Getting Patents on Track at NIH

Image: Erica P. Johnson The National Institutes of Health has launched a new tracking system to streamline the licensing of discoveries. Officials hope the new system will improve the technology transfer process, allowing promising biomedical discoveries to be commercialized and brought to the public benefit more quickly. In October, the NIH activated TechTracS, a system to monitor technology transfers from intramural research programs. TechTracS uses computer database tools to help NIH officials keep up-to-date on their patenting and licensing activities. The NIH collected $46 million (US) in licensing revenue in fiscal 2001 from intramural and extramural research, an amount that pales in comparison with the whopping $17.9 billion it obligated in fiscal 2001. The system is designed to better manage those resources. "We added about 1,000 different business rules, things that a patent attorney might go through," says Gary Barbarash, special assistant to the director of NIH's Office of Technology Transfer (OTT). TechTracS was originally developed for NASA to monitor inventions developed by the space agency's numerous contractors. NIH tweaked and enhanced the system, adding the ability to manage foreign patents, track Cooperative Research and Development Agreement projects (CRADAs), and perform financial analysis and reporting. Staff members receive E-mail notices when patent filing deadlines approach, and the system also monitors performance milestones to keep outside law firms and contractors on schedule. EDISON UPGRADE NIH's Office of Extramural Research uses a separate system, called Edison, to monitor licensing by outside researchers. Some NIH officials who fear Edison is becoming outdated have suggested TechTracS might be expanded to cover extramural as well as intramural activities. But the agency has made no plans to expand it, Barbarash says. The TechTracS installation for NIH's intramural research will not directly benefit outside researchers, says James Severson, director of patents and technology marketing at Cornell University. "Researchers disclose their inventions made under federal funds to the technology transfer office at the university, and we do the reporting to NIH on the Edison system," he says. "At Cornell, at least, it's our responsibility in tech transfer to report the inventions. The researchers aren't involved." Within two or three months NIH's Edison system itself will be upgraded, making it easier for university and other outside tech transfer offices to submit information to NIH over the Internet. "I've seen a preview of the new Edison site," says Severson, a past president of the Association of University Technology Managers. "There are enhanced features that will help us, such as eliminating the need for reentering data." TechTracS replaces three older systems that OTT had developed over the years. While some of the legacy data from these systems still need to be cleaned up, the new system should be fully operational within six months. "TechTracS could become the model of a government technology transfer system," Barbarash says. REVENUE ENHANCER NIH consistently leads all federal agencies in licensing income. In fiscal 2001, NIH received $46.1 million in royalties and fees, more than twice the amount of the next highest agency, the Department of Energy (DOE), at only $21 million. In fiscal 2001, NIH granted $14.8 billion in extramural research and $3.1 billion for intramural research. NIH and seven other federal agencies that sponsor scientific research have come under recent scrutiny for failing to comply with federal regulations by not submitting reports on their technology transfer activities to the Office of Management and Budget (OMB).1 The reports, required by the Technology Transfer Commercialization Act of 2000, were to have been included in the agencies' budget requests for fiscal year 2003, which were submitted to Congress in February 2002. Required information included technology transfer activities, plans, and statistics on patents and licensing. But the agencies were late, some by more than half a year, according to the General Accounting Office (GAO), the investigative arm of Congress. In a recent report,1 GAO examined nine federal agencies that had internal research budgets of at least $500 million in fiscal 2001. These agencies generated a combined total of 3,676 invention disclosures, were granted 1,585 patents, and took in $74.5 million in licensing revenues. In addition to NIH, the agencies included NASA, DOE, the Agricultural Research Service (ARS), the National Oceanic and Atmospheric Administration, US Geological Survey, and the Army, Air Force, and Navy. Of the nine, only the ARS (with $3 million in licensing royalties and 76 patents received) submitted its information on time. While the others eventually submitted their reports, some turned out to be "incomplete, contained statistics that were inconsistent or inaccurate, and differed in the data elements used to compile certain statistics," GAO reported. Even if all the departments had submitted their reports on time, OMB didn't have procedures in place to accept and incorporate the information in the budgets, GAO found. GAO recommends that the Commerce Department clarify the guidelines for information to be submitted and that OMB develop a better system to collect the materials. These problems were largely due to confusion. "This was the first year it was being done," says John P. Hunt Jr., one of the principal GAO auditors. "We think it will be better in future years." Ted Agres (tedagres@lycos.com) is a freelance writer in Washington, DC. 1. Office of Government Accounting, "Intellectual property: Federal agency efforts in transferring and reporting new technology," October 2002, available online at www.gao.gov/new.items/d0347.pdf.

Getting Patents on Track at NIH

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