New law lets professors profit from research


Until recently, the race for University of Rhode Island researchers to bring innovative technologies to the public lacked one key element: the carrot.



Professors at state colleges and universities have never been able to profit from their work by starting their own company. While many have secured patents based on their research and inventions, the profits from those innovations – and the accompanying jobs – often went elsewhere.



The situation, state economic-development leaders say, has put the Ocean State at a disadvantage. But legislation passed in June and signed by Gov. Don Carcieri, who pressed for the bill, allows faculty at state schools to take an equity stake in their inventions and ideas.

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“Now we’re unleashing the intellectual power of URI,” said Michael McMahon, executive director of the Rhode Island Economic Development Corporation.



The moment comes none too soon for Ying Sun, a professor in URI’s Department of Electrical and Computer Engineering and coordinator of the department’s biomedical engineering program.



“Before, the only vehicle to commercialization was to apply for a patent and wait for some company to pick it up,” said Sun, who has been on URI’s faculty since 1985. “Now we have the option of forming our own company and taking the lead.”



Sun has secured one patent and has three more pending on biomedical technologies. He said the phase between patent application and an actual, developed product can be long and arduous, and oftentimes an outside company might not have the expertise – or the resolve – to see it through.



“If you have a really great idea it’s easy to license it, but for most ideas it takes additional development,” Sun said. “The best people to do that are the inventors themselves.”



For example, Sun, a doctoral student and two colleagues have developed a special clamp for neurological research, which uses digital processors to control nerve and muscle movements. The tool could prove useful for neurological research and one day might be used in clinical applications, perhaps as a brain-machine interface to control the movement of limbs, Sun said.



The researchers attracted the interest of a small company in St. Louis, which recently joined the URI team in applying for a $100,000 Small Business Innovation Research grant. But because SBIR applications must come from the private sector, the company will receive two-thirds of the funding, while the university will get one-third, Sun said.



While he says he is content with the agreement, the new legislation would allow him to form his own startup firm, apply for his own grant and use the money as he sees fit. Moreover, the funding now would go to a company 1,000 miles away – rather than invested into the state, where it could lead to future research dollars, capital investment and jobs.



McMahon said that the new legislation would help put Rhode Island on equal footing with other states when it comes to harnessing the intellectual prowess that already exists here.



“Now we’ll be able to use that intellectual capital as part of the economic-development efforts of the state,” he said.



McMahon compares URI to neighboring University of Massachusetts and University of Connecticut, which he says have contributed far more to their respective state’s budding technology sectors. For example, Connecticut has become a national leader in the use of fuel cells and alternative energies – largely stemming from research at UConn.



McMahon said state officials will work with URI and other state schools to open some sort of incubator or research center to assist faculty members who are looking to take their innovations into the private sector.



Of course, not all researchers at state schools are interested in spinning off their own company. Many would just as soon license their patents to the private sector; others might want to play a limited role, such as serving as chief technology officer. And many of those who would like to become chief executives of their own companies don’t have the business skills to do so, McMahon said.



Across that spectrum, though, McMahon said faculty members will have a common partner: the state-funded Slater Centers, which offer seed funding and advice to promising Rhode Island startups.



Eliminating the prohibition on commercialization should enhance URI’s ability to attract top-notch faculty, according to Jeff Seemann, dean of URI’s College of the Environment and Life Sciences.



For example, Seemann said the old conflict-of-interest law has prevented his college from recruiting Albert Kausch, who in the 1980s helped develop transgenic corn.



But because Kausch serves as a vice president at HybriGene, a biotechnology company that URI recently partnered with to develop new types of turf, state law prevented the school from recruiting him.



“Faculty are like everyone else: They’d like to see their ideas turned into useful products, and they’d like to make a few dollars,” Seemann said.


“This (new law) will provide an incentive for them to do that. We want to
encourage the kind of entrepreneurial activity that has created economic benefits
in places like Boston, North Carolina and California.”


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