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©2004
The Regents of the University of California
 

 
VOL. 24. NO.13 APRIL 28, 2004
Photo by Reed Hutchinson UCLA Photographic Services
Associate Professor Farhad Parhami of the Department of Medicine’s cardiology division examines X-ray film with Rebecca Goodman of the Office of Intellectual Property Administration. Parhami and his team of researchers are working on a treatment for osteoporosis. Goodman is helping Parhami get his research into the marketplace.

revamped team working more closely with researchers

OIPA helps bring next big thing to market

BY JUDY LIN-EFTEKHAR
UCLA Today

For a decade, Farhad Parhami, an associate professor in the Department of Medicine’s cardiology division, has studied the science of lipid biology. Working in his laboratory in the Center for the Health Sciences, Parhami and his team of researchers have made advances that hold startling possibilities for a cure or prevention for osteoporosis.

The team found that specific oxysterols, which are byproducts of cholesterol oxidation, can stimulate the formation and activity of bone-forming cells called osteoblasts. With no similar therapeutic treatment currently available for this debilitating bone disease, Parhami believes that the market for his discovery is potentially huge. “It’s very exciting,” he said.

Now Parhami is working with UCLA’s newly revamped Office of Intellectual Property Administration (OIPA) in the hopes that one day the fruits of his research will reach the marketplace.

Parhami is one of nearly 2,400 faculty researchers at UCLA committed to finding solutions to some of life’s most perplexing problems. Supported by grants totaling $786 million in 2002-03, they have earned UCLA a well-deserved spot among the world’s premier research universities.

Much of their pioneering work has already reached the global marketplace. Patented technology from UCLA has been licensed by hundreds of companies such as Procter & Gamble, Samsung, Novartis and Boston Scientific. UCLA research has also provided the basis for start-up companies that create jobs and fuel the economy. The biopharmaceutical company Agensys, Inc., founded in 1997 (as UroGenesys) by UCLA oncologists and cancer researchers Arie Belldegrun, Owen Witte, Robert Figlin and Jean deKernion, develops novel diagnostic and therapeutic products for prostate cancer.

Pro-Duct Health was founded by UCLA surgeon Susan Love, based on the ductal lavage catheter she developed for early detection of breast cancer; Pro-Duct was recently purchased by Cytyc Corp. for $167 million.

While technology transfer between academia and business has a long history at the University of California, UCLA in 1990 became the first campus in the UC system to establish its own technology-transfer program. However, enthusiasm quickly outstripped staffing and other resources, and UCLA found itself lagging behind other top universities in moving creative ideas from the lab to the marketplace.

“We lost opportunities to leverage many of the exciting ideas coming from our campus,” said Chancellor Albert Carnesale. “This reinforced a culture that did not encourage our faculty to be entrepreneurs.”

Determined to rectify this, Carnesale directed a major reorganization of OIPA under the leadership of Executive Director Andrew Neighbour.

“The assets and opportunities are here,” Neighbour said, “and particularly the need to serve our faculty is here. Those who wish to commercialize technology deserve to get value-added assistance from the technology-transfer program.”

While tech transfer serves the university, business and society, ultimately it serves the faculty — researchers who stand to benefit professionally and financially from the commercialization of inventions that are, by law, owned by UC as a state-supported university. This arrangement between the university and its faculty is also mandated by the federal Bayh-Dole Act, which requires that inventions developed with taxpayers’ money be diligently managed by the university where the research was done.

The challenge of managing faculty-developed intellectual property is well understood by Neighbour, who earlier in his career was a researcher in virology and embryology at Albert Einstein College of Medicine in New York. He later worked in private industry and for four years directed the Center of Technology Management at Washington University in St. Louis, Mo.

Under his leadership, OIPA has grown from five to 17 staff members with expertise in business development as well as intellectual property in engineering, physical science and biomedicine. Bright and eager, these new hires fan out across campus seeking professors working on the next big thing.

Parhami, for one, is committed to remaining at UCLA as he accelerates his research, even though it means he won’t have access to the same level of funding and resources available at a big pharmaceutical or biotech company. To overcome these obstacles, the associate professor hopes to start his own company, Osteoscience. But Parhami is a scientist and not a businessman. So the how-to of getting an entrepreneurial venture off the ground was something of a mystery to him.
Fortunately, he had access to world-class pros. At the Anderson School of Management, Parhami sought help writing a business plan from Adjunct Associate Professor Robert Foster and a talented M.B.A. student named Matt Abbott. The scientist turned to OIPA for further help clarifying his ideas and fleshing out his business plan. Among those who came to his aid were George Abe, an OIPA business-development manager who has a background in venture-capital and high-tech firms, and Rebecca Goodman, an OIPA technology-transfer officer who has a degree in biology and a law degree with specialization in intellectual-property law.

Parhami’s long discussions with these business-savvy advisers prepared him as he made a pitch to potential investors from the Tech Coast Angels (TCA), a group of some 220 businesspeople in Los Angeles, Orange and San Diego counties. Through OIPA, TCA holds bimonthly investor forums on campus and invites faculty researchers like Parhami to make presentations. If the Angels like what they hear, they could potentially invest $250,000 to $2 million in seed and early-stage projects.

Another resource available to UCLA researchers is a new, pre-seed investment fund, the UCLA Lab2Market Investment Fund, spearheaded by Neighbour and David Lundberg, director of strategic alliances for OIPA and UCLA’s Department of Development. The fund, in which California venture-capital firms invest, will provide up to $25,000 in pre-seed money to researchers to move forward in developing prototypes or hiring a graduate student to conduct additional research.

These funds are primarily intended for researchers whose federal funding prohibits them from pursuing commercial aspects of their work with those same monies. The first Lab2Market Investment Fund grant went to Parhami to enable him to test his therapeutic approach on animals. OIPA is also exploring potential synergies between the fund and the Academic Senate’s Council on Research Faculty Grants Program. In the meantime, Parhami has had OIPA’s assistance and support in obtaining two U.S. patents for his discovery.

OIPA makes decisions to pursue a patent — which can take more than five years and cost more than $40,000 for U.S. rights alone — on a case-by-case basis, since not all inventions are patentable or commercially viable, Goodman explained.

Once a patent application is completed and successfully added to UCLA’s portfolio, OIPA pursues licensing more inventively and aggressively than ever before. A detailed database helps sort out potential customers, who are contacted individually. A Web site newsletter, “What’s BRUIN in the Labs?,” describes UCLA inventions and inventors to an online audience ranging from business-development officers at Fortune 500 companies to venture capitalists and investment bankers.

Through a program called HiddenGems, OIPA staff members maintain relationships with hundreds of companies and contacts in business and industry. This past summer, OIPA introduced members of the investment community attending UCLA’s First Annual Review of Research to researchers in fields ranging from nanotechnology to molecular genetics.

In spite of all these efforts, “chances are that nobody will notice some of these early inventions for awhile,” Neighbour said. This is simply the nature of university research, he explained, which tends to explore new ideas in their earliest stages of gestation. “It’s going to be several years before anybody wants to take that technology and do something with it.”

Parhami could face an especially long uphill climb because this delay is particularly true in medical therapeutics, where millions of dollars can be spent on research.

Nevertheless, there are signs that OIPA’s efforts are paying off: From an average of 130 inventions per year for the five years preceding OIPA’s reorganization, new-invention disclosures rose to 170 last year and are expected to continue increasing.

Also last year, 57 new U.S. patents were filed and 68 new U.S. and foreign patents were issued. The number of new licenses executed, 25, was double that of the previous year. In one recent agreement, a new UCLA start-up, ORFID, Inc., licensed two technologies developed by Professor Yang Yang’s lab in the Department of Materials Science and Engineering.

Currently, OIPA is managing 790 active cases in its intellectual-property portfolio, with 388 active, issued U.S. patents. UCLA’s licensing activity returns $10 million a year in royalty and fee income, which is shared with inventors, their labs and research programs at UCLA.

Although optimistic about OIPA’s growth, Neighbour said, “It will be many years before we see a commensurate increase in revenues, because you only really see big money when you have a product selling in the marketplace and you’re collecting annual royalties. The lead time from license to the market can be anywhere from two to 15 years.”

Yet, he added, “At the end of the day, tech transfer is not about the money. Tech transfer is about creating an environment where our researchers will flourish. It’s a business-development process.”