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Penn License and Patents:
Center for Tech Transfer

By Carl Maugeri


Penn President Judith Rodin perhaps put it best: "You can be certain that if ENIAC were invented at Penn today, the University would hold the rights."

Dr. Rodin was referring to the evolution in thinking over who owns the products of scientific inquiry that has had a dramatic impact on all research campuses. Patents, licensing agreements and intellectual-property rights were once terms found only in the vocabulary of business and industry. No longer. Today, with greater competition for a shrinking pool of federal dollars for basic research and the acknowledged need to move research discoveries to the marketplace to boost U.S. competitiveness, universities are taking much more careful stock of their research results.

The world is, of course, a much more complex place than it was in 1946 when Penn unveiled the world's first electronic computer, ENIAC, at the Moore School of Engineering. The machine, celebrating its 50th anniversary with a national celebration beginning in February, changed the world and, in large measure, launched the age of information. It also launched a multibillion-dollar computer industry. Universities, already under pressure to find new revenues to support teaching and research missions, are unlikely to let similarly lucrative discoveries slip away again.

At Penn, the Center for Technology Transfer is at the forefront of this effort. According to a survey by the Association of University Technology Managers in 1993, the Center processed 119 disclosures, the first step in obtaining a patent, ranking Penn fifth among its peer institutions, ahead of Harvard, Columbia and Yale. Penn ranked sixth in the overall number of patents obtained that year among the same group with 54. MIT led the list with 161 patents followed by Cornell, Harvard, Johns Hopkins and Stanford.

Those patents cover a broad range of technologies, including gene therapy, techniques for producing important chemicals, plastics that conduct electricity and techniques to detect microscopic cracks in metal, leading to safer bridges and aircraft.

Lou Berneman, the Center's new director, is moving aggressively to help Penn capitalize on its rich intellectual resources. He cites several mentions in the recently released, "Agenda for Excellence, A Strategic Plan for the University of Pennsylvania," as proof that technology transfer will play a major role in shaping Penn's research endeavor into the next century.

As its main focus, the Center obtains and manages patents, copyrights and trademarks derived from the University's academic and research enterprise. The Center creates relationships with industry to develop, protect, transfer and commercialize intellectual property.

"Patents and licenses are tools," he said. "And these tools lead to the development of technology for the public good."

Dr. Berneman said that an effective technology-transfer office helps attract and retain faculty who are working in cutting-edge fields.

"By building closer ties between faculty and industry, we are helping generate more opportunities for industrial research funding," he said. That funding will be reinvested in the University's research infrastructure, in part filling the gap left by diminished federal dollars once targeted for that purpose.

The Center also makes its impact felt beyond the campus by spurring economic development locally.

"We need to be broader in our view of what tech transfer does--it creates jobs, helps start-ups [companies] and augments the intellectual capital of the University," he said.

Since taking on the directorship of the Center, Dr. Berneman has begun a reorganization effort aimed at building greater efficiency into the technology-transfer process and streamlining costs.

"We must become more efficient in obtaining intellectual-property protection, more productive in licensing, work smarter and generate a greater return," he said.

Dr. Berneman sees the Center's reorganization as an opportunity for Penn students from a variety of fields. In the coming months, he will be recruiting work-study students and interns who want experience in the business side of technology. "Students in law, medicine and the sciences," he said, "will have the chance to see firsthand how intellectual-property works and products are commercialized."


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