Office of Tech Transfer & Econ. Dev. Annual Report FY 2007-2008 1 8-13-08 rev- cjs OFFICE OF TECHNOLOGY TRANSFER AND ECONOMIC DEVELOPMENT (OTTED) Research and Graduate Studies (RAGS) ANNUAL REPORT HIGHLIGHTS JULY 1, 2007 – JUNE 30, 2008 The Office of Technology Transfer and Economic Development (OTTED) of Kent State University is pleased again to report on its efforts and progress in tech transfer, aiding the university’s research and public service missions during the fiscal year 2007-8. The primary mission of OTTED is to seek protection of the university’s intellectual property (IP) that appears to have commercial potential for benefits to society in general, and for residents of our nation, state, and region in particular; and to aid in IP commercialization. OTTED aims therefore to bring the creative IP results of university employees’ research and graduate teaching into beneficial public use, by licensing university technologies to companies who will commercialize those discoveries. OTTED assists the university also in promoting economic development, aiding start-up companies who license university IP, and in promoting research collaborations. OTTED negotiated six new signed license agreements for university IP this fiscal year, including with: (1) Kent Display Systems, Inc. for expanded terms from previous licenses for multiple university cholesteric liquid crystal technologies invented by faculty Drs. Philip Bos, L. C. Chien, J. William Doane, Quan Li, John L. West, Deng-Ke Yang and 12 other inventors from the university’s Liquid Crystal Institute (LCI) for applications in displays and signs; (2) IC-MedTech Corp. for KSU.328 for Methods and Compositions for Treating Human Immunodeficiency Virus Using Phenolic Compounds invented by Dr. Chun-Che Tsai of Chemistry; (3) IC-MedTech Corp. for KSU.329 for Methods and Compositions for Selectively Modulating Human Sirtuins Using Phenolic Compounds invented by Dr. Chun-Che Tsai of Chemistry; (4) IC-MedTech Corp. for KSU.330 for Methods and Compositions for Treating Skin Afflictions Using Phenolic Compounds invented by Dr. C. C. Tsai of Chemistry; (5) Kent Display Systems, Inc. for multiple liquid crystal technologies listed in the license cited above to cover an additional new field of use in electronic skins (eSkins), coverings for electronic devices; and (6) Dynamic Eye, Inc. for multiple liquid crystal technologies invented by Dr. J. W. Doane, Dr. Deng-Ke Yang, and Dr. L. C. Chien of LCI for pixilated switchable eyewear and pixilated viewing scope devices. OTTED received $351,680.07 in gross licensing income this fiscal year to the university from seven licensee companies, indicating benefits of those inventions are coming closer to or are in public use. Of the gross royalties received, $6,637 was to be shared with partnering institutions. These included NEOUCOM ($2,500), University of Chester (UK) ($2,637); and Australian National University ($1,500) per agreements with joint owners. Therefore the net licensing income for 2007-8 FY with these deductions totaled $345,043.07. A total of $90,549.24 was collected by OTTED from licensees and corporate partners toward IP legal fees and patent maintenance costs in FY 2007-8. These were paid through licenses or inter-institutional agreements to offset in part the substantial legal expenses associated with protecting the university’s patents and other IP. All of these funds were deposited by OTTED with the Bursar as reimbursements to the university’s legal fees account. From licensing income, a total of $135,917.24 was distributed under university policy to 24 university inventors, with payments ranging from a low of $6.70 to a high of $38,637.65 total for the FY to a single inventor. The mean average payment for this FY to university inventors was about $5,663.22, while the median value (averaged due to an even number of payments) was $901.15 for this fiscal year. OTTED received and administered 20 new disclosures of inventions this FY (KSU.318 through KSU.337). These were reviewed as appropriate through the university’s Patent and Copyright Office of Tech Transfer & Econ. Dev. Annual Report FY 2007-2008 2 Board whose membership includes four faculty representatives and four administrators. Patent and Copyright Board members this FY included: Dr. Arne Gericke, Chemistry; Dr. Antal (Tony) Jakli, LCI; Dr. Elizabeth Mann, Physics; and Dr. S. Vijayaraghavan, Biological Sciences; as well as administrators Dr. John L. West, VP for Research and Chair; Dr. Constance Hawke, Assoc. University Counsel; Mr. Gregory Wilson, Assoc. VP for Economic Development and Strategic Partnerships; and Dr. Charmaine Streharsky, Licensing Coordinator for Technology Transfer. During FY 2008 there were 10 new U. S. utility (regular) patent applications filed for inventions from faculty and others from Biological Sciences, Chemistry, LCI, and the College of Technology. In addition there were 10 new U. S. provisional (temporary) patent applications and a number of foreign equivalent patent applications filed. Some of these were invented jointly with industry. Eight new US patents were issued by the USPTO and assigned to Kent State University during the 2007-8 FY. In the future these patented inventions may contribute to new or improved biosensors, light diffraction gratings for light beam steering, better methods of production and improved materials and devices for flexible or rigid displays, and higher-efficiency photovoltaic materials for solar cell devices, for example. Those awarded this FY: (1) US Patent 7,267,957 issued 9/11/2007 for KSU.186C Detection and Amplification of Ligands (Liquid Crystal Biosensor - Part1of2), with inventors Dr. Gary Niehaus and Dr. Kathleen Doane (NEOUCOM), Dr. Christopher Woolverton (KSU, Biological Sciences), Dr. Steve Schmidt (treated as KSU per agreement), Dr. Steven Signs (formerly NEOUCOM), and Dr. Oleg Lavrentovich (KSU, LCI). (2) US Patent 7,355,668 issued 4/8/2008 for KSU.241 Polymer Enhanced Liquid Crystal Device Built for Rigid or Flexible Substrates, with inventors Dr. Satyendra Kumar, KSU (Physics), and Dr. Qingbing Tony Wang (formerly of KSU). (3) US Patent 7,289,189 issued 10/30/2007 for KSU.213 Birefringent Filter-Based Color Generation Scheme for a Passive Matrix Display Device, with inventors Dr. Salman Saeed (formerly of KSU) and Dr. Philip J. Bos, KSU (LCI). (4) US Patent 7,315,345 issued 1/1/2008 for KSU.231 Electro-Convective Diffractive Device, with inventors Dr. James Gleeson, KSU (Physics) and Dr. Joshua Martin (formerly of KSU). (5) US Patent 7,294,370 issued 11/13/2007 for KSU.258 Aligned Lyotropic Chromonic Liquid Crystal Films, with inventors Dr. Oleg Lavrentovich, KSU (LCI), Dr. Tod Schneider formerly of KSU, Dr. Andrii Golovin, KSU (LCI), and Dr. Jong-Chan Lee (formerly of KSU). (6) US Patent 7,372,480 issued 5/13/2008 for KSU.202B Non-Lithographic Photo-Induced Patterning of Polymers from Liquid Crystal Solvents with Spatially Modulated Director Fields, with inventors Dr. Oleg Lavrentovich, KSU (LCI), Dmitry Voloshchenko (KSU), and Dr. Sergij Shiyanovskii, KSU (LCI). (7) US Patent 7,279,570 issued 10/9/2007 for KSU.277 Nanoscale Discotic Liquid Crystalline Porphyrins for the Application as High-Efficiency Photovoltaic Materials, Organic Semiconducting Materials, Organic Light Emitting Materials and Solar Cell Device Implementation, with inventors Dr. Quan Li, KSU (LCI), Dr. Antal I. Jakli, KSU (LCI), Dr. Lanfang Li (formerly of KSU), and John Harden, KSU (LCI). (8) US Patent 7,291,727 issued 11/6/2007 for KSU.285 Light-Harvesting Discotic Liquid Crystalline Porphyrins and Metal Complexes, with inventors Dr. Quan Li, KSU (LCI) and Xiaoli Zhou (KSU). OTTED is pleased to applaud the creative accomplishments of dedicated Kent State University faculty, staff, and student research teams in their inventions. In September 2007 the university’s Provost Dr. Robert Frank, VP for Research Dr. John West, and all of OTTED including Associate VP Gregory Wilson, Dr. Charmaine Streharsky, and administrative secretary Mrs. Sheila Pratt, were pleased to host the university’s second Inventor Recognition Ceremony. This event especially honored 33 new Kent State employee inventors. The ceremony was one of the highlights of the university’s week-long Celebration of Scholarship. In addition to the 33 new inventors, many of the 72 inventors who were honored previously, at the first university inventor recognition event in 2004, were present and acknowledged with token gifts. Most of these inventors previously honored have continued to break new ground, as evidenced by their disclosure of new inventions to the university since they received their first inventor recognition award. We in the Office of Technology Transfer and Economic Development are sincerely committed to assisting with meaningful transfer of university technology, to the benefit of our publics and toward the advancement of knowledge. We are very proud to play a part in this important Kent State University mission enterprise.