Q&A: How WARF Plans to Stay Relevant in Lean Times for Tech Transfer

Angela Shah

Quick, name one of the oldest—if not the oldest—university tech transfer institutions in the country.

If your brain automatically took you to a spot in New England or sunny California, think again. It’s the Wisconsin Alumni Research Foundation, or WARF, which was founded nearly 90 years ago in 1925.

What would become WARF started when Harry Steenbock, a University of Wisconsin biochemistry professor, discovered a way to increase the vitamin D content of food, which could eliminate rickets, a crippling bone disease in children caused by a deficiency in that vitamin. Quaker Oats offered him $900,000—worth almost $12 million today—for the rights to his invention.

But Steenbock believed that the university should benefit from research he had conducted there. And so, he began to petition regents to set up a foundation composed of alumni that would manage patents from university research, and license the inventions to people in the business world who could make them into useful, profitable products. Any royalty income from the products would flow back to the foundation, and be put back into additional UW research, creating what WARF founders envisioned would be a virtuous cycle.

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UW-Madison, WARF: Announce new tech transfer partnership

MADISON - The University of Wisconsin-Madison and the Wisconsin Alumni Research Foundation (WARF) today announced the launch of a major new partnership focused on entrepreneurship on the UW-Madison campus, building on a long legacy of collaboration to move scientific innovation to the marketplace.

In defining, co-funding, and launching D2P - shorthand for Discovery to Product - UW-Madison and WARF seek to more effectively cultivate a culture of entrepreneurship among faculty and students, and better support the formation of new companies, while systematically expanding the number of innovations that reach the market through startups or licensing arrangements with established companies.

"D2P is a big step forward in our support of entrepreneurship among both faculty and students," says UW-Madison Chancellor Rebecca Blank, explaining that her time at the U.S. Department of Commerce reinforced her belief in universities as the "idea factories" required to keep American companies competitive. "I want to make sure that UW-Madison is on the cutting edge of entrepreneurship and technology commercialization."

D2P will be funded initially through a $1.6 million commitment from UW-Madison with matching funds from WARF.

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EU bans patents of stem cells if embryo destroyed

AFP - Europe's top court on Tuesday banned researchers from patenting any process to extract stem cells when it leads to the destruction of a human embryo.

In a ruling that could affect medical research, the EU Court of Justice court said the use of human embryos "for therapeutic or diagnostic purposes which are applied to the human embryo and are useful to it is patentable."

"But their use for purposes of scientific research is not patentable," the court ruled.

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Mining Patent Gold: What Every CEO Should Know

By Marshall Phelps and John Cronin

In the weeks since Google acquired Motorola Mobility and its 17,000 patents for $12.5 billion, the media has engaged in an orgy of hand-wringing over a supposedly broken patent system that diverts resources away from innovation and towards litigation instead.

Ignore the histrionics. What the Google-Motorola deal actually proves is that innovation—and its embodiment in intellectual property—is more valuable and necessary than ever for market success. What’s more, patents are no longer simply akin to mining claims that give one the exclusive right to pan for gold. In many cases, patents are the gold itself.

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Patent reform OK'd; critics say it impedes start-ups

By John Schmid of the Journal Sentinel

As the nation's economy struggles to reduce persistent unemployment and avert a double-dip recession, the Senate on Thursday passed a sweeping overhaul of the American patent system that supporters touted as essential to job-creation but that critics decried as a strike against innovation and a sellout to big business.

"My prediction is that fewer new companies will be started and many universities will find it too expensive to patent technologies arising from their research," said Carl Gulbrandsen, managing director of the patent licensing arm of the University of Wisconsin-Madison, the Wisconsin Alumni Research Foundation.

The view in Washington was diametrically different: The Senate overwhelmingly approved the America Invents Act by a vote of 89-9, making it a rare piece of major economic legislation to achieve bipartisan support.

The bill, already passed by the House, was to be sent immediately to President Barack Obama, who has been a strong supporter.

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Former Hewlett-Packard exec to lead WARF's licensing team

By Kathleen Gallagher of the Journal Sentinel

Dec. 15, 2010 10:20 a.m.

The Wisconsin Alumni Research Foundation, one of the country's biggest university technology transfer organizations, has named Hewlett-Packard's former director of intellectual property licensing as its chief technology commercialization officer.

Leigh Cagan will oversee the foundation's nine-member licensing team that works to match University of Wisconsin-Madison discoveries with companies that can develop the technology for commercial markets. About 370 companies now have licensing agreements with the foundation, which is known as WARF.

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Patent backlog clogs recovery

Agency’s inability to keep pace undermines American innovation, competitiveness

First of two parts

Alexandria, Va. — On a campus of boxy office buildings nine miles outside Washington, D.C., some 6,300 patent examiners hold the nation's economic future in their hands.

The next Google. The next iPhone. The next Viagra.

All could be fueled by inventions awaiting the 20 years of protection afforded by a U.S. patent - if only the patent examiners could catch up.

But they can't. The federal system of granting patents to businesses and entrepreneurs has become overwhelmed by the growing volume and complexity of the applications it receives, creating a massive backlog that by its own reckoning could take at least six years to get under control, the Journal Sentinel has found.

Amid the worst downturn since the Great Depression, the U.S. Patent and Trademark Office could be seen as a way to jump-start the economy. Instead, it sits on applications for years, placing inventors at risk of losing their ideas to savvy competitors at home and abroad.

The agency took 3.5 years, on average, for each patent it issued in 2008, a Journal Sentinel analysis of patent data shows. That's more than twice the agency's benchmark of 18 months to deal with a patent request.

The total number of applications waiting for approval, more than 1.2 million, nearly tripled from 10 years earlier.

The Journal Sentinel also found:

• Under a practice that Congress authorized a decade ago, the Patent Office publishes applications on its Web site 18 months after the inventor files them, outlining each innovation in detail regardless of whether an examiner has begun considering the application. The system invites competitors anywhere in the world to steal ideas.

• For more than a dozen years starting in 1992, Congress siphoned off a total of $752 million in fees from the Patent Office to pay for unrelated federal projects, decimating the agency's ability to hire and train new examiners.

• As its backlog grew, the Patent Office began rejecting applications at an unprecedented pace. Where seven of 10 applications led to patents less than a decade ago, fewer than half are approved today - a shift that a federal appeals judge termed "suspicious." The same judge calls the agency "practically dysfunctional."

• Staff turnover has become epidemic. Experts say it takes at least three years for a patent examiner to gain competence, and yet one examiner has been quitting on average for every two the agency hires.

• Patent activity, a widely accepted barometer of innovation, is showing exponential growth in increasingly competitive economies such as China, South Korea and India. As developing economies strive to commercialize and protect their technologies throughout the world, they add tremendously to the U.S. Patent Office's workload.

• In many cases, applications languish so long that the technology they seek to protect becomes obsolete, or a product loses the interest of investors who could give it a chance at commercial success. "Patents are becoming commercially irrelevant to product life cycles," said John White, a patent attorney and former examiner.

For an American start-up company, a patent application is often the only asset, which creates a Catch-22: Start-ups often need a patent in order to get funding; yet without that funding, entrepreneurs can't afford the mounting fees and legal costs to keep the patent application alive or to fend off infringers.

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Gehrke & Associates, SC is pleased to announce the launch of Creative Protection, an informational blog that covers copyright and trademark law. The blog also covers news and events of interest to authors, artists, publishers, programmers, musicians and others who may benefit from copyright or trademark protection.

Gehrke & Associates, SC also maintains a general IP law blog featuring selected downloadable resources at www.gehrkelaw.com .

3 charged with stealing Coca-Cola trade secrets to appear in court

By Harry R. Weber

10:12 a.m. July 6, 2006

ATLANTA – Coca-Cola and Pepsi are usually bitter enemies, but when PepsiCo Inc. got a letter offering to sell Coke trade secrets, it went straight to its corporate rival.
Six weeks later, three people were to appear in federal court Thursday to face charges of stealing confidential information, including a sample of a new drink, from The Coca-Cola Co. and trying to sell it to PepsiCo Inc.

“Competition can sometimes be fierce, but also must be fair and legal,” Pepsi spokesman Dave DeCecco said. “We're pleased the authorities and the FBI have identified the people responsible for this.”
The suspects arrested Wednesday – the day a $1.5 million transaction was to occur – include a Coke executive's administrative assistant, Joya Williams, who is accused of rifling through corporate files and stuffing documents and a new Coca-Cola product into a personal bag.

Williams, 41, of Norcross, Ga., and 30-year-old Ibrahim Dimson of New York and 43-year-old Edmund Duhaney of Decatur, Ga., were charged with wire fraud and unlawfully stealing and selling Coke trade secrets, federal prosecutors said.

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