The WARF Discovery Bulletin is published for University of Wisconsin–Madison faculty, staff and students by the WARF Communications Department, 614 Walnut Street, 13th Floor, Madison, Wisconsin, 53726.
WARF Discovery Bulletin Winter 2012
In this issue...
- From the Managing Director: Patent law changes require quicker inventor action
- Award-winning projects exemplify innovation
- New electrodes promise big energy advantages
- UW student takes national inventor honor
- Inventors rate patenting and licensing experience
- At Your Service: After discovery, think disclosure!
- Discovery Daybook: A listing of events and opportunities for investors and entrepreneurs
From the Managing Director:
Patent law changes require quicker inventor actionIn September 2011, Congress passed the America Invents Act, the most significant change to the patent law in 60 years.
Unfortunately for universities, small companies and individuals, it is not a good law. Under this new law, it will be more expensive and more difficult to obtain, protect and enforce patents. For some universities—because of the increased expense—it may no longer be practical to pursue patenting of faculty and staff inventions.
Fortunately, at the University of Wisconsin–Madison, WARF exists and has the financial strength and resources that will enable us, with your help, to continue to protect, defend and license your inventions.
These changes take effect on March 16, 2013. After that date, protection of inventions under U.S. patent law will entail a race to the patent office.
It will no longer matter whether an applicant was the first to invent. What will matter is whether the applicant got to the patent office first.
In order for WARF to best serve you in protecting your inventions, we need your help in disclosing to WARF your discoveries and inventions early, before any non-confidential disclosures. Examples of routine academic activities that may disqualify an invention from patent protection include: academic papers; abstracts; posters; presentations; grant applications; web postings; open thesis defenses; and department or campus seminars.
But even if an unintentional public disclosure has occurred, WARF encourages inventors to disclose to a member of the intellectual property team as soon as possible to see whether the potential for protection remains.
In the weeks and months ahead, we will be continuing our efforts to visit campus researchers and discuss these changes. We are eager to answer any questions about the new patent law or any other topics related to WARF.
Our intellectual property management team stands ready to assist UW–Madison inventors, including faculty, staff and students. Learn more about our team inside this edition of the Discovery Bulletin or call us at 608.263.2500.
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Meanwhile, three major research projects set in motion by graduate students and postdoctoral researchers also earned cash and campus-wide recognition as part of the WARF Discovery Challenge student competition.
Launched to highlight inventions with exceptional commercial potential arising from University of Wisconsin–Madison research, the WARF Innovation Awards focused on more than 350 invention disclosures submitted to the Wisconsin Alumni Research Foundation over the past 12 months. A panel of independent judges selected the top two inventions, which each received an award of $5,000.
The poultry feed additive was developed by UW–Madison animal science professor Mark Cook and researcher Jordan Sand. The product comes in the form of an antibody that controls coccidiosis, a common parasitic infection in poultry that hampers growth and reduces resistance to other infections.
Current methods to control the protozoan infection involve drugs and attenuated vaccines, yet drugs and antibiotics are being phased out of animal feed, especially in the European Union. Cook and Sand estimated that industry adoption of their anti-IL-10 antibody, which strengthens the birds' immune systems, would cost 50 percent less than the current, widely used vaccine regimen. The estimated market potential of the invention ranges from $128 million to $500 million per year.
Ludois' invention has the potential to reduce the capital cost of the machines by 50 percent while significantly increasing electrical efficiency when compared with existing power generation equipment. By achieving a power density comparable to magnetic machines, the material and manufacturing benefits of his next-generation capacitive motor are expected to make it a superior choice for high-speed applications such as utility turbo generators and heating, ventilation, air conditioning and pumping installations. The electric motor and generator market is currently valued at $73 billion worldwide while the backup power generation market is valued at $210 million worldwide.
WARF Discovery ChallengeIn addition to honoring inventors with accepted disclosures, WARF also sponsored a competition designed to foster interdisciplinary collaboration among teams of graduate students and postdoctoral researchers. The winning WARF Discovery Challenge projects also received $5,000 each.
The winners were:
Elise Lockwood and Bryan Gibson: Lockwood is a postdoctoral researcher with the Wisconsin Center for Education Research while Gibson is pursuing a doctorate in computer sciences. Their project involves research into undergraduate mathematics education and methods for teaching combinatorial problem solving. Enumeration, or counting, is a basic mathematical process, yet its complexity grows rapidly in combinatorial problems. For example: "How many eight-letter passwords contain at least three E's?" Counting problems are central to computing probabilities and key to effectively writing and implementing computer programs. The researchers intend to develop teaching tools that improve students' combinatorial problem-solving capabilities.
Elon Roti Roti and Karissa Tilbury: Roti Roti is a postdoctoral researcher with the UW–Madison School of Medicine and Public Health's department of obstetrics and gynecology while Karissa Tilbury is a graduate research assistant in the department of biomedical engineering. The researchers are investigating the use of medications to protect a woman's ovaries against the toxic effects of a widely-used chemotherapy drug. The work aims to address the health challenges associated with premature menopause, an increasingly common problem as successful chemotherapy boosts survival rates among female cancer patients but damages the women's ovaries. Premature menopause brings infertility and increased risk for health complications including osteoporosis and heart failure. Reducing the toxic effects of chemotherapy on women's ovaries represents an important step toward improving the health and quality of life among cancer survivors.
Dan Wolak and Corinna Burger: Wolak is a doctoral student in pharmaceutical sciences while Burger is a professor in the neurology department of UW–Madison's School of Medicine and Public Health. The researchers are studying how various medicines diffuse through the brain to treat central nervous system disorders. When biotherapeutic agents are delivered directly to the brain, they must pass through narrow, maze-like extracellular spaces to reach intended target sites. The goal is to improve the diffusion characteristics of a variety of different large molecule biotherapeutics and proteins to enhance therapeutic benefits in the central nervous system. For more information about the WARF Discovery Challenge, visit: warf.org/DiscoveryChallenge.
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Using a new class of nanomaterials, a University of Wisconsin–Madison inventor is working to capture energy from the sun much as nature intended—with trees in a forest.But these forests fit on a silicon wafer. And the trees are actually strands of titanium oxide crystals with branches 1,000 times thinner than a human hair.
Xudong (ZHU-dong) Wang, an assistant professor in UW–Madison's College of Engineering, has been working to create these nanowire electrode forests since he joined UW–Madison in 2008. Aided by funding from the WARF Accelerator Program, the effort now appears close to achieving key goals.
"I started working on nanowires as a graduate student in 2002 because at that time, the nanowires were a very cool, new technology and it seemed like they had the potential to solve a lot of problems," said Wang. "We are still some months away from being able to demonstrate our findings on a commercial wafer scale, but so far we are looking at solar power energy conversion that is four times more efficient than regular nanowire-based technology. And we also see exciting applications for hydrogen fuel separation—converting water into hydrogen for use in fuel cells."
To create the tiny trees, Wang starts with the trunks, using a patterned etching process to selectively remove excess material from the silicon wafers and sculpt tiny erect wires embedded on the silicon chip base. Growing the branches is more difficult, but necessary to achieve the density and light absorption qualities needed to capture and convert energy more efficiently.
"The branches are critical because they provide a much larger surface area than the nanowire bases alone," Wang said. "The unique structure and chemical composition of the branches also allows for faster charge transport. It's what makes these electrodes so much more efficient."
"At the moment, we are on top of this technology, but this is something people have been trying to do for a long time and very competitive research groups in other countries are exploring different processes to reach the same goal," Wang said. "There is a great deal of interest in this area because it is a clean energy technology that will improve people's lives if we can make it commercially viable."
Support from the Accelerator Program is now being used to scale up the technology to the point that it will be attractive for industry. Wang said he expects to be able to refine his methods, achieve greater cost savings and demonstrate technological feasibility for commercial production over the next year.
With several patents pending on the work, Wang's three-dimensional nanowire electrode networks are part of WARF's Clean Technology portfolio.
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Working with the medical devices team at the Morgridge Institute for Research, Ronning developed the prosthetic hand to provide improved functionality, better aesthetics and reduced costs compared to models now on the market. Thomas "Rock" Mackie, director of medical devices for the Morgridge Institute, served as adviser to Ronning for the project.
Ronning, a junior studying mechanical engineering, came up with the ReHand concept during an engineering class as a way to help amputees in developing countries. Earlier this year, he won the Schoofs Prize for Creativity and took second place in the Tong Prototype competition, both organized through the UW–Madison's College of Engineering.
The national Collegiate Inventors Competition recognizes, rewards and encourages students to share their inventive ideas with the world. Introduced in 1990, the competition promotes innovation in science, engineering, technology and other creative endeavors and provides a window on the technologies that will benefit society in the future. Operated by Invent Now, the Collegiate Inventors Competition is sponsored by the Abbott Fund, the Kauffman Foundation and the United States Patent and Trademark Office.
Advanced Fabrication Lab welcomes collaboration
The Advanced Fabrication Lab at the
Morgridge Institute for Research welcomes
the opportunity for collaboration
with undergraduates, graduate students
and faculty researchers.
The lab features a full range of research and prototype development capabilities including computer-aided design, a variety of machine tools, 3-D model building equipment, a welding booth and staff with experience in a wide range of manufacturing settings. The lab's capabilities extend to the development of large-scale therapeutic equipment, complex biomedical systems and surgical tools.
A recent private fundraising effort has expanded the lab's ability to serve as a campus resource. Thanks to support from a donor familiar with the lab's work, a small budget for supplies now exists to help undergraduates complete select prototype and fabrication projects. Opportunities for faculty and graduate collaborations continue to grow, as well.
The lab is part of the medical devices group at the Morgridge Institute for Research and is in the lower level of the Wisconsin Institutes for Discovery building. Faculty and students with projects for consideration should contact George Petry, advanced prototyping project manager, at 608.316.4379, [email protected]; or Nathan Schumacher, assistant engineer, at 608.316.4378, [email protected].
WARF inventors rate the patenting and licensing experienceThe patenting and licensing process may require some time and effort but University of Wisconsin–Madison inventors say they are motivated by benefits to society from development of their ideas.
The Wisconsin Alumni Research Foundation's annual summary of its survey of inventors with disclosures over the past year drew a 30 percent response rate. Inventors scored their experiences on a scale of 1 to 4 with 1 being extremely satisfied and 4 being extremely dissatisfied.
The experience with WARF's disclosure process earned a highly satisfied score of 1.3 for the 2011–2012 period while the responsiveness of WARF's staff earned an even stronger 1.2 score. Inventors were slightly less satisfied (1.8) in their reaction when a decision was made to decline an invention for patenting, though even here the numbers show general satisfaction with the process.
Michael Falk, general counsel for WARF, said it is important to note that often the decision to decline an invention for patenting is not a reflection on the quality of the science involved. Instead, decisions to decline often center on the ability to obtain a commercially useful patent and then to detect infringement and enforce the patent in court.
As part of the recent survey, campus inventors were asked what motivated them to disclose their invention to WARF. Twenty-three percent of the respondents indicated a desire to see their idea move into commercial development and benefit society, with some noting that industry will not pursue the investment needed to introduce a new technology without appropriate intellectual property protection.
Others were motivated by positive experiences with the process in the past as well as a desire to benefit the university. Each year WARF contributes millions of dollars to the university thanks to investment earnings resulting from the commercial licensing of faculty inventions.
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At Your Service:
After discovery, think disclosure!
After your eureka moment, but before you let anyone know
about your discovery, the members of WARF's intellectual property
team want to hear from you. They are your best resource for
determining whether a patent should be filed to protect your patent
rights for your invention.
A new U.S. law that awards patents under a "first-inventor-to-file" system increases the need for WARF to review and assess innovations in a timely manner. In exploring whether a discovery is patentable, WARF assesses whether it is:
- Novel, useful and non-obvious (the basic patent criteria established by the U.S. Patent and Trademark Office);
- Marketable, with commercial and societal value projected; and
- Appropriate for a patent or other intellectual property protection.
Before you publicly share your discovery, submit an invention disclosure report to a member of WARF's intellectual property team. The short invention disclosure reports are available online at www.warf.org/inventors.Actions that may disqualify an invention from earning a patent include premature web postings, presentations, abstracts, papers, grant applications and department seminars. WARF encourages inventors to disclose to a member of the intellectual property team as soon as possible even if a public disclosure has already occurred.
WARF's intellectual property team stands ready to help
WARF's intellectual property team serves
as the first point of contact for inventors
in the disclosure process. The following
list includes the team members' focus
areas; there is some overlap in disciplines
that generate higher disclosure volumes.
Inventor contacts are quickly routed to
the appropriate team member.
Paulanne Chelf, senior intellectual property manager, specializes in bacteriology, biochemistry, bioenergy, biotechnology, cellular and molecular biology, environment, fermentation, food and dairy, health and nutrition, pharmaceuticals and human and veterinary medicine. Send email to [email protected].
Beth Werner, intellectual property manager, focuses on biochemistry, biotechnology, chemistry, drug discovery, genomics and proteomics, genetic engineering, health and nutrition, metabolic pathways, pharmaceuticals, plant sciences and transgenic crops and animals. Send email to [email protected].
Victoria Sutton, intellectual property associate, works in the fields of agriculture, animal science, bacteriology, biochemistry, biotechnology, cellular and molecular biology, chemistry, dairy science, drug discovery, environmental science, food science, genetics, health and nutrition, human and veterinary medicine, pharmaceuticals, plant sciences and transgenic crops and animals. Send email to [email protected].
ENGINEERING AND PHYSICAL SCIENCES
Stephanie Whitehorse, manager of IP operations and intellectual property manager, manages intellectual property in biomedical engineering, chemistry, chemical and biological engineering, medical physics, physics, civil engineering, mechanical engineering, micro and nanotechnologies, materials and processing as well as electrical engineering, computer science and software. Stephanie also works with the general counsel, WARF staff and the university community to revise and implement WARF's intellectual property procedures and policies. Send email to [email protected].
Brian Frushour, intellectual property associate, works with intellectual property managers in engineering, physical sciences and life sciences to identify and protect inventions resulting from university research; coordinates correspondence with attorneys and inventors; conducts preliminary prior art analysis; coordinates market analysis for new disclosures. Send email to [email protected].
Leah Haman, intellectual property associate, works in the fields of engineering and the physical sciences to identify and protect inventions resulting from university research; coordinates correspondence with attorneys and inventors; conducts preliminary prior art analysis; coordinates market analysis for new disclosures. Send email to [email protected].
WARF's intellectual property team features specialists with expertise in records management, database development and documentation. Team members include: Amy Kruse, docket specialist; Katie Rice, intellectual property assistant; Will Temby, intellectual property assistant; and Jessica Wartenweiler, intellectual property assistant.
For more information, contact WARF at 608.263.2500 or visit our employee directory.
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6:30 to 9 p.m.
Small Business: The First Step
Designed for people who have not yet started a business, this program engages participants in the process of exploring a business idea and assessing entrepreneurial readiness. The program also helps participants discover where to find key information and how to access important resources. Sponsored by the Wisconsin School of Business Small Business Development Center, this interactive workshop features hands-on exercises and showcases local success stories.
Location: Grainger Hall, 975 University Ave., Madison
Contact: (608) 262-3909; http://sbdc.wisc.edu/startup/sbfs/
5:30 to 7:00 p.m.
Lean Business Planning –
This orientation meeting represents the starting point for a comprehensive combination of courses, individual coaching and business plan development designed to help entrepreneurs develop business skills and attract financing. The program is sponsored by the Wisconsin School of Business Small Business Development Center and the Wisconsin Economic Development Corp. It focuses on startup ventures and business expansions. Components of the program include:
- Orientation meeting;
- Small Business: the Fundamentals;
- Developing a Business Plan Using Lean Startup Tools;
- Individual coaching and small group meetings; and
- Completion of a written business plan.
Participation requires an accepted
application; the deadline to apply
is Jan. 7. For an application and
requirements, call the Small
Business Development Center (608)
263-7680 or visit the website: http://www.wisconsinsbdc.org.
Location: Grainger Hall, 975 University Ave., Madison Contact: (608) 263-7680; http://sbdc.wisc.edu/startup/etp/
Cost: $250 for approved enrollees
8:30 a.m. to 4:30 p.m.
Small Business Tax Expo
The Small Business Tax Expo provides a chance to learn about federal and state taxes including payroll, unemployment compensation and sales taxes. Created by the Wisconsin Small Business Development Centers, Wisconsin Department of Revenue, Wisconsin Institute of CPAs and Internal Revenue Service, the morning sessions focus on topics such as "employee" vs. "independent contractor" status; how to do quarterly income tax estimates; using withholding tables; and the pros and cons of various legal business entities. The afternoon sessions will be divided into groups based on choice of business entity.
Location: Grainger Hall, 975 University Avenue, Madison
Contact: (608) 262-3909; http://sbdc.wisc.edu/startup/sbtaxexpo/
Finance and Accounting for
This two-and-one-half day course offers engaging discussion and real-world case studies to help strengthen participants' business acumen and master the financial language of business. Sponsored by the Wisconsin School of Business Executive Education program, the course provides a solid base of knowledge about financial statements and concepts enabling executives to confidently interpret financial data.
Location: Fluno Center, 601 University Ave., Madison
Contact: (800) 348-8964; 608-441-7308; http://exed.wisc.edu/Courses/Finance-and-Accounting-for-Non-Financial-Executives
8:30 a.m. to Noon
Launch into Leadership:
New Supervisor Training
Taking on new supervisory responsibilities represents an opportunity and challenge. Many in supervisory roles have learned either by trial and error or by following what was done by their predecessor. In most cases, this is not a very effective strategy. This short, dynamic workshop helps new supervisors start out in the right direction with fundamental skills and ideas to continue growing as a supervisor and leader. The course is sponsored by the Wisconsin School of Business Small Business Development Center.
Location: Grainger Hall, 975 University Ave., Madison
Contact: (608) 262-3909; http://sbdc.wisc.edu/leadership/launch/
How to Influence Without
Most managers have less formal authority than they need to carry out their responsibilities. Effective, innovative managers know how to use informal, indirect authority to influence key stakeholders: the boss, peers, associates, customers, suppliers and staff. This course helps managers extend their positive influence beyond formal lines of authority to get the job done.
Location: Fluno Center, 601 University Ave., Madison
Contact: (800) 348-8964; (608) 441-7314; http://exed.wisc.edu/Courses/How-to-Influence-Without-Direct-Authority
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Contact UsThe WARF Discovery Bulletin is published by WARF Communications, 614 Walnut Street, 13th Floor, Madison, Wisconsin, 53726. Please send comments or story ideas to [email protected] or contact:
Janet Kelly, communications director, [email protected], 608.890.1491
Jennifer Sereno, senior editor, [email protected], 608.770.8084
Devon Cournoyer, project manager, [email protected], 608.890.1621