Professors allowed to commercialize personal research under new law

Published by adviser, Author: Erica Kurvach - Staff Reporter, Date: October 25, 2012
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SRU professors plan to take advantage of the Commonwealth Higher Education Modernization Act that PASSHE Chancellor  John Cavanaugh presented last Thursday at an Entrepreneurial Forum.

Last Thursday, Cavanaugh spoke about the new law that will allow PASSHE employees to commercialize intellectual property that is tied to their employment.

Ms. Nancy Cruikshank, director of grants and sponsored research, said that the state system didn’t have state patent attorneys before, but now it has a contract with Penn State’s Office of Technology Management to obtain patents, marketing and licensing of intellectual property.

“This is originally a teaching university,” Cruikshank said. “Pitt and Carnegie are research institutions. Since our faculty employees are hired by the state, they could get an attorney through it unless they did on their own.”
The first step for professors is to fill out the Disclosure Form and that is sent to the Chancellor Office and then to the Penn State office to start the process. If the idea is new, novel and innovative, they may patent it.

Cruikshank warns that professors need to take caution because once professors make their idea public knowledge, the “clock starts ticking”. This entrepreneurial phrase means that they have a year from that date to file a patent. Cruikshank suggests that professors need to decide how much information to disclose that might limit their time to file the paper because of competitors.

“I think it’s an excellent opportunity for faculty to commercialize because it allows them to go through patent process since it’s no cost to them,” Cruikshank said. “They would be able to collect royalties once the product is commercialized.”
The Chancellor said that it is a win-win situation for faculty members.

Chemistry Professors Dr. Min Lin, Dr. Jiyoung Jung and a Duquesne professor are researching to find a thin, film monomer unit that will work efficiently to provide an organic lubricity for joints to reduce painful symptoms due to biomedical implants. Lin said that about five to 10 percent of patients treated with biomedical implants experience failure for five to 20 years later because of the wearing of the metal layer and the pressure on the joints. The professors are expecting to patent their product within a year or so while taking advantage of the “Modernization Act” when they come to their findings.

Geology Professors Julie Snow and John Livingston worked with Dr. Hongbo (Bernie) Zhou, a computer science professor, to create data-service software that will allow a non-scientist to utilize this tool to examine how air moves in their region. The software’s purpose is to identify where the air that a city is breathing in is coming from so that they can identify the sources to the air pollution.

The professors are getting $175,000 from the National Science Research Foundation (NSF) to develop a tool that allows someone to look at air pathways over long periods of time such as greater than 30 years.

“The National Oceanic and Atmospheric Administration wrote the model, but it was complicated,” Snow said. “It is used for scientists but is not simplified for the average user.”

Snow and her team are working on a commercialization grant for the I-Corps grant, and NSF is offering grant money.

“If they don’t think it is viable, then we’ll take it to the state,” Snow said.

Zhou hopes to promote the science department with this project.

“The new system simplifies our work and gets support from the PASSHE system,” Zhou said. “Since SRU has many strong programs, I believe there are a lot of opportunities/chances for cross-discipline/cross-major cooperation on research and commercialization of the research results.”

SRU is expected to be involved with the new $100 million Keystone Initiative for Network Based Education Research in the spring which can develop entrepreneurial endeavors.

Dr. Jeffrey Lynn, an exercise science professor, is waiting for an opportunity to take advantage of this new law.

“It is a great idea because it is fair to the people who generate ideas,” Lynn said. “They get the financial benefits. It can aid the university with both finance and prestige.”

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