Citing a desire to make a greater contribution to local economic development and to provide a greater return to its own research program, the University of Wisconsin-Milwaukee this month said it would manage its own intellectual property in lieu of relying on WiSys, the non-profit subsidiary of the Wisconsin Alumni Research Foundation that manages IP for all UW campuses except UW-Madison.
The UW-Milwaukee Research Foundation, formed last year with financial assistance from several Milwaukee-area private entities, will now be the sole manager of all IP resulting from UW-Milwaukee research, the university said in a statement.
WiSys was established in 2000 by WARF to manage intellectual property for all campuses in the UW system except UW-Madison, whose IP is managed by WARF. This includes four-year campuses at Eau Claire, Green Bay, La Crosse, Milwaukee, Oshkosh, Parkside, Platteville, River Falls, Stevens Point, Stout, Superior, and Whitewater; and a number of two-year campuses.
But in recent years, UW-Milwaukee has established itself as the strongest of its UW system peers in terms of invention disclosures, patents, and research funding.
According to the USPTO database, of the 16 published patents that have been awarded to WiSys, 12 name a UW-Milwaukee professor as an inventor. Andy Cohn, government and public relations manager for WARF, told BTW that UW-Milwaukee is actually responsible for 10 of those patents.
In addition, WiSys has completed licensing deals for four of the 16 patents, two of which stemmed from research conducted at UW-Milwaukee.
UW-Milwaukee was “a large contributor to disclosures and patents,” Cohn said. “They have a lot more federal research funding than the other campuses.” Cohn said he believed but could not verify immediately that UW-Milwaukee garnered the most research funding of any UW campus besides UW-Madison.
Under its previous agreement with WiSys, UW-Milwaukee was required to allocate 40 percent of revenues generated from licenses to WiSys and to the UW system administration, while the remaining 60 percent was returned to UW-Milwaukee to be split amongst the inventors, the campus as a whole, and specific departments and laboratories.
Although WiSys was charged with returning its cut to support research within the entire UW system, including UW-Milwaukee, the school felt that it would rather direct all potential licensing income directly to the UW-Milwaukee Research Foundation, seeing as how the campus was responsible for most of WiSys’ invention disclosures.
“This is a critical step forward to fulfill our research mission,” Carlos Santiago, chancellor of UW-Milwaukee, said in a statement. “The UWM Research Foundation will provide us with the flexibility to manage our intellectual property in ways that are most beneficial to UW-Milwaukee, its faculty and staff, and the economic vitality of the region.”
Santiago was unavailable for further comment. However, according to an article published this month in the Milwaukee Journal-Sentinel, Santiago said that WiSys didn’t focus on certain items such as start-up companies, graduate student support, and catalyst grants, which UW-Milwaukee felt were important to fulfilling its research goal.
Compared with the other UW system campuses, UW-Milwaukee has a relatively strong research program in the life sciences, chemistry, and engineering – areas that tend to produce the majority of invention disclosures with commercial potential.
According to a UW-Milwaukee extramural funding report for fiscal year 2005-2006, the school received about $2 million in extramural funding for research in the chemistry, biological sciences, and health sciences – which represented about eight percent of the school’s $25 million in total extramural funding.
Meanwhile, the departments of physics, civil engineering, industrial and systems engineering, and mechanical engineering accounted for about $3.8 million of total extramural funding awarded to the school.
UW-Milwaukee may also have been emboldened to operate independently by the completion of a significant licensing deal: In December, it announced that Bristol-Myers Squibb had licensed a patent derived from research conducted by James Cook, a professor of chemistry at UW-Milwaukee.
Specifically, BMS licensed patents related to chemical compounds that interact with gamma-aminobutyric acid and may be useful in treating anti-anxiety disorders. The terms of this deal remain undisclosed, but UW-Milwaukee heralded the agreement as its first ever licensing deal with an established company.
“The UWM Research Foundation will provide us with the flexibility to manage our intellectual property in ways that are most beneficial to UW-Milwaukee, its faculty and staff, and the economic vitality of the region.”
UW-Milwaukee also noted that its desire to provide an economic return to the Milwaukee area was a key factor in its decision to split from WiSys. Specifically, the school said in a statement that local control of the UWM Research Foundation gives the university the flexibility to build its licensing programs by reaching out to local corporate partners.
UWM also said that it believes it has an important role to play in local economic development, and that when possible, it would give preference for licensing to regional companies such that high-technology and advanced manufacturing jobs will be created or retained in the area.
“We are very grateful for the operational expertise that was shared with us [by WiSys and WARF], and hope the UWM Research Foundation will have the same tremendous impact on the Milwaukee region that WARF is having on Madison,” Santiago said in a statement.
UW-Milwaukee will lose the significant amount of expertise afforded to it by WiSys, which provided multiple licensing managers with know-how in different industry segments, as well as access to multiple external IP law firms.
In a statement, UW-Milwaukee said that it is building up its capabilities in patenting and licensing, and is working closely with the school’s office of the vice chancellor for research to ensure alignment with the university’s research agenda. The local law firm of Michael Best & Freidrich, which specializes in IP and technology commercialization, will provide pro bono services to UW-Milwaukee in the near term.
The split also means that WiSys will lose one of the biggest users of its services, but UW maintains that it will not affect its mission. In fact, the institute will now be able to focus more of its resources on commercializing technology from the remaining smaller UW system campuses.
“Both WARF and the UW system are 100-percent committed to WiSys providing all necessary tech-transfer activities for the remaining campuses,” UW system Kevin Reilly said in a statement.