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New director works to commercialize
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View is published twice a year by the offices of the Vice President for
Research and Development and University Relations at The University of
Montana. Send questions, comments or suggestions to Cary Shimek, managing editor, 330 Brantly Hall, Missoula, MT 59812,
or call 406-243-5914. Contributing editors and writers are Brianne Burrowes, Brenda
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For more information about UM research, call Judy Fredenberg in the Office of the Vice President for Research and Development
New director works to commercialize campus research
Sara Scholtes is an avid runner who suffers knee pain. Four years ago she and a friend had an idea: Wouldn’t it be great if a simple tape job done by physical therapists to prevent aching knees could be turned into a brace? Tape is temporary, and they wanted a sturdier material that could be reused.
Scholtes continued pursuing the concept after becoming a physical therapy assistant professor at The University of Montana last August. She and co-inventor Katie Damico created a device that prevents the rotation between the two big bones at the knee.
UM researcher Sara Scholtes demonstrates the knee brace she helped invent and hopes to market. Missoula’s Talus Outdoor Technologies funded production of the prototype.
“Very few braces offer that option, and the ones that do are bulky,” Scholtes says. “The lower-end knee braces are cheap but of questionable value. The good ones cost about $500 but can be cumbersome. We wanted a mid-range brace that was more affordable — a device that costs about $100.”
Scholtes developed prototypes and tested them on herself. “My pain totally went away,” she says. “Our new brace won’t prevent major injury, but it really helps prevent aching pain.”
Believing they had a viable commercial product, Scholtes submitted an invention disclosure to the University’s Office of Technology Transfer for guidance about how to move the brace to the marketplace and protect the unique intellectual property that had been developed.
That’s where UM’s new director of technology transfer, Joe Fanguy, comes into the picture. Hired last fall, he manages the University’s intellectual property portfolio, creates business relationships with external organizations through marketing and licensing efforts, and plays an active role in the formation of startup companies launched to commercialize UM technology.
Recognizing the potential of the new brace, Fanguy’s office filed a provisional patent to protect the idea. Such a patent costs about $1,000. If the idea continues to show potential, a full patent could be pursued — a process that takes several years and costs $20,000 to $25,000 in the United States. If the office pursues international patents, the price tag jumps to $250,000 or more.
Fanguy says university tech-transfer offices largely were formed after the Bayh-Dole Act of 1980, which stipulates that inventions developed under sponsorship of the federal government must be actively transferred to the private sector to benefit the public. UM currently earns about $70 million a year in grants from federal institutions such as the National Institutes of Health and the National Science Foundation.
Research funding at UM has jumped dramatically in the past 20 years. During that time, the University has generated 28 patents from research activities, 23 active licenses and 14 new companies that have spun off those licenses.
Fanguy champions this economic development, which moves ideas created by UM researchers from the science bench to the marketplace. The whiteboard in his Main Hall office lists about 15 hot prospects for commercial development. The ideas vary widely but include a drug that might reduce brain damage from strokes, new educational software that helps students map out college class schedules and more nutritious energy bars for athletes.
When a researcher contacts his office with a potential opportunity, it’s Fanguy’s job to evaluate the commercial potential of the idea. After a process of due diligence, a decision is made on the level of resources the University will invest in the idea. Some questions Fanguy asks: Is the idea viable? How many other patents are out there in that particular area? What is the market potential? And if a patent or trade secret is pursued, should the intellectual property be licensed to an existing company or should a new start-up be created? If a licensing agreement is decided upon, he negotiates the deal on behalf of the University.
Fanguy says an innovation advisory board made up of experienced business leaders will form this summer to help guide this decision-making process.
The dream of every tech-transfer director is the discovery of a product that generates millions for the host institution, such as Gatorade for the University of Florida or Google for Stanford. Fanguy says such revenue bonanzas are rare, and UM now earns about $20,000 annually from its patents and licenses.
The University offers the following formula to its entrepreneurial researchers: Half of any royalties generated by intellectual properties goes to the faculty inventors as personal income, and
half goes to the University. And two-thirds of the institution’s share is made available to enhance the inventors’ research program.
“But really, technology transfer offers much more than just the potential of earning money,” Fanguy says. “It enhances the entire research enterprise and students’ learning experience by building collaborations within the University and with private businesses. I know that one of UM’s more prolific inventors, Ed Rosenberg, has a partnership with a company down in Florida. And one of his grad students landed a job with that company right after he graduated. So for Ed, tech transfer can be about job placement for his students. Science students also learn what it takes to become an entrepreneur.”
Fanguy had personal experience with this as a biophysical chemistry graduate student at Mississippi State University, where he invented an instrument used as a screening device for pharmaceuticals.
“We prototyped it and spent a year working with a European company to bring it to the marketplace,” he says. “At the end of the day, they decided the market size wasn’t big enough for them to pursue, but when I was working on this effort, my educational experience was enhanced twentyfold.”
Fanguy came to his new job with three broad objectives: to make people more aware of the potential of technology-transfer activities at UM, to strengthen relationships that nurture these activities and to support campus entrepreneurship.
“It’s going to be a challenge, but I would like to put a road map in place that shows how we can develop sustainable companies for the long term,” he says. “I hope in the coming years that we will have more programs and processes in place that nurture, encourage and support the campus folks involved in this type of activity.”
Scholtes, the knee brace inventor, says Fanguy has boosted her efforts to bring a new product to the marketplace and potentially enhance the state economy. Fanguy and Scholtes currently are working with a Missoula company, Talus Outdoor Technologies, to produce the knee brace and launch it commercially toward the end of the year.
“Joe has been great to work with,” she says. “He is interested and excited about our idea. He has the right enthusiasm.”
— By Cary Shimek
|(Above) Joe Fanguy is the new campus director of technology transfer.
|Tech Transfer Notes
With a focus on communication, Fanguy writes regular letters to the campus community to highlight progress related to technology transfer. These are online. To be added to the distribution list, e-mail firstname.lastname@example.org.