University committed to smoothing the path from laboratory to marketplace
By Steven Schultz
Princeton NJ -- The federal government's decision this month to approve a cancer drug that grew out of Princeton research was an important moment not only for cancer patients. At Princeton's Office of Technology Licensing, the drug approval was an example of a successful and long-standing effort to facilitate the transfer of basic discoveries from the laboratory to the marketplace.
And, by all indications, it is the kind of success that will be occurring more often at Princeton. In recent years, both the number and market impact of Princeton patents has increased dramatically. In 1994, for example, the University filed for 31 patents, compared to 117 patent applications filed last year (see "By the numbers").
In December, Technology Review magazine, published by the Massachusetts Institute of Technology, ranked Princeton sixth among U.S. universities for "technological strength," an increase from 43rd place in 1997. The ranking measures both the number of patents issued and how often those patents have been cited in the current year relative to all U.S. patents.
Rankings and numbers of patents, however, are not the driving force behind the University's technology transfer efforts, said John Ritter, director of the Office of Technology Licensing. "Our mission is to assist the faculty in bringing their technologies that are developed at Princeton to the public so many people can benefit," he said.
That mission includes two primary objectives, Ritter said: First, to provide a service to Princeton researchers who want to patent their work and develop its commercial potential; and second, to fulfill the University's responsibility to maximize the benefit of its work for society. Part of that responsibility is legal, as prescribed by the Baye-Dole Act, a federal law passed in 1980 giving universities commercial rights to discoveries made with public money, but also requiring them to make sure those discoveries are diligently commercialized.
In 2003, Princeton negotiated 18 "license and option agreements" -- contracts that give companies rights to develop products based on research done at Princeton. In 1994, the University signed six such agreements.
With its small size, Princeton will never produce as many patented inventions as larger universities do. It focuses instead on high-quality research with great potential benefits, said Michelle Christy, director of the Office of Research and Project Administration, which includes Ritter's office. "We are small, but extremely productive," Christy said.
Even at Princeton, not every invention can be patented, Ritter said. The process can take years, cost $20,000 or more and requires continuing involvement by the inventor. "We try to make it as painless as possible for faculty members, but the reality is that the patenting and commercialization process is time consuming."
Ritter works with researchers to determine the commercial viability of their discoveries and then guides them through the process of filing a patent disclosure, which establishes a first level of protection. Ritter said he never advocates delaying the publication of a result to accommodate patenting concerns. "If you tell me it's being published tomorrow, I'll file a provisional patent application today," he said, noting that more lead time makes for a better filing.
Ritter attributes much of Princeton's rise in the Technology Review rankings to a few patents that frequently are cited in other patents. One such patent came from the lab of electrical engineering professor Stephen Forrest, who developed a new kind of light-emitting device that could lead to less costly, more efficient flat-panel video displays.
That quality of research, in turn, depends a lot on the University's success in recruiting and retaining the best faculty, staff and students and providing top-quality facilities, said Will Happer, professor of physics and chair of the University Research Board. "There would be no technology transfer without motivated, talented people and the conditions that permit them to be creative," Happer said. "Princeton University itself deserves a lot of credit in that regard."
Another element in Princeton's success in recent years has been the skill Ritter has brought to the job since coming to Princeton in 1996. "Technology transfer has become much easier since John Ritter came to Princeton," said Happer. "John is a real professional who knows how technology transfer works and is very good at making it happen. A lawyer with a strong technical background, John is very good at finding links between technology developed at Princeton and customers."
Christy noted that Ritter is particularly good at finding common ground among sometimes competing interests. "It's important to balance the interests of the University, the inventor and the public when putting together these partnerships, and John does this very well," Christy said.
Although Princeton's efforts have increased in recent years, its commitment to technology transfer dates back many decades. Happer said that when he was a graduate student at Princeton in the 1960s, physicist Robert Dicke helped to found Princeton Applied Research, a company that developed electronic amplifiers that were used in laboratories around the world. In fact, Happer, who is a specialist in atomic physics, went on to help found a company that is using ideas from his research to improve medical MRI technology.
The discovery that led to the new cancer drug, Alimta, grew out of work in the laboratory of chemistry professor emeritus Edward Taylor. Taylor created the key chemical compound in 1989 as part of a collaboration with Eli Lilly and Co., which then licensed rights to the patent. The Food and Drug Administration approved Alimta on Feb. 5 for treatment of an asbestos-related form of cancer.
The 15 years it took Alimta to move from the laboratory to the market is a long time, but not unusually so, Ritter said. Many inventions take at least a decade, and that is something that researchers need to understand, he said.
"In some cases, it takes a while for the market to catch up with the invention," Ritter said.
In the meantime, the Office of Technology Transfer currently lists 87 new technologies available for licensing. That list and further information about the invention disclosure and patenting process is available <Web page>.
[p]Professor of electrical engineering Stephen Forrest and colleagues in his lab have patented a number of important discoveries in the area of organic electronics in recent years, including inventions that could lead to better flat-panel video displays. The number and influence of patents coming from Princeton labs has increased dramatically in recent years.