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Out of the Lab, Into the World

For more than 20 years, the Technology Licensing Office has helped bring MIT innovations into the commercial world
December 1, 2004

About 15 years ago, two MIT professors invented a device that could “print” a three-dimensional object directly from a computer design. Similar to an ink-jet printer, the machine sprayed a fluid that bound together layers of powdered material. In 1989, materials scientist Michael Cima, mechanical engineer Emanuel Sachs ’76, SM ’76, PhD ’83, and their MIT colleagues patented the process and began offering licenses on it through the Institute’s Technology Licensing Office.

The first company that licensed the technology uses it to make ceramic shells for casting metal automotive parts. Another creates concept models of products, from toys to architectural designs. Yet another builds machines that can make metal tools and parts directly from computer designs. One company focuses on machines for printing tiny scaffolds that, implanted in the body, encourage bone growth. Another plans to create time-release pills. A sixth company licensed the technology to create small decorative objects, such as Christmas-tree ornaments, and another used the process to make ceramic filters for coal-burning power plants.

Sachs says he and his colleagues hadn’t imagined all the potential uses of their printer when they first filed the patent. “The first application I had in mind was actually the metal-casting one,” he says, “and I had a couple of other ideas about applications, but nothing comparable to what turned out to be realizable.” According to licensing officer Jack Turner, however, the three-dimensional-printing patent’s busy life is typical of MIT inventions. “There are many technologies that arise at MIT that can be used in more than one way.”

Many indeed. The Technology Licensing Office manages more than 600 active patent licenses. The office’s 30 employees also provide researchers with services beyond licensing, from helping them get inventions patented to finding companies to license their work to guiding them through the process of launching a startup. Today, it’s one of the busiest university licensing offices in the country. According to the Chronicle of Higher Education, in 2003, the Institute was awarded 127 patents, behind only the entire University of California system and Caltech.

Disclosure is the first step in filing for a patent, and last year, licensing officers met with hundreds of researchers who disclosed 454 inventions. The office filed 238 patent applications and negotiated close to a hundred licenses. Every patent and license helps the office achieve its stated goal: to create products from MIT technology that will ultimately benefit the wider world.

The Patent Boom
In the last 25 years, the volume of research moving from university labs into the commercial sector has mushroomed. It all started in 1980, when the U.S. Congress passed the Bayh-Dole Act, which allows universities to patent and license technology that comes out of federally sponsored research. The act encourages universities to market their innovations and companies to take risks by investing in early-stage research. The act touched off an explosion in technology transfer programs at U.S. universities. According to the Association of University Technology Managers, before 1980, fewer than 250 patents were issued to U.S. universities each year, and university discoveries were rarely commercialized. In fiscal year 2002, 3,673 patents were issued to 219 institutions, and some 450 new companies were formed based on academic discoveries. By patenting an invention, MIT earns the right to exclude all companies from making, using, or selling it within the United States for 20 years—unless they license the patent. To license an MIT patent, a company typically pays a licensing fee and agrees to give the Institute royalties on any resulting products.

The Bayh-Dole Act also requires that a portion of a university’s technology transfer revenues be shared with the technologies’ inventors and that the rest be reinvested in research and education. At MIT, about 30 percent of royalties and licensing fees are distributed among researchers, with the balance going to the departments in which the research was done, the general fund, and the Technology Licensing Office itself. Last year, MIT’s Technology Transfer Office brought in $35 million. It’s only a drop in the bucket compared to MIT’s $1.7 billion operating budget in fiscal 2003, but as Lita Nelsen ’64, SM ’66, SM ’79, director of the office, is quick to point out, “Money is the by-product, not the purpose, of the office.”

Still, after the Bayh-Dole Act passed, some in academia were skeptical about the role of technology transfer in universities, fearing that it would take precedence over basic research and make universities beholden to industry. When Nelsen joined the two-year-old Technology Licensing Office in 1986, she didn’t perceive these concerns at the Institute. “MIT differs from a lot of universities because of our heritage,” she says. “There was already a reasonable fraction of faculty who had experience working with industry. If you look at the MIT charter, ‘to bring science and useful arts to industry,’ we were set up to do it. So there was less of an ambivalence about the appropriateness of it.” Judging from the number of researchers who go through the office each year, it seems that MIT is chock full of innovators. Nelsen estimates that about a third of the faculty have filed patents in the last five years. “And it’s getting higher,” she says. “It’s becoming a way of life.”

High-Tech Matchmaking
The hunt for someone to license a new invention can start even before a patent is filed, according to Turner. “It’s going to take three or more years for the patent to issue, and there’s no reason to wait,” he says. “It’s going to take more time than that for anyone to figure out how to get a product to market.” Occasionally the officers shop a technology around, but more often they’ll simply show it to the companies, venture capitalists, and entrepreneurs who visit their office every week. More than half of the time, ideas for licensees come from inventors. “They’re plugged into the field,” Turner says. However, he concedes that “it may be that the licensing officer had to work real hard to get it out of the inventor. It’s rare that they come in and say, ‘Here’s this invention, and you ought to call so-and-so. I know exactly what they’re doing.’” Sometimes, researchers come upon potential licensees by chance. That’s exactly how senior research scientist Daniel Cohn, PhD ’71, and his colleagues at the Plasma Science and Fusion Center found a licensee for their device that reduces emissions from diesel engines and makes gasoline engines run more efficiently.

Cohn’s device, dubbed the “plasmatron,” reduces emission of nitrogen oxides, a key component of smog. There is an existing technology—nitrogen oxide traps—that already does this, but the plasmatron goes one critical step further. Nitrogen oxide traps are good at storing the pollutant, but they tend to fill quickly, and there is no easy way to release their contents in a nonpolluting form. The plasmatron, however, does just that. It takes a small amount of diesel fuel and converts it into a hydrogen-rich gas by using a plasma—an electrically conducting gas. Then it uses the hydrogen-rich gas to convert the nitrogen oxide in the trap into harmless nitrogen. The process reduces nitrogen oxide emissions by as much as 90 percent. As good as it sounds, it took seven years to find the first licensee—though not for lack of effort. The MIT researchers applied for a patent in 1993; as they developed the technology, they talked with companies about licensing it but never arrived at a mutually satisfactory agreement.

Then in early 2001, a match materialized. Rudolph Smalling, then a master’s student on leave from automotive-components supplier ArvinMeritor, visited John Heywood ’62, PhD ’65, director of MIT’s Sloan Automotive Lab, to hear about new technologies. Heywood, a collaborator on the plasmatron project, put Smalling in touch with Cohn and his colleagues. Shortly thereafter, the MIT scientists were in Indiana, not far from one of ArvinMeritor’s plants. “We didn’t have much time, but we stopped by after lunch,” remembers Cohn. “But [Smalling] had a whole group there, and we talked about the uses of the plasmatron for the cleaner vehicle…and they got very interested.” Within the year, they had a license agreement. Last year, ArvinMeritor began testing a prototype bus that uses the plasmatron. Cohn says it’s quickly moving toward commercialization. “In retrospect, it was really important to start working with industry to make something happen,” says Cohn. “You can only take something so far here at MIT for certain types of research, and then you really need industry people who know what the commercial needs are.”

After the Deal
Once a license agreement has been signed, the Technology Licensing Office’s involvement is minimal, says Nelsen. “We don’t get involved in how [the licensees] commercialize the technology, although…they have to perform to certain milestones, and we monitor that,” she says. “Other than that, we collect the bills and wish them luck.” However, researchers often form lasting relationships with the licensees, offering them advice, updating them on new research, and sometimes even collaborating with them. Such is the case with Anne Mayes ’86, a materials science and engineering professor.

When Mayes first came to MIT in the 1990s, she was studying mixtures of long linear and branched molecules, and how the branched molecules have a tendency to migrate to the surfaces of the mixtures. While she was looking for funding, a program director at the U.S. Office of Naval Research suggested that her work might be applied to water filtration membrane technology. Mayes discovered that her mixtures of chemicals made excellent water filtration membranes.

Like Cohn, Mayes came across a licensee for her technology by chance. She read a magazine article that included a quote from an executive at East Hills, NY, filtration technology company Pall, who said the company was interested in smart-membrane technology. Mayes called Pall and eventually connected with research director Rich Salinaro. “A lot of times it takes someone on the inside of a company to recognize the potential for [a technology] and to become a champion for it. Rich played that role,” Mayes says. Pall subsequently licensed the technology and is now turning it into a commercial product. Mayes is happy that Pall is taking the lead on the commercial side of her work. “I like to invent things, but I don’t have any desire to start my own company and make a product and sell it,” she says.

Going It Alone
Frequently, a newly patented technology cannot find a home at an established company. In fact, about 30 percent of MIT’s licenses go to startup companies; often, the companies’ founders and executive management teams include the MIT inventors whose technologies are being licensed. In fiscal year 2003, 17 startups were founded on MIT research. For some researchers, such as chemical-engineering professor Karen Gleason ’82, SM ’82, licensing to a startup may be the only way to bring their technology to market. In 1996, Gleason’s lab stumbled upon a way to coat objects with a 10-nanometer-thick layer of polytetrafluoroethylene (commonly known by the DuPont trade name Teflon). Gleason filed for a patent, but although many companies were interested in the technology, none wanted to license and develop it. “I was hoping that by working with a company at the research level at MIT, we could get far enough along that they would license it and develop it themselves,” says Gleason. She originally hadn’t considered building a startup around the technology, but two years ago, she and one of her former graduate students, Hilton Pryce Lewis, SM ’98, PhD ’01, licensed the patents from MIT and formed Cambridge-based GVD. Gleason is on sabbatical this year and is working at the company, which coats objects—everything from tissue paper to medical devices—with Teflon for dozens of clients.

Between getting startups off the ground, filing patents, and negotiating licenses, the eight senior licensing officers at the Technology Licensing Office have their hands full. “We’re good jugglers,” says Nelsen. “The undergraduate drinking-from-a-fire-hose experience…is very good training for this job.” But Nelsen wouldn’t have it any other way. Every researcher who walks through the door of her office represents an opportunity for MIT to get a lifesaving drug, a better water filter, or a cleaner diesel engine out into the world.

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