This article is from the archives of the UB Reporter.

Questions &Answers

Published: October 7, 2004

Jeffrey A. Dunbar is interim director of the Intellectual Property Division of the Office of Science, Technology Transfer and Economic Outreach.

What is STOR?
STOR is short for the UB Office of Science, Technology Transfer and Economic Outreach. We work to identify, protect and commercialize the research discoveries of our faculty and staff for the public good. STOR also operates the UB technology incubator program and oversees a number of commercialization programs, such as the Center for Advanced Technology. The focus of my group is on intellectual property and technology transfer.

What is a patent? Is it the same thing as invention disclosure?
A patent is an official government document that grants to the owner of the patent (assignee) a right to exclusivity in making, using, selling and offering for sale the invention for up to 20 years from the date of filing the application. To be issued a patent, your invention has to meet a number of requirements, such as novelty, non-obvious to a person having ordinary skill in the art and utility. A patent owner may license rights to use the patent to other parties, usually in exchange for license fees and royalties on the sale of products. An invention disclosure is the written document submitted to STOR that begins the intellectual property protection process. The invention disclosure describes your invention and lists the inventors, or developers in the case of computer software. STOR determines whether the invention is more suited for patent or copyright protection (i.e., computer software). In the case of patenting, we work with the inventors to assess whether the invention meets the patent requirements. In many cases, we help outline additional experiments needed to either meet the patent requirements or strengthen the claims of the proposed patent application. Decisions on whether to file for a patent depend on the patentability and commercial potential of the technology.

Can you describe the process involved in taking an invention to the marketplace?
Most university-developed technology is in its early stages and requires significant investment in product development, and possibly regulatory approval, if it is in the therapeutic, diagnostic or medical-device fields. From the university's perspective, the first step is identifying a commercial partner interested in licensing the technology and capable of making additional investments in product development. Inventors are very important in the licensing process. Many leads come from contacts they make through publishing or presenting their work. As the "champions" for the technology, inventors are very involved in the technical exchange with potential licensees, helping them to better understand the uses and advantages of the invention and, in some cases, conducting sponsored research. Licensees are traditionally established companies looking to add or enhance product lines or to improve manufacturing processes or services. However, start-up companies are becoming more common as established companies invest less in research and development. Inventors often are the founders of the company or serve as science officers or consultants. Once a company decides to license a technology, there are a number of steps before it becomes a product. A prototype may have to be built, tested and refined. An efficient manufacturing process has to be developed and some products require regulatory approval. Another important step is determining how the company will market and sell the product: Who are the customers? How much will they pay? Where will they buy? It can take as little as one to two years to take an invention into the marketplace, or more than 10 years if you are developing a new drug.

Why is it important that faculty members turn their research into commercial applications?
I think research can take two forms. The first leads to discoveries that advance knowledge and set the stage for future discovery. In most cases, this type of discovery is not patentable or does not have a direct commercial application. The second type of research results in technology that can directly benefit the public good. The reality in this case is that someone has to invest money into the technology to turn it into a commercial product. For someone to invest, they will expect to make a profit, and this requires the exclusivity that comes from patents and copyrights. The federal government recognized this reality when it passed the Bayh-Dole Act in 1980. Prior to the Bayh-Dole Act, the government owned any intellectual property resulting from the research it funded, much of which was simply published without patents, or if it was patented, fell into an inefficient government process. The Bayh-Dole Act fuels patenting and licensing activities since it allows universities to own the intellectual property and requires that inventors receive a share of the licensing revenues. SUNY policy directs 40 percent of licensing revenues to the inventors to reward them for their innovations. According to the December 2002 issue of The Economist, since 1980 there has been a tenfold increase in patents generated by universities, 2,200 start-up companies, more than 260,000 jobs created and more than $40 billion annual economic impact on the economy. So, to answer your question, turning research into commercial applications is an important step in delivering the benefits of research to the public good.

How does STOR help UB inventors?
We can help inventors assess technology for intellectual-property protection and commercial opportunity. We are sensitive to publishing pursuits and can file provisional patent applications to protect intellectual property when we have reasonable advanced notice. We also assist with outgoing material-transfer agreements and confidentiality agreements. If an inventor is interested in being an entrepreneur, the UB technology incubator provides flexible rental terms for office and wet laboratory space, administrative support services and general business assistance in the form of mentoring and networking. Through the UB Center for Advanced Technology (CAT), STOR can provide "gap" funding for industry-university projects that develop and transfer emerging technologies to the private sector. For UB inventors interested in learning more about commercialization funding, STOR has organized an Inventors Forum on Oct. 27 to discuss the Small Business Innovation Research (SBIR) Program and First Wave Technologies, a local development company that provides resources and support for emerging technologies. More information on all the services and programs STOR offers can be found online at

How's UB doing regarding inventions and/or patents? How do we stack up against other AAU universities and SUNY institutions?
In the 2003-04 fiscal year, UB received 81 new technology disclosures, filed 54 patent applications (including provisional applications) and was issued 12 patents. These numbers are on par with our peer institutions, including SUNY Stony Brook.

What are some of the more recent licenses to inventions developed by UB faculty members?
Paras Prasad and his collaborators developed multifunction nanoclinics for cancer treatment. The patents are licensed to Nanobiotix, a France-based, start-up company of which Dr. Prasad is a cofounder. David Hangauer is a cofounder of Kinex Pharmeceuticals, Inc., which licensed a series of patent applications for compounds that inhibit the Protein Kinase and Phosphatase family of proteins. Kinex plans to develop drugs for the treatment of cancer, osteoporosis and stroke. Joseph Mollendorf, David Pendergast and Budd Termin, head coach of the UB men's swim team, developed a low-drag swimsuit that is licensed by TYR Sport and was worn by a number of 2004 Olympians from around the world.

What question do you wish I had asked, and how would you have answered it?
I think an important question to ask is what should we expect out of technology transfer activities? In a 2002 survey of university licenses, only 145 out of 20,086 active licenses generated more than $1 million dollars that year. Most licenses will result in modest licensing revenues. That means we have to work to build a broad portfolio of successful licenses and focus on the other very positive outcomes of technology transfer: public benefit, economic development, sponsored research and inventor rewards. In time, the next "home run" will be discovered somewhere in the laboratories of the University at Buffalo.