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2008 VOL. 2
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  Research Goes to Market
By Analisa Nazareno

With research funding approaching $40 million, UTSA has built an extensive commercialization program designed to take inventions from the laboratory and move them into the marketplace, either through licensing to existing companies or through the startup of new companies. The result of that commercialization is the creation of new jobs for San Antonio.

The commercialization program is made up of a mixture of UTSA offices: the South Texas Technology Management office, which is a regional technology transfer office; the Center for Innovation Technology and Entrepreneurship; the Institute for Economic Development; the Institute for Cyber Security; and the Office for Contracts and Industrial Agreements. It is also supported by the San Antonio Technology Accelerator Initiative, a private, not-for-profit Texas corporation that assists researchers, inventors and entrepreneurs in marketing their technologies.

By establishing a state-of-the-art technology transfer office that helps researchers bring their discoveries to the commercial marketplace, UTSA hopes to recruit more top-notch faculty who will help the university achieve its goal of becoming a premier public research university, said Marianne Woods, senior associate vice president for research administration.

“We have moved at a phenomenal rate to get everything up and running,” Woods said, “in part because you can’t attract major researchers if you don’t have these facilities in place. These days, they expect them.”

Woods moved to UTSA in 2007 from the University of Alabama, where she established the offices for research compliance, technology transfer and the Bama Technology Incubator, which worked to develop and commercialize marketable products and processes through business ventures. At UTSA, Woods coordinates similar endeavors, which include the growth of the South Texas Technology Management (STTM) regional office, expansion of research funding and development of the Roadrunner Incubator.

Professors who make discoveries turn to the STTM office to learn whether there is patent and licensing potential. Then the Center for Innovation and Technology Entrepreneurship (CITE), which helps students, faculty and other entrepreneurs launching new technology ventures, provides entrepreneurial training and the Roadrunner Incubator offers startup support.

“They’re all interrelated, and they all have to work together,” Woods said.

Invention Management

Last year, UTSA and the University of Texas Health Science Center at San Antonio jointly recruited Kenneth Porter from the University of Colorado to establish STTM, which oversees patenting, marketing and licensing for research discoveries at both institutions, as well as at the University of Texas at Brownsville and the University of Texas Pan American. STTM is jointly supported by these groups and the University of Texas System.

At Colorado, Porter participated in transforming technology transfer from a single-campus approach to a system-wide, best-practices operation, which led to a dramatic turnaround for the university and continues to push it into the top echelon of U.S. technology transfer offices.

In San Antonio, he has developed a similar office with “just-in-time” patenting practices that emphasize the commercial potential of inventions, economize the STTM patent budget and focus STTM personnel and UTSA inventors on licensing inventions. This has built industry partnerships and has continued to reap rewards—both through royalties and by gaining access to industry facilities and expertise.

Emphasizing cradle-to-grave invention management by skilled licensing personnel, the process that Porter has put into place at STTM moves decision-making from the hands of academic committees to those of licensing associates, who assess inventions using STTM and inventor industry contacts, the U.S. Patent and Trademark Office databases and any other resources available that can shed light on the patent landscape and commercial potential for a particular invention.

Once the uniqueness and commercial viability of an invention have been determined, the associate works with university researchers to apply for a patent. Patents are drafted and filed by a small number of partner intellectual property law firms that work closely with STTM to create strong and defendable patents at reasonable costs. Limiting the number of attorneys builds a close working relationship so the attorneys understand the expectations of the office, become proficient at working with faculty, and, effectively, extend the reach of STTM.

At many of the universities that have set up these practices, the proceeds from the licensing of intellectual property fund the operations of the patenting and licensing offices. And while the university currently funds a part of STTM operations, Porter said, as the regional office grows and demonstrates success, it will move toward total self-funding as well as provide a return to UTSA inventors and UTSA research administration.

“It’s necessary to have a functioning technology transfer office to effectively recruit Tier I faculty,” Porter said. “This is especially true for engineers, because their research is closely aligned with industrial applications.”

Currently, UTSA maintains an active portfolio of more than 30 invention disclosures, including 11 active patents. These are statistics Porter hopes to improve quickly in the next few years. To assist with that goal, he recently announced a $1 million fund that provides researchers with $10,000 to $25,000 grants to be used toward research that advances inventions to the marketplace.

“In Colorado, it took us three years to implement similar funding, and it was the most important thing we did,” Porter said. “Such funding resulted in licensing opportunities, new startup companies, and follow on investment from venture capitalists and from the legislature.”

Launching New Technologies

While many university researchers license their discoveries to established companies, some form their own businesses or work in conjunction with entrepreneurs who will then start a business centered on the newly developed technologies.

That’s where Cory Hallam, CITE and the Roadrunner Incubator come in. Hallam joined UTSA in 2006 and quickly set up CITE as a joint venture between the College of Business and the College of Engineering. He designed CITE to cross-train engineering and business students, support enterprising faculty members, and provide business and technology training for the larger San Antonio entrepreneurial community.

Toward the end of his first academic year, Hallam launched the Roadrunner Incubator. One of its first projects was to provide laboratory space and support to a local startup company that is working with cutting-edge radio frequency technology for cancer treatments. Other incubator participants include a student team working on an Internet book-trading company and another student team working on a baby-monitoring device that is intended to prevent Sudden Infant Death Syndrome.

Hallam holds a doctorate from Massachusetts Institute of Technology in technology management and policy. Prior to joining UTSA, he managed programs for aerospace government contractors Aurora Flight Services and Northrop Grumman Integrated Systems.

Hallam also created a one-day technology entrepreneurship boot camp, designed to help prospective entrepreneurs understand the key elements needed to launch a technology company. The semi-annual program has brought in angel investors to discuss what they look for when investigating whether to support a startup technology company; successful local entrepreneurs to describe the development of their businesses; and faculty from the College of Business, who address the basic elements needed to launch an enterprise.

Also established was a cross-collegiate technology startup competition that pairs engineering students who have designed inventions with business students who help them develop business plans. Competitors go before a committee of local investors, who grill students on their knowledge of the technology and the marketplace for such inventions. Winners of this competition then become eligible for a spot in the Roadrunner Incubator.

“When you look at most Tier I universities, many of the students and faculty who develop intellectual property also start new companies based on their intellectual property,” Hallam said. “And that’s what we’re trying to build at UTSA. What we are doing is creating a pipeline of technology and business innovators and entrepreneurs who think about new venture creation, which is responsible for over 60 percent of the new jobs in the country. We’re giving them the skills, the training and the support to do that.”

Tech Transfer in Action

And while the establishment of STTM and CITE is likely to draw more top researchers who can help UTSA reach premier public research university status, Woods said the addition of Ravi Sandhu as the founding executive director and chief scientist for the Institute for Cyber Security also has great potential to contribute to this effort.

Sandhu is the principal investigator overseeing a $3.5 million grant from the Texas Emerging Technology Fund, which provides funding for startup and growth-stage technology companies, to develop secure cyber systems that can be used by both government and commerce to protect daily operations and transactions.

Leaders in the San Antonio technology development and investment community say they are excited about the technology transfer activities at UTSA, and are particularly excited about the addition of Sandhu, who holds 10 U.S. security technology patents, has published more than 170 technical papers on cyber security and is co-founder and chief scientist of TriCipher, a company that provides authentication technology for banking and health care service providers.

“Here’s an industry leader who has world-renowned research credentials, who also has knowledge on how to commercialize what he invents,” said James Poage, president and CEO of the San Antonio Technology Accelerator Initiative. “What he brings as a role model is gold. That’s what will translate UTSA to a Tier I university.”

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