UCI, Drug Research Company Reach Patent Agreement
UC Irvine has reached a patent agreement with a pharmaceutical research firm headquartered on campus that officials hope will serve as a model for future university research ventures with industry.
University and company officials said Thursday that the agreement, which will apply to all research contracts between UCI and Nelson Research & Development Co., is designed to protect the rights of the university to ownership of technology developed by university researchers. However, it also gives Nelson Research rights to market technology developed with company grants.
Nelson Research moved its headquarters to the UCI campus in 1983 in an attempt to foster interaction between private industry and university scientists. The university provided Nelson with land on which to build its facility, and in return the UCI was given laboratory space in the building.
Before the new agreement, there were no joint research projects. With consummation of the agreement, Nelson awarded two research contracts totaling $185,000 to the university and made a gift of $100,000 to help UCI buy a cyclotron for its Brain Imaging Center, which will be housed in the basement of the Nelson building.
Donald A. McAfee, Nelson vice president of research, said that he expects to award more research contracts and that he is now in the process of writing some of them.
David G. Schetter, UCI director of research development, said protection of proprietary rights in a university setting has been a major worry of companies that have considered moving onto the campus.
It is propitious, he said, that a model agreement has been established at the same time UCI got the go-ahead to develop part of the campus as a high-technology business park. Nelson Research is now the only for-profit company on campus. Hitachi Chemical Co. reached an agreement earlier this year to build a $12-million research facility that will be shared with university faculty and students.
“This hopefully sets a model for future formal contractual interaction with corporations that move onto the campus,” Schetter said.
Louis Strom, who represented the University of California’s patent office in Berkeley during the negotiations with Nelson Research, said the agreement is in accord with UC system policy.
Although research agreements with similar provisions have been negotiated at other UC campuses, Schetter said, the Nelson agreement is unusual in its breadth and detail.
Under the agreement, Schetter said, the university will own all inventions that come out of research done anywhere on campus. However, he said, the university will license specific inventions to Nelson with a degree of exclusivity that reflects the monetary support that the company contributed to research of the invention.
For that marketing right, Nelson will pay the University of California a licensing fee and royalties based on percentages of revenues that the inventions generate.
Schetter said that although the agreement with Nelson may eventually produce substantial revenue, UCI expects to get very little for a number of years. By a state formula, he said, 15% of royalties go to the state’s general fund, with the rest being divided equally between the inventor and the university patent office. He said the campus will receive from the state any funds remaining after the costs of operating the patent office are paid.
Most important, he said, by encouraging joint projects between Nelson and UCI professors--primarily in the UCI College of Medicine and the School of Biological Sciences--UCI hopes “to speed the transfer of university-developed technology to the benefit of the public.”
Change in Direction
McAfee said Nelson’s interest in increasing the number of research endeavors with UCI as well as with other universities has been enhanced by a change in corporate direction since the company was bought last year by the Ethyl Corp. Ethyl is a large chemical and petroleum products maker based in Richmond, Va. McAfee said that Ethyl has substantially increased the funds available for research at Nelson. Nelson’s previous mission was to find technology on university campuses and sell it to other pharmaceutical companies for commercial development, he said. Now, however, he said, the company intends to do all development itself and take the new drugs to market.
Projects that Nelson will sponsor at UCI, McAfee said, will deal with basic research of synthetic organic molecules to form the basis of new drugs.
Nelson’s first contracts with UCI under the new agreement are for $160,000 for the study of chemical receptors in the brain and $25,000 for research on molecules that may be used in development of drugs to treat mental illnesses.
