Academia, patents and entrepeneurship

Imagen de Daniel Alfonso Colón-Ramos

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Caribbean business published an article, which we posted in the news section, regarding a record number of patents filed in Puerto Rico this year. In spite of the positive news they are quick to single out what they consider to be two troublesome signs: 1) Puerto Rico is still filing a significantly lower number of patents as compared to Ireland and Singapore, its two main competitor economies, and 2) for the first time in 5 years not a single patent was filed from any researcher at the University of Puerto Rico. This raises some intreresting points regarding entrepeneurship in Puerto Rico. Have you had any experiences trying to patent an invention in Puerto Rico? How was your experience like? The article also raises some interesting points regarding the role of the academic centers as agencies that drive entrepeneurship and economic activity. Do you believe that is is the role of academic centers to foster entrepeneurship in Puerto Rico? If so, how? Or do you believe that this focus will turn academic centers into corporations, and they should instead focus on their educational role? If so, what should be the role of the entrepeneurial academic researcher in this setting?

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Imagen de Mariluz Frontera

We saw the article in the Caribbean Business but we are not sure who gave the information from the University of Puerto Rico. Being the Director of the Office of Intellectual Property of the UPR System at the Vicepresidency for Research and Technology, I would like to clarify the information. The portfolio of the UPR includes 28 patents, 11 of them granted in the last five years. Also, we have submitted 16 patent applications to the USPTO in the same period of time. The Institutional Policy on Patents, Inventions and their Commercialization provides the mechanisms to protect the intellectual property of our researchers.
Imagen de Daniel Alfonso Colón-Ramos

Thanks for the clarification Mrs Frontera. Is this information publicly available, and would it be possible to get a description of some of these patents so that CienciaPR members can see the type of discoveries being patented in PR?
Imagen de Mariluz Frontera

Yes, you can get the descriptions from the USPTO website. The patent numbers and titles are: 5,059,294 (Method for separating nucleid acids and nucleid acid probes); 5,274,689 (Tunable Gamma Ray Source); 5,405,659 (Method and apparatus for removing material from a target by use of a ring-shaped elliptical laser beam and depositing the material onto a substrate); 5,468,500 (Soursop flavor); 5,470,572 (Non-infectious simian immunodeficiency virus particles produced by Cell Line CRL 11393); 5,475,228 (Unipolar blocking method and apparatus for monitoring electrically charged particles); 5,557,471 (Lens for depositing target material on a substrate); 5,746,823 (Organic crystalline films for optical applications and related methods of fabrication); 6,204,289 (Cembranoid inhibitors of nicotinic acetylcholine receptors); 6,171,198 (Merry-go-round for Wheelchairs); 6,227,981 (Ball ramp assembly); 6,117,362 (Long Persistence Blue Phosphorescence); 6,267,911 (Long Persistence Green Phosphorescence); 6,198,530 (Organic crystalline films for optical applications and related methods of fabrication); 6,533,304 (Mechanically assisted standing wheelchair); 6,596,259 (Metal cubane structure contained in an octanuclear complex stable over several oxidation states and a method of producing the same); 6,145,374 (Scanning force microscope with high-frequency cantilever); 6,170,202 (Building system using shape memory alloys); 6,231,920 (Electranalytical applications of screen-printable surfactant-invoiced sol-gel graphite composites); 6,452,170 (Scanning force microscope to determine interaction forces with high-frequency cantilever); 6,534,134 (Apparatus and method for pulsed laser deposition of materials on wires and pipes; 6,608,205 (Organic crystalline films for optical applications and related methods of fabrication); 6,644,137 (Sampling probe); 6, 539,738 (Compact solar-powered air conditioning systems); 6,536,677 (Automation and control of solar air conditioning systems); 6,799,464 (The microscopic model of scanning force microscope); 6,489,357 (Tobacco cembranoids block the expression of the behavioral sensitization to nicotine and inhibit neuronal acetylcholine receptors); 6,953,536 (Long persistent phosphors and persistent energy transfer technique). Seven of the patents are co-owned by other institutions. If you want some more information about any of these patents, please feel free to contact me.
Imagen de Carlos Rinaldi

The issue of intellectual property generation in academia is an interesting one and subject to much debate. It has been raised at almost every technical conference I have attended in Puerto Rico. Let us start with a hard fact: with the exception of a few institutions, most universities engaged in generating and licensing/commercializing their intellectual property don’t make a profit. Still, having a patent can help in establishing research and development collaborations with industrial partners, as I have been told by faculty colleagues from other institutions. I tried to submit a disclosure recently, but the IP Office at the UPR did not come to a concrete decision regarding whether to proceed with the disclosure or not. In that particular case the process had complications arising from mine and my colleague's ignorance of IP laws when researchers from different institutions collaborate (you need a non-disclosure agreement, otherwise the actual inception of the patentable idea becomes prior art against the patent!). So I would say that it is necessary for our faculty to be better trained in these aspects. That said, it is also important for the IP Office to come to decisions in a timely manner, as research-active faculty at UPR have more pressing challenges to face (more below). Now we come to the issue of whether generating IP should be an essential role of academic researchers. I believe it should be, but it should not bear the highest priority. Generating patents is a measure of the research productivity of an academic institution, but it is not the primary metric by a long shot. The primary metric is research expenditures, brought in through externally funded grants. Another hard fact: A simple check at the National Science Foundation website (www.nsf.gov) shows that the University of Puerto Rico *system* has 57 active NSF grants. That is 56 grants across the 11 campuses (for those who are counting: 9 through the Resource Center for Science and Engineering, 25 in Mayaguez, 2 in Ciencias Medicas, 6 in Humacao, and 14 in Rio Piedras). If you check them one by one you will see many of these grants are for educational purposes, hence they don't count as a measure of research productivity. I doubt we are faring much better in the other Federal funding agencies (could someone post how many NIH R01’s the UPR currently has?). For comparison, MIT has 422 active NSF grants, most of them for research. I make the comparison to MIT because it is one example of an institution that makes a profit from intellectual property. I will leave it to the reader to make comparisons to the university of his or her choice (simply enter the instution's name and select active awards at http://www.nsf.gov/awardsearch/). Now, one could argue that the reason MIT (and other similar institutions) is so successful at generating patents is because of its large research budget. One would be tempted to estimate the number of patents UPR should "realistically" be submitting based on its relative research expenditures with respect to MIT (or any other institution). I have actually heard an IP lawyer in Puerto Rico raise this argument. The fundamental flaw in the argument is that the relation between patent production and research expenditures is not linear as supposed. Generating intellectual property requires carrying out innovative research. As anyone actually *engaged* in innovative research can tell, this requires a lot of supporting infrastructure such as state-of-the-art instrumentation, skilled technicians, and access to the most recent scholarly publications, not to mention laboratory and office space for students and faculty. The establishment and upkeep of such infrastructure does not scale linearly with external funds either. Take postdoctoral research associates as an example. If funded through NSF it is highly unlikely that a Principal Investigator in a standard grant will have the funds necessary to pay for such an assistant. In fact, even a medium collaborative research project (in the order of $1M) will not provide the necessary funds. To be able to support postdocs using NSF funds you need larger infrastructure or center scale grants (we have two in Puerto Rico – the EPSCoR RII and a CREST – both through sheltered funds programs). Similar arguments apply to the acquisition of shared instrumentation facilities (such as electron microscopy, etc.). I would then argue that owing to the UPR’s relatively small research budget (and the lack of local government support – but that is a subject for another day) we currently do not have the supporting infrastructure required to carry out the innovative research that generates patents at a rate comparable to other institutions (and States). I am confident this will soon change, through the hard work of UPR researchers and administrators.
Imagen de Daniel Alfonso Colón-Ramos

Dr Rinaldi, Thanks for the insightful comments. Two thoughts come immediately to mind: 1) Do you (or other people in CienciaPR for that matter) think it would be useful if CienciaPR helped organize an IP workshop, bringing lawyers who have expertice in IP, scientistswith succesfully patented innovative technologies, and venture capitalists to speak to P Rican researchers about how to go from an idea to an IPO? I know in the Bay Area UCSF, Stanford, Berkeley, etc have similar courses. One of our advantages in this site is that we have non-scientists (lawers, VC) who are interested in science and PR and might be interested in participating in this conference and contributing their expetice. These courses might be offered in PR already for all I know, but if so, maybe we can do something through this site to help guide entrepeneurial scientists interested in these topics. 2) Regarding the other points, some scientists at CAPRI were interested in identifying what scienstits in PR thought were the biggest roadblocks to conducting research in the archipelago. We thought that as a community, we could combine forces and help bring some of these concerns to the attention of the people working to fix them. If you, or anybody else in this forum, is interested in actively participating in this survey CAPRI is about to conduct, I invite you to contact Adelfa Serrano or Mariano Garcia Blanco. You can find their information in the CienciaPR directory.
Imagen de Carlos Rinaldi

I think workshops on IP are useful. There have been some at UPR in the recent past (organized by the IP office), but more are needed. I also think that a mechanism for the research community to communicate (such as this website) would be of use. Still, my point is that the small number of patents being generated in Puerto Rico is due to the relatively small research budget and lack of infrastructure. That will not be fixed through workshops and having access to experts on IP. Researchers in Puerto Rico need to realize their full potential and tap into all the research funding sources available, competitive and otherwise. Also, the University and local government need to take steps to improve the research infrastructure and provide incentives for faculty to remain research active (such as performance-based salary increases). The molecular science building is an example of a needed investment, but it is not enough. Research buildings are needed close to the Mayaguez and Humacao campuses, if their (significant) research efforts are to be supported. Perhaps the most basic thing the UPR could do is provide new faculty with *competitive* start-up packages. This is especially important if we are to develop research areas in which the Island has few, if any, experts. At the moment in the UPR most new faculty are hired with zero or minimal start-up research funds ($5,000 in some cases I’ve heard -- by comparison my colleagues who obtained faculty positions in the States had offers ranging from $300,000 to $500,000). These new hires then have to build a lab from the ground up by writing external research proposals. In some cases, new faculty don’t even have access to adequate (or inadequate for that matter!) lab space. As a beginning investigator it is very difficult to obtain funds from agencies if your home institution does not provide support. Most NSF grants provide only for minimal equipment expenses (except for the Major Research Instrumentation program), hence if as part of your proposal you need to request funds to acquire all the associated equipment you will not do well in the review process. In the end, new faculty become frustrated with their lack of success and the lack of institutional support. Hence they give up on writing grant proposals. The fact that the UPR’s tenure and promotion process is not particularly demanding in terms of research productivity does not help in this sense, and neither does the fact that *everybody* gets the same raise in salary *regardless* of the quantity and quality of their work during the previous year. Finally, economically it actually makes more sense to stick to teaching four courses per semester (and doing consulting on the side if you are an engineer) and then requesting summer courses. At UPR you get paid 1.125 ninths of your base salary if you teach a 3-credit summer course (that is in addition to your base salary). If you manage to get two you are getting paid 2.25 ninths of your base salary to teach courses you have already developed during the academic year. Assuming both courses follow the four-week format this translates to one month of full time work. By comparison, the federal cap on summer salary is 2 ninths of your base salary, and that is for two full months of full time work in the lab and supervising students! Another initiative would be to provide center-level support (for instrumentation, technicians, postdocs, etc.) in areas with *demonstrated* strengths (demonstrated through competitive research funding acquired and through publications). Many States provide this kind of support, which when well-invested results in increased external funds being acquired by the participants (such as highly competitive center-level funds from federal agencies, e.g. MRSEC, ERC, NSEC, etc.). The key here is to identify areas in which there is an *existing* critical mass of researchers who have been *successful* in obtaining external funds and publishing their work. All too often people see this kind of support as a way to jumpstart an area of research in which there are few, if any, experts in the island. This, in my opinion, is a mistake. The funding agencies would not grant funds for such an endeavor and neither should the UPR nor the Puerto Rico government. Center-level support should serve as a glue to bring together researchers who are already active in the area and support work which they could not undertake separately. It should *not* be used as a way of supporting the research programs of individual investigators, except start-up funds for new faculty hires associated to the center (which should be few compared to the starting center participants, otherwise the center did not have critical mass in the first place) Another area in significant need of improvement is the UPR’s access to technical journals and citation databases. Though there have been some recent improvements in this area (we now have Web of Science, but I believe we only have access to the most recent five years of the database) access to specialized journals is still needed. Easy, fast access to the most recent literature is imperative if faculty are to prepare competitive research proposals and if students are to identify potential areas for contributing through their theses.