UWM to go solo in tech: UW Board of Regents OKs move to its own patenting, licensing, spin-offs

Jul. 18--The University of Wisconsin-Milwaukee has won approval to go it alone when it comes to patenting, licensing and spinning off companies from campus inventions and discoveries.

Armed with a huge desire to increase its relatively small research effort, and strong support from UW System President Kevin Reilly, the school asked the UW System Board of Regents for permission to break away from a systemwide tech transfer program and manage its own intellectual property.

The regents unanimously approved the request at a regularly scheduled meeting on Friday.

The decision gives UWM the freedom to take on the difficult task of building a technology transfer office, and separates it from the Wisconsin Alumni Research Foundation, or WARF, a tech transfer powerhouse.

It also means the loss of the biggest consumer of services for WiSys Technology Foundation Inc., which WARF started seven years ago to handle property protection, market analysis, licensing and royalty revenue for all schools in the UW system except UW-Madison.

"We didn't feel it was for us to demand that they use these services if they thought they could do it themselves," said David Walsh, president of the Board of Regents until a month ago and a lawyer in Foley & Lardner's Madison office.

The regents approved the move because Reilly and UWM Chancellor Carlos Santiago thought it would help the university build its research capabilities, said Mark Bradley, the board's current president.

UWM's move will give it fixed overhead costs, rather than the variable costs associated with its WiSys contract, and shrink the number of law firms it uses to one from the potential dozen or so that WARF hires each year. UWM also will lose the expertise WiSys had available from WARF's 12 licensing mangers who are focused on understanding licensing opportunities in different industry specialties.

WARF spokeswoman Janet Kelly estimated that, out of about 112 UWM invention disclosures, it obtained 10 patents and has another 20 pending under the WiSys agreement. One high-profile result was a licensing agreement with Bristol-Myers Squibb -- the university's first ever -- that was announced in March 2006 for an anti-anxiety compound developed by UWM researcher James Cook.

"We have offered access to our agreements, and we will provide any help we can to make this successful. Tech transfer is important to our state and to our economy, and we wish them the best of luck," said Andrew Cohn, a WARF spokesman.

UWM made the decision to go it alone because it wanted the flexibility to use licensing revenue to expand its research and, when possible, the potential to give licensing preference to local partners, university officials said.

"WiSys didn't focus on some of the things we need to begin to create -- start-up companies, graduate student support, catalyst grants," Santiago said. "It's not a question of re-inventing the wheel; it's a question of having a tech transfer organization that focuses exclusively on UWM."

There also was the matter of money, Santiago said.

UWM's contract required it to pay a $30,000 annual fee and 40% of licensing revenue to WiSys in exchange for its services, Santiago said.

The university thought it would be better served by directing that 40% to the UWM Research Foundation, a private entity formed in 2006 with $3 million of initial funding from We Energies, Harley-Davidson and Rockwell Automation, Santiago said. That will help the university expand its research base by providing funds for graduate students and seed grants. It also will help UWM give licensing preference to companies in the region, when possible, he said.

The Milwaukee office of Michael Best & Friedrich will provide "pro bono" legal services for six years up to a certain level, Santiago said. Brian Thompson, the foundation's president, declined to say how much that level is.

Marshfield Clinic in November became the first organization outside of the state's public university system to contract with WiSys. The move "literally just fast-forwards our development cycle for the technology transfer office overnight," Robert Carlson, director of Marshfield Clinic Applied Sciences, said at the time.

The agreement was lauded by executives at the Kauffman Foundation, a Kansas City, Mo., non-profit focused on helping spur technological growth in the United States.

It's difficult for an academic research organization with less than $200 million of research spending to sustain its own technology transfer office, so the agreement is a "wonderful opportunity" for Marshfield and for Wisconsin, Lesa Mitchell, the foundation's vice president for advancing innovation, said at the time.

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