Georgetown University said last week that it will combine intellectual property with certain patents held by the engineering company Science Applications International Corporation and IT firm Gentag to help commercialize a method for monitoring glucose that uses disposable skin patches, wireless sensors, and cell phones.
Georgetown, SAIC, and Gentag are betting that bundling their IP will create a more attractive licensing or acquisition target for a company with experience developing glucose monitors or insulin-delivery systems, which the group hopes to identify through a competitive bidding process.
Under the agreement, Georgetown and SAIC will contribute IP covering flexible skin patch technology that researchers from the university and company co-developed in the late 1990s and early part of this decade.
Specifically, the researchers used funding from the Defense Advanced Research Projects Agency at the US Department of Defense to develop the skin patch technology to monitor the status of soldiers on the battlefield. SAIC, whose corporate headquarters are in San Diego, has approximately 44,000 employees worldwide and serves mostly customers in the DoD, intelligence community, US Department of Homeland Security, and other government agencies.
The main inventors of the skin patch technology are John Currie, a professor of physics and director of the Georgetown Advanced Electronics Laboratory; Mak Paranjape, associate professor of physics and research at GAEL Health Microsystems; and SAIC researchers Thomas Schneider and Robert White, who work in the area of micro-electro-mechanical systems.
A seminal US patent, No. 6,887,202, describing the researchers’ invention and issued jointly to Georgetown and SAIC, was issued in May 2005.
Meantime, Gentag, an IT firm based in Washington, DC, was developing a wide range of technologies based on the concept that a cell phone can be a universal reader for disposable wireless sensors.
SAIC and Gentag had been discussing possible areas of overlap for their technology, and SAIC facilitated meetings between Gentag and Georgetown researchers and tech-transfer officials to explore working together.
“We were really happy to work with SAIC because they already had some idea of what they wanted in terms of a commercial partner, and we were hoping to just find a partner that might be interested in developing the patch,” Claudia Stewart, vice president of technology commercialization at Georgetown, told BTW last week.
“By doing this I think they’ve taken a forward-looking position, and … made the most sophisticated and highest-level technology available. The whole is greater than the sum of the parts.”
“But when Gentag came to us we started thinking a little differently about how we could create this novel pool of IP and work as a team to really bring this particular prospective prototype into the marketplace,” Stewart added.
Georgetown and the two companies decided to pool their IP to help develop a new platform to monitor glucose and deliver insulin to diabetic patients. In one potential application, a disposable, wireless skin patch would measure blood glucose levels and report the data to a cell phone that could wirelessly control an insulin pump worn by or implanted in the patient.
Currently, the global glucose monitoring market, which many sources estimate to be in the $4 billion range, is dominated by technologies based on the mildly invasive method of gauging blood glucose levels in a drop of blood drawn from a finger prick. Many scientists and companies are attempting to market non-invasive technologies to replace this technique.
If Georgetown, SAIC, and Gentag can capture even a sliver of that market, the potential payoff for Georgetown could represent one of the first “homerun” tech-transfer deals for the school, Stewart said.
“I think it would be the case, keeping in mind that we’d be sharing it with two other companies,” Stewart said. “It could be a very big deal, and not just lucrative. It’s a very big market. We think it could be helpful to many patients.”
Specific financial terms of the IP-bundling agreement were not disclosed, although Stewart said that Georgetown’s stake in the technology is similar to what it would have been if it simply licensed the technology out to a company for further development.
“Although the terms will be characteristically similar to those of other academic deals, we’re hoping the magnitude might be different,” Stewart said.
But first, the trio must find a commercial partner willing to either license or acquire the bundled IP to develop it further. To identify such an entity, Georgetown, SAIC, and Gentag have undertaken a competitive bidding process, which Stewart said “is not alien” to universities.
“I think more and more schools are exploring ways in which to identify the best partner for commercializing technology from the standpoint of the university as well as the marketplace,” she said. “But at the same time we are also trying to evaluate numerous partners to understand who will provide the best return.”
IP bundling is another area that some schools have begun exploring in order to find value in pieces of IP that might otherwise go unlicensed or even unnoticed. However, universities have thus far more frequently paired their IP with that from other schools instead of companies.
“Teaming agreements are probably a bit uncommon,” Stewart said. “They are not routine. I certainly think there is the desire to collaborate with the appropriate organizations to be able to move each institution’s IP forward.”
Richard Sheehan, president of Johnson City, Tenn.-based tech-commercialization consultancy The Technology Resource of the Southeast, told BTW that the bundling agreement could put the glucose-monitoring technology on a “high-speed trajectory” to commercialization.
“I think it is an excellent arrangement that could be a win-win for everybody,” Sheehan said. “If they did not cooperate and had overlapping IP, none of them is likely going to be successful. By doing this I think they’ve taken a forward-looking position, and … made the most sophisticated and highest-level technology available. The whole is greater than the sum of the parts.”
Sheehan also cautioned that for such an agreement to go smoothly, the potential licensee should only have to negotiate one licensing agreement for all three entities. “As long as the potential licensee is dealing with only one agreement, it will work,” he said. “If there were three separate agreements they would have to agree to, they might have a big problem.”
Stewart said that the eventual commercial partner will likely dictate the direction of the technology’s commercialization, something that all three entities are prepared for.
“They may say, ‘We like this proposal but we want you to do X.’ Or, ‘we like this but want more or less input from SAIC,’” Stewart said. “But that doesn’t affect the terms of the agreement between” Georgetown, SAIC, and Gentag.
If the trio is unable to find a commercial partner, the agreement is time-limited, according to Stewart, although she declined to disclose how much time has been allotted. “Our intention is to develop this, and the terms don’t go on forever,” she said.
Further collaborative research between researchers from the three entities and spinning out their own company to commercialize the glucose monitoring device also remain a distant possibility, Stewart said.
“We actually haven’t had that discussion because we’re pretty confident that we will find a partner,” she added. “We like the fact that this is an interesting deal and has the potential to be something that is pretty creative. We’re looking for the opportunity to explore new approaches in tech transfer. We’re willing to do that.”