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 action
In 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 Challenge
In 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].
Inventor Survey
WARF inventors rate the patenting and licensing experience
The 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.
LIFE SCIENCES
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].
SUPPORT TEAM
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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JANUARY 14
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/
Cost: $35
JANUARY 15
5:30 to 7:00 p.m.
Lean Business Planning –
Entrepreneurial Training
Program
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
JANUARY 23
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/
Cost: $95
FEBRUARY 6–8
Finance and Accounting for
Non-Financial Executives
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
Cost: $2,095
FEBRUARY 13
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/
Cost: $110
FEBRUARY 11–13
How to Influence Without
Direct Authority
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
Cost: $1,895
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Contact Us
The 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