%
Scholarly Activities
Fund
—
5%
10%
Total Royalty Income
<$100,000
$100,000–299,999
$300,000–999,999
>$1,000,000
Total Royalty Income
<$100,000
$100,000–300,000
>$300,000
Software Royalty Distribution Schedule
32 University of Virginia Patent Foundation 2003 and 2004 Report Bringing Technology to the Marketplace
U.Va. Patent Foundation Mission Statement
To provide accessible, responsive, competent, timely, and professional patenting and licensing services to
U.Va. and its faculty and staff.
To serve as an efficient and effective conduit for the licensing of promising U.Va. technologies to industry,
thus promoting their entry into the commercial marketplace, and also generating royalties that can fund
further U.Va. research.
To support and encourage local economic development by licensing locally, by licensing to start-up
companies, and by encouraging and supporting faculty start-up activities.
To serve as a resource for information about patents and licensing, and to encourage recognition that such
matters have become meaningful and valuable aspects of academic life.
To encourage greater integration between academia and industry, hence improving the flow of innovative
university technologies to the public marketplace.
University of Virginia
Patent Foundation
250 West Main Street
Suite 300
Charlottesville, Virginia 22902
434 / 924·2175
www.uvapf.org
Writer/Editor Cathy L. Eberly
Design roseberries
Photography Tom Cogill
Additional Photography U.Va. Patent Foundation archives, istock
University of Virginia
Patent Foundation
250 West Main Street
Suite 300
Charlottesville, VA 22902
434 / 924·2175
www.uvapf.org