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The Honolulu Advertiser
Posted on: Saturday, July 19, 2003

Patent income for UH up 30 percent

By Sean Hao
Advertiser Staff Writer

The University of Hawai'i saw its royalty income rise but the number of patentable discoveries fall during the fiscal year that ended last month.

Although still comprising a relatively small amount of UH revenues, royalties or income from patent licenses increased 30 percent to $530,000.

Meanwhile, the number of patents licensed grew to 18 from 10 the previous year. However, the number of invention discoveries dipped to 26 from 34.

Invention discoveries are ideas by faculty that have patent potential.

It can take another three to five years, if ever, for a patent license to start generating revenues for the university.

While not spectacular, the year's results are a sign of progress for the university, which is trying to do a better job of commercializing its research.

"They're not where we want them to be, but the numbers are headed in the right direction," said Dick Cox, acting director of the UH Office of Technology Transfer.

Overall, royalty revenue at UH has grown about 82 percent since fiscal 2001. That's about the time the university's licensing and patent office was reorganized and the way profits from licensing agreements were divided was changed. As an incentive, university researchers now get more income before the university is repaid for the patenting.

Driving the growth of royalties and patent licensing is a new attitude that focuses on quickly commercializing technology rather than squeezing money out of a licensing arrangement, Cox said.

"The biggest change is just a refocusing on trying to exploit the opportunities for our technologies," he said. "Right now we're interested in doing deals and getting licenses signed and getting technology into the marketplace.

"The revenues will come, but we've got to get the licenses first."

The types of patents licensed in the past year included:

• Work on a way of making charcoal from grass clippings and other green waste that is routinely thrown away. The technology could have applications in agriculture and the food and metal industries.

• Technology that would produce biodegradable plastics from organic wastes.

• Research by biotechnology startup Genentex LLC aimed at making shrimp more resistant to viruses. Within about three years, Genentex wants to license the technology to agribusinesses, governments and shrimp farms and hatcheries, helping them eliminate shrimp disease while cutting operating costs.

The latest UH deal with Genentex is one of two of that involved the university exchanging licensing and other fees for equity in startup companies.

A similar deal is being negotiated with Marine Autonomous Systems Engineering Inc.

The company is developing underwater vehicles that could have applications in defense, salvage and search and rescue.

It was formed by UH scientists, including Song Choi, associate director for the Autonomous Systems Laboratory in the UH Mechanical Engineering Department; and Junku Yuh, the laboratory's director.

The company "allows us to aggressively attract funding from venture capital, angel fund or company-oriented government grants," Choi said.