Lab, researchers profit from inventions

December 16, 1994

By Jeffery Kahn, [email protected]

Technology transfer provides new technology, jobs, and growth to the private sector but it also pays benefits to LBL and its employees. This week, LBL Director Charles Shank handed out royalty checks to seven inventors whose work has been licensed to private industry.

Technology Transfer Department Head Cheryl Fragiadakis joined Shank in congratulating the recipients, saying they represented "the tip of the iceberg" in terms of the Laboratory's growing technology transfer efforts, and the royalties likely to be received in the future.

Gisella Clemons, a retired researcher from the Life Sciences Division who was the first inventor to receive royalties based on an invention licensed by LBL, received her third annual royalty check. Clemons invented a method of producing an anti-serum that can be used to measure erythropoietin, a hormone produced by the kidneys that controls the production of red blood cells.

LBL licensed the technology to Diagnostics Systems Laboratories in Webster, Texas. The company makes some 10 different types of erythropoietin kits and components that are based on Clemon's invention, and already has sold thousands of units.

Energy and Environment Division researcher Greg Ward received a royalty check for his development of RADIANCE, lighting simulation software that has been licensed to Genlyte of Secaucus, New Jersey.

According to Technology Transfer Department licensing manager Viviana Wolinsky, RADIANCE aids lighting designers and architects by predicting the light levels and appearance of a space prior to its actual construction. Genlyte has incorporated this package into its Genesys software program, which is distributed to lighting designers.

Earth Sciences Division researchers Chin-Fu Tsang and Frank Hale received royalty checks for their development of a high resolution instrument/software package for characterizing groundwater contamination.

Colog Inc. of Colorado has licensed the process for use in the cleanup of contaminated sites. Termed hydrophysical logging, the technique is based on a new concept for measuring fluid flow. It allows characterization of groundwater problems more quickly, more cost effectively, and with higher resolution than current industry standards.

The Engineering Division's William Hearn and Issy Kipnis, along with visiting researcher Henrik von Der Lippe, received royalty checks for their development of a customized integrated circuit.

Advanced Photonics Inc. licensed the chip for use with its avalanche photodetectors. As part of LBL's work for the Superconducting Super Collider, Hearn, Kipnis, and von Der Lippe designed a chip that was readily customized to match API's avalanche devices. The circuit contains 16 ultra-low noise preamplifiers for use with API's new line of photodetectors.

From invention to payoff--how it works

Earning a royalty check at LBL is the result of a multi-step process that begins with an invention.

Technology Transfer Department (TTD) licensing manager Viviana Wolinsky says the process kicks off when an inventor files an invention disclosure statement with the LBL Patent Department. The Patent Department and TTD then jointly assess the invention, both in terms of the type of intellectual property protection possible, and the commercial viability of the invention. The two departments then choose the most promising candidates for commercialization.

Focusing on these high priority inventions, the Patent Department pursues a patent or other form of protection. After the Patent Department has filed for protection, TTD attempts to market the technology by negotiating a license with an interested company. Licensing agreements typically pay LBL an up-front fee as well as royalties based on future sales.

All income from the licensing agreement--fees and royalties--are split between LBL and the inventors. The amount of the fee that goes to the inventors is determined by a standard formula. Of the first $100,000 of net cumulative income (what remains after LBL's cost to patent and license the technology is deducted), 50 percent goes to the inventors and 50 percent goes to LBL. Inventors receive 35 percent of the next $400,000, and 20 percent of any additional income.