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Bringing Technology to the Marketplace 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,

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Page 1: 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,

Bringing Technology to the Marketplace

University of Virginia

Patent Foundation

2003 and 2004 Report

Page 2: 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,

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.

Page 3: 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,

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

Page 4: 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,

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

Page 5: 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,

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

Page 6: 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,

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

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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)

Page 8: 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,

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

Page 9: 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,

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)

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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

Page 11: 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,

n d Barbara Mann

While acknowledging that developing

diagnostic tools is an honorable

achievement, Petri and Mann have

set their goals even higher.

Page 12: 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,

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.

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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

Page 14: 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,

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

Page 15: 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,

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. |||

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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.”

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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.

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Bill Walker, at right, with Travis Blalock, left,and John Hossack, center.

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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

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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

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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.” |||

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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.

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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.

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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

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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

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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]

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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

[email protected]

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

[email protected]

Marie C. Kerbeshian

Senior Negotiator

Medical Technology and

Biotechnology

Registered U.S. Patent Agent

Ph.D., Zoology

434.982.1608

[email protected]

Miette H. Michie

Senior Licensing Associate

Medical Technology and

Biotechnology

M.S., Molecular/Cellular Biology

434.982.1610

[email protected]

Christopher M. Harris

Senior Licensing Associate

Engineering and Physics

Registered U.S. Patent Agent

Ph.D., Nuclear Physics

434.243.5792

[email protected]

Stephen J. Susalka

Licensing Associate

Medical Technology and

Biotechnology

Registered U.S. Patent Agent

Ph.D., Neuroscience

434.982.3709

[email protected]

U.Va. Patent Foundation Staff

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Veena Rao-Mirmira

Licensing Associate

Engineering and Medical Devices

Ph.D., Chemical Engineering; M.B.A.

434.243.7183

[email protected]

Cathryn Good

Licensing Paralegal

434.982.3791

[email protected]

Kelli Megill

Receptionist

434.924.2185

[email protected]

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

[email protected]

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

[email protected]

Sue Ann Carr

Patent Paralegal

434.924.2232

[email protected]

Shawn Harris

Legal Assistant

434.924.2173

[email protected]

Business Department

Jeffrey A. Wilk

Chief Financial Officer

M.B.A.

434.982.3703

[email protected]

V. Lynn Pillow

Assistant Business Manager

B.A., Human Resources

Management

434.982.3689

[email protected]

Spinner Technologies, Inc.

Andrea Alms

General Manager

M.S., Pharmacology

B.S., Economics

434.982.0852

[email protected]

Bringing Technology to the Marketplace 2003 and 2004 Report University of Virginia Patent Foundation 29

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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

Page 33: 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,

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

Page 34: 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,

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.

Page 35: 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,

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

Page 36: 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,

University of Virginia

Patent Foundation

250 West Main Street

Suite 300

Charlottesville, VA 22902

434 / 924·2175

www.uvapf.org