From Barbara H. Iglewski, vice provost of research and graduate affairs
would like to take this opportunity to highlight recent research and sponsored program developments both external and internal to the University.
Looking back at 1996, the year was marked by continuing change and oversight in the Federal arena. OMB Circular A-21, which contains the rules that govern the calculation of research costs, was revised in May 1996. This revision incorporated Cost Accounting Standards (CAS) to our federal agreements. CAS further mandates standards of consistency of accounting on a University-wide basis and evidence of written policies and procedures. The University's first CAS Disclosure statement was submitted in September 1996 and is currently under review. The A-21 revision also incorporated a provision that freezes the facilities and administrative (indirect) costs rate in effect at the time of an initial award throughout the competitive project perioda requirement that is still causing some confusion among universities and our federal sponsors. And because of this same revision, our cognizant federal audit agency will change from ONR to DHHS in July 1997the impact of which still remains to be seen.
Currently, the federal government continues to scrutinize the activities of universities. The Office of Management and Budget is continuing its assessment of how universities develop their facilities and administrative costs rates, and is exploring alternative methodologies for calculating utilities and space costs. A recent DHHS commission investigated procedures established to deal with misconduct in federally sponsored research and has suggested replacing the current definition of misconduct to a broader definition inclusive of other forms of professional misconduct, and on mandating standards for ethics training for all scientists. NIH continues in its streamlining efforts, yet at the same time is questioning practices at universities that have lead to institutional non-compliance.
It is a challenging time for the University research community. Within our own institution, we are reassessing and trying to improve upon our practices dealing with many areas of research and research policy. Several re-engineering groups are looking at our systems that support research in an effort to improve and streamline. We are pleased with our own efforts to implement the recommendations of the ORPA/SPA Re-Engineering Fast Track Committee that completed its recommendations in May 1996. I would like to tell you where we are with respect to implementing these changes.
In addition, while the following was not a primary recommendation of the committee, the University has acquired a new faculty interest database and funding dissemination service. We obtained GENIUS/SMARTS in October of 1996, in an effort to provide timely dissemination of new funding information to our faculty via e-mail and to provide one comprehensive database of faculty interests for the University community and external sponsors, including potential industrial sponsors. More information on GENIUS/SMARTS is provided below. Our decision to switch to GENIUS/SMARTS was prompted by the ease in which faculty records could be entered and by the fact that the database would remain University (not vendor) owned. It is imperative that we be able to have access to information on our faculty expertise as we move ahead with long-term planning on both sides of the campus. Our database will only be useful if our faculty participate. I urge you to enter your record if you have not already done so. If you need assistance in entering your record, please call ORPA or the Miner Library.
Finally, ORPA will be offering a series of workshops on sponsored programs for faculty and administrators. More information is stated below.
We are looking forward to an exciting and challenging year ahead. We will continue to work with the University community in planning improvements in research services, both on a central and de partment level.
It has been ORPA's long-standing goal to consolidate our Medical Center and River Campus offices in one locationthis consolidation was prompted by the need to create greater efficiency, consistency, communication and coverage. Our move was delayed for several years due to various factors, the most recent of which was the deliberation of the ORPA/SPA Fast Track Committee and the contemplated merger of ORPA and SPA. After the committee recommended retaining separate offices, a search for suitable space for a consolidated location was conducted. After considering space availability and re modeling costs, the recommendation was made to consolidate at the current location of our River Campus office in the Hylan Building. We have a planned consolidation date of mid-March 1997 and it appears that we will be together very soon.
We believe that our consolidation will provide better service for the entire University, however, we recognize that the physical relocation of our Medical Center office will be initially disruptive for faculty and administrators. While our Hylan location is only a five-minute walk from the entrance of the School of Medicine and Dentistry, we know that on grant deadlines those five minutes are critical. Keeping this in mind, we have thought of various ways to assist the Medical Center community. First, there will be two reserved parking spaces for ORPA visitors in the parking lot at Hylan. Second, we will retain a drop-off and pick-up location for grant proposals in the School of Medicine and Dentistry Dean's office. ORPA will pick up proposals in the morning and return them to the Medical Center at a prescribed time in the afternoon. Third, we will retain a document file at the Medical Center for grant applications, forms and copies of sponsored program policies. Again, this will be kept up-to-date by ORPA staff. Finally, our own staff will continue to interface with Medical Center personnel at their location to the extent possiblewe do not want to lose the close working relationships that we have fostered throughout the years.
Once we have consolidated, we will be extending our "open-to-the-public" hours and will continue to offer the fastest turn-around that we can. And as noted above, we will pursue the faster avenues for electronic sign-off to ease the burden on all University departments.
We thank you in advance for your patience and understanding during the period of our move. ORPA will be sending out a memo with more information, including a map to our consolidated loca tion, as the move date approaches.
Revised policy for intellectual property and technology transfer, effective February 1, 1997
The University is increasing the resources dedicated to commercializing the technologies developed in our research laboratories. When new discoveries are made, we often consider patenting those discoveries and subsequently licensing the technology to a for-profit company for development into a product. If our industry licensees are successful in producing and selling products based on University of Rochester technologies, royalties on those products are usually returned to the institution and subsequently to the inventors, their respective departments and schools.
In the past, a significant obstacle to obtaining patent protection on University intellectual property has been obtaining the funding to pay for patent applications. In order to facilitate this process the University has revised the royalty distribution schedule to include a share called the Intellectual Property (IP) Pool, designated for patent applications and licensing costs. The new royalty distribution policy will only apply to inventions disclosed after February 1, 1997; projects disclosed to ORPA prior to that date will be grandfathered under the former policy.
Following the deduction of legal expenses incurred by the University related to commercialization of each unique technology, all income from licensing activities will be distributed according to the following schedule:
| · 1st cumulative $50,000 | |
|---|---|
| Inventors | 50.0% |
| Department | 20.0% |
| School or College | 5.0% |
| IP Pool | 25.0% |
| | |
| · $50,000 to $250,000 | |
| Inventors | 40.0% |
| Department | 25.0% |
| Schoolor College | 10.0% |
| IP Pool | 25.0% |
| | |
| · $250,000 and above | |
| Inventors | 35.0% |
| Department | 25.0% |
| Schoolor College | 15.0% |
| IP Pool | 25.0% |
Although the Inventor's percentage of royalty income decreases with increasing royalty amounts, the return to the inventor(s) at Rochester remains among the highest of any U.S. university. The main benefit of this revised system is the creation of a centralized fund that will support patent applications regardless of the department or school in which they originate.
The other significant difference in the revised Intellectual Property Policy is the addition of a section on equity accepted as part of a licensing transaction. The growing network of start-up companies in the United States holds many potential partners for the University, and we are looking forward to new companies forming around University of Rochester core technologies. In these cases, it is in the University's best interest to allow the company to invest their capital into research and the development of the technology, rather than licensing fees payable to the institution. In lieu of cash, the University may accept equity in the company as a license payment. The inventor(s) will have the option of either :
| a) | having their equity share assigned in their name according to the royalty distribution formula, or |
| b) | having their equity share assigned to the University to be converted to cash and distributed to the inventor at the University's discretion. The latter option will allow the inventor to avoid any potential conflict of interest when applying for federal funds in the technology field, or participating in funded research sponsored by the company itself. |
Because the potential exists for a conflict of interest when research is funded by companies in which the principal investigator holds equity, these projects will be reviewed by a Provost-appointed committee. The University continues to recognize the value in these unique research studies, and realizes the benefit not only to the institution and the company, but to the public who may be the end-user of the technology in development.
These revisions in our Intellectual Property Policy are driven by changes in industry-University relationships and an increased focus by the institution on strengthening our efforts to commercialize our own technologies. The current policy is the result of an in-depth study of other schools and the advantages and disadvantages of each of their technology transfer programs. The modifications will allow us to be more successful in commercializing our inventions, effectively transferring our ideas and discoveries to the public domain while maximizing the benefit to the institution and our inventors.
The issues surrounding the patenting of research technology always raise numerous questions from inventors here at the University, some of which are answered below:
When do publications affect patent rights?
Written publications have a direct influence on the granting of patent rights to an inventor. As far as the government is concerned, a patent is a deal struck between the patent office and the inventor, whereby the inventor agrees to teach their invention to the world if the government gives them 20 years of exclusivity from the date of application. If the work has already been published, the deal is off. Actually, we have up to one year to file a U.S. patent application following written public disclosure. European and other worldwide rights, on the other hand, will disappear the day the publication comes out in print. It is imperative that the University be informed of pending publications that disclose information about technologies that could be commercialized. If we know a disclosure is about to be published, we can quickly file a document with the patent office (a "provisional application") which will keep the foreign rights open for an additional year. If we find out about the publication after the fact, there is nothing we can do to regain those foreign rights.
What constitutes a "publication?"
In the eyes of the patent office, a publication is any written disclosure that is indexed and available to the public. Academic journal articles are a perfect example. Less obvious, perhaps, are conference abstracts which are distributed to meeting participants, and thesis copies which are bound and indexed in the library. Preprints or abstracts that appear on the Internet are also considered publications by the patent office, and have resulted in 11th-hour scrambling to file a provisional application in more than one case at the University. Oral presentations are not considered publications (probably because the absence of a written record makes them impossible to trace) unless copies of slides are handed out during or subsequent to a talk.
Do grant applications count as publications?
Technically, a Federal grant application becomes accessible to the public under the Freedom of Information Act when approved for funding. Although a grant application has never been used by the patent office to deny the issuance of a patent, an academic grant has been used in a litigation case where one company sued another for patent infringement. In the defense against the infringement, the other company argued (successfully) that the patent in question should be withdrawn because of a disclosure which appeared years earlier in a grant application. Although this is a single, isolated case it has raised our attention considerably to the issue. In those cases where commercializable ideas (and data) are disclosed in detail in a request for Federal funding, the conflict can be avoided completely by adding a CONFIDENTIAL header to the disclosing pages and adding following statement to the application:
"This document, or portions of it, contains confidential information that is or may become the subject of a United States patent application by the University of Rochester and that is important to future commercial efforts based on such confidential information. Accordingly, this confidential information is exempt from disclosure under the Freedom of Information Act, Sections 552(b)(3) and (b)(4) of Title 5 of the United States Code and corresponding regulations of United States Government agencies."
It is recommended that a researcher not stamp every page in a proposal as CONFIDENTIAL, but rather only the relevant pages. The proposed budget, in particular, should not be labeled as CONFIDENTIAL except in special cases and not without specific justification. For more information on scientific publications and patent rights, see W. Feiler & D. Auth, Nature Biotechnology 14: 1603 (1996).
Whom do I contact with my patentable ideas and technologies?
If you have an idea that you feel has commercial value, please contact Robert Goodwin, technology licensing associate, at x5-5373, fax, x5-9492). E-mail inquires can be directed to rgoodwin@orpa.rochester.edu.
Many of you may still be asking, "GENIUS/SMARTS, what's that?" We offer the following clarification...
Through GENIUS/SMARTS, the University community has access to one comprehensive, University-owned, database for university research interests, which will also provide a funding mechanism that will prove vital to many faculty, research personnel, and university departments.
GENIUS/SMARTS offers two services in one database:
In summary, the user makes ALL the choices and controls the amount of data received. Registration in GENIUS/SMARTS takes approximately 45 minutes and can occur conveniently in as many sessions as needed. As soon as data is submitted, it is immediately saved and accessible within minutes.
In June, ORPA, in collaboration with the Miner Library, will be offering a series of four classes, two of which will focus on funding sources available through the use of the internet with an introduction to GENIUS/SMARTS. These two classes will assist users with registration and offer several tips on how to get the most from the GENIUS/SMARTS database. Information on times and dates will be forth coming from the Miner Library.
Please join GENIUS/SMARTS. There are already over 125 faculty registered who are receiving funding information on a daily basis. This is an opportunity not only to increase research funding, but to:
For more information about GENIUS/SMARTS, please contact Barbara Dick at x5-4031 or e-mail us at resadmin@orpa.rochester.edu. You can also visit our web site at http://www.rochester.edu/ORPA and click on the InfoEd GENIUS/SMARTS box.
ORPA will be offering a workshop on grant preparation and administration for department administrators, secretaries and others who are involved with grants and contracts on June 10 and 12, 1997, from 9 a.m. to 1 p.m.
Also in June, the Miner Library and ORPA will be working together on four grant preparation classes. These classes are aimed primarily at faculty and are scheduled as follows:
Please contact ORPA at x5-4034, Medical Center, or x5-4031, River Campus, for more details or registration information for both of these learning opportunities.
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Last updated 11-13-2000
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