What happens when a faculty inventor’s desire to rush his results into publication collides with the TTO’s efforts to protect the new discovery? Often times, unfortunately, the university loses out on the right to patent or reap any financial rewards from the innovation. By 2003, Fred Lee, PhD, the director of the Center for Power Electronics Systems (CPES), an industry consortium assembled by Blacksburg-based Virginia Tech, had seen this scenario play out so many times that he was determined to come up with a better way. Lee’s solution is the Intellectual Property Protection Fund (IPPF), a mechanism whereby a select group of consortium members pays higher annual fees to get royalty-free access to all the technology developed at CPES. The membership fees go toward patenting those innovations that IPPF members decide should be protected, as well as to other research endeavors. There are caveats to the approach. For instance, inventors lose out on the ability to earn any royalties from their inventions. Further, this mechanism does not fully address the rampant patent infringing that goes on in the electronics arena. However, Lee stresses that the IPPF and its fee-based membership approach has doubled the amount of revenue that CPES brings in to the university every year. And he has had no trouble finding consortium members willing to pay the hefty fees required to gain full access to IPPF and CPES technologies.

The IPPF is actually a select group of about 30 companies from the CPES Industry Partnership Program. The highest dues category — at $50,000 per year — gives the companies first crack at evaluating new CPES technologies as well as a non-exclusive license to those technologies that IPPF elects to patent. Participants gain the efficiency of eliminating negotiations and contracting for every patent they wish to license. “They have this blanket agreement so that they have access to all of the IP generated by this mechanism, and they don’t need a lawyer to get involved in the process,” he says. No less important, he adds, is that they get an early look at promising innovations. IPPF is bringing in anywhere from $1 million to $2 million dollars per year in membership fees from the arrangement. “The concept works very well for us to market our IP and for industry to profit from it without any hassle,” says Lee. A detailed article on the IPPF approach appears in the June issue of Technology Transfer Tactics. For subscription information, CLICK HERE.

Posted July 1st, 2009 under Tech Transfer

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