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New staff,
procedures move MSU Technologies forward
MSU Technologies (MSUT) has several responsibilities,
says its executive director, Mike Poterala. The university’s
technology commercialization arm is charged with
- Receiving technology disclosures from MSU inventors
- Evaluating the commercial potential of those
technologies
- Negotiating and administering licenses with
companies capable of successfully commercializing the technologies
- Distributing licensing proceeds according to MSU
policy to inventors and their departments
- Negotiating material transfer agreements and
confidential disclosure agreements
Since last fall, when Poterala was named to head MSUT,
the expanded intellectual property unit has been ramping up to meet these
responsibilities. With support from the MSU Foundation, MSUT has added staff
and instituted a process for identifying the commercial potential of
researchers’ inventions.
New Staff
MSUT’s new associate director, Sean Reeder,
oversees the day-to-day operations of the office and works with the
technology managers, providing guidance on managing the new
commercialization process for inventions. He brings more than 15 years of
experience in engineering, technology transfer, and finance. Before joining
MSUT, he was a senior technology manager at the University of Illinois
Urbana-Champaign. He has also been vice president of development and leasing
for Fox Development Corp. where he managed the daily operations of two
venture capital funds, including one that provided funding for start-up
companies founded on technologies developed at the University of Illinois.
Brenda Minott moved from the central OVPRGS to
become assistant director for resources and operations at MSUT, working with
MSUT staff to implement data management and tracking systems. The group
includes Holly Byrnes, business manager; Maggie Kelly,
accountant; Melanie Jaramillo, IT coordinator; and Janelle Flores,
who provides general office support now and will move into the role of
secretary to the technology managers as new processes are defined. Byrnes
and Kelly previously worked in the Office of Regulatory Affairs. Additional
support staff will also be hired.
Phaedra Paul, patent coordinator, serves as
MSUT’s main contact with outside law firms retained by MSU to prosecute
patent applications. An attorney, she is a member of the Oregon State Bar
and is registered to practice before the U.S. Patent & Trademark Office. She
earned B.S. and M.S. degrees at MSU in engineering mechanics with an
emphasis in biomechanics.
Ann Spaulding, agreement coordinator, handles
confidential disclosure and material transfer agreements and works with the
technology managers on licensing and option agreements. She is streamlining
processes and developing templates to expedite the approval process. An MSU
alum, she is a long-time employee with more than half of her work experience
in the Office of Contract and Grant Administration.
Plans are under way to hire a marketing coordinator and
an additional technology manager to supplement efforts of current staff:
Christine Force (copyright), Tami Hemingway (human and animal
health), Tom Herlache (plant and agricultural biotechnology), and
Brad Shaw (engineering and physical sciences).
New Processes
MSUT screens each new invention disclosure with the aid
of an external consulting group to determine if the invention could have
commercial value. One benefit of this screening, Poterala notes, is the
feedback it makes available to the inventor. “Even if the screening doesn’t
recommend moving an invention to the next level,” he says, “the inventors
will know why and, in many cases, will receive some suggestions for
modifying the invention or developing a research plan that aligns with the
market’s needs for innovation.”
Inventions deemed by an initial screening to have
potential for commercial value may then receive a more involved commercial
assessment. That assessment will typically begin with the assigned MSUT
technology manager and an outside assessor who has knowledge of the relevant
markets interviewing the inventors. Additional information and reactions
will then be gathered confidentially from the marketplace to help identify
the optimal commercialization path for the invention. “This assessment often
will lead, in effect, to a road map for marketing the invention,” Poterala
says
MSUT’s technology managers (formerly called licensing
associates) are primarily responsible for managing technologies through
these new processes. They will provide liaison with the inventors, make
recommendations about decisions, and manage the process that moves the
invention forward.
Technology managers will be very visible on campus,
Poterala says. He will, too. He is preparing presentations and information
sessions for individuals or groups who are interested in learning how
processes for handing intellectual property are changing. A new MSUT Web
site is expected this spring.
“We’re pleased with the progress MSUT is making,” says
VP Gray. “The MSU Foundation has been an invaluable source of
support, and the new staff are already moving the operation forward in
exciting ways.” |
Patents issued
Congratulations to the faculty, staff, and students who
received patents between October 1, 2007 and March 31, 2008.
Allison, Richard;
Plant Pathology; Gillett, Jerri; Plant Pathology; Mecey, Christy;
Plant Biology; Blueberry red ringspot virus, sequences, promoters, and uses
thereof; 7,344,888
Bughrara, Suleiman;
Crop & Soil Sciences; Ryegrass CBF3 gene: identification and isolation*;
7,317,098
Hollingsworth, Rawle;
Biochemistry; 2-thiaquinolizidines and process for the preparation thereof*;
7,342,010
Iezzoni, Amy, Horticulture; Shane, William,
Southwest Michigan Research & Extension Center; Peach tree named
MSUP8706; PP18,139
Kanatzidis, Mercouri;
Chemistry; Pb-Ge-Te-compounds for thermoelectric generators or Peltier
arrangements*; 7,326,851
Khire, Milind V., Civil & Environmental
Engineering; Fluid distribution and collection in landfills and contaminated
sites; 7,309,189
Kuo, Min-Hao, Biochemistry & Molecular Biology;
Autocatalysis/yeast two-hybrid assay; 7,291,464
Miller, Dennis J.;
Chemical Engineering & Materials Science; Peereboom, Lars; Chemical
Engineering & Materials Science; Kolah, Aspi; Chemical Engineering &
Materials Science; Asthana, Navinchandra; Chemical Engineering &
Materials Science; Lira, Carl; Chemical Engineering & Materials
Science; Process for production of a composition useful as a fuel; 7,321,052
Nair, Muraleedharan G., Horticulture;
Jayaprakasam, Bolleddula, Horticulture; Withanamide and withanolide
compositions and method of use thereof; 7,282,593
Nair, Muraleedharan;
Horticulture; Carrier-free composition for the treatment of onychomycosis;
7,341,747
Radcliffe, Clark J., Mechanical Engineering;
Noise detecting apparatus; 7,305,886
Reynolds, Herbert,
Osteopathic Manipulative Medicine; Kerr, Robert, Academic Technology
Services; Brodeur, Raymond, Osteopathic
Manipulative Medicine; Neal, Douglas, Mechanical Engineering; Template*; 7,347,114
Smith, III, Milton R.;
Chemistry; Catalytic boronate ester synthesis from boron reagents and
hydrocarbons; 7,329,769
Tepe, Jetze;
Chemistry; Preparation of hymenialdsine derivatives and use thereof;
7,335,769
Tepe, Jetze;
Chemistry; NF-.kappa.B inhibitors and uses thereof*; 7,345,078
Udpa, Satish;
Electrical & Computer Engineering; Udpa, Lalita; Electrical &
Computer Engineering; Tomographic imaging system using a conformable mirror;
7,336,761
Xi, Ning, Electrical & Computer Engineering;
Li, Guangyong, Electrical & Computer Engineering; Chen, Heping,
Electrical & Computer Engineering; Automated nanoassembly; 7,297,946
Zampaloni, Michael A., Mechanical Engineering;
Pourboghrat, Farhang, Mechanical Engineering; Hydroformed port
line*r; 7,305,763
*Inventors from outside MSU or formerly at MSU are
omitted. |