Poised for a patent change
by Ross Boettcher, Omaha World-Herald
The plan to dramatically shift the U.S. patent system is prompting mixed reactions from Midlands companies and universities preparing for the changes.
After President Barack Obama signs into law the America Invents Act — the first major patent system overhaul in nearly 60 years — the country’s system will flip from a first-to-invent to a first-to-file system, bringing the U.S. in line with most other nations around the world.
For those who aren’t scientists, intellectual property attorneys or inventors, here’s what the legislation passed by Congress on Thursday means:
Under first-to-invent, entrepreneurs and inventors had a one-year grace period to determine whether their inventions were worth filing patents on. During that time, they could meet with investors or corporate partners and get a better understanding of how valuable their invention might be. If the idea leaked to another inventor or company and it filed a patent first, the initial inventor would have an opportunity to prove that he was the original inventor by keeping logs that prove when the idea was born.
Under the America Invents Act, the patent goes to the first inventor or company to file for an idea or product even if not the first to conceive it.
The new system is aimed at relieving a backlog of patent filings, curbing costly patent litigation and stimulating innovation.
Officials at some Midlands businesses that are heavily tied to patented technology, ideas and products said they’re leery that the new law could favor large corporations and change the way small companies and inventors innovate and assess whether their creations are worth patenting.
“The read that we have is that the first-to-file is going to force companies to file a lot quicker than you normally would. And maybe more often,” said John Gustafson, president and chief executive of Prairie Ventures, a private Omaha-based holding firm with operating companies in publishing, telemedicine, medical technology, business intelligence, staffing and social networking.
“We’re going through and reviewing our (intellectual property) portfolio and evaluating what filings we may want to accelerate instead of waiting until the end of the one-year period,” Gustafson said.
Ryan Grace, a patent attorney who represents Omaha-based ConAgra Foods Inc., said large companies are positioned to take advantage of the first-to-file system because they have more money to spend on filing more patents more often and larger legal teams to help handle that volume increase.
But some small firms and individual inventors, Grace said, will thrive in a first-to-file system because they weren’t properly documenting the development of their inventions under the first-to-invent system, making it impossible to prove that they were the first.
“To them, it was a first-to-file system before,” Grace said.
Other business officials agree that the changes overall improve the system.
Nebraska’s largest patent-holder, with 80 patents secured from 2006 to 2010, Lincoln’s J.A. Woollam Co., takes a big-picture perspective and says the United States is simply falling in line with the rest of the world.
“My personal belief is that it will change the way we file (patents) for sure and what we disclose and don’t disclose,” said Greg Pribil, an engineer at J.A. Woollam, which develops spectroscopic ellipsometer technology for testing materials with light.
“But as far as the grand scheme of things, I don’t think we’re too concerned. Considering that it’s (first-to-file) everywhere else, we already have to deal with that.”
Connie Ryan, the president of Streck Labs, which produces clinical laboratory products and received 39 patents from 2006 to 2010, said Streck has long supported the first-to-file system because it will streamline the patenting process and cut down on expensive litigation.
“We’ve believed in it for a long time,” Ryan said. “All the rest of the world is first-to-file. Only the U.S. is first-to-invent.”
Streck Labs, Ryan said, has spent millions of dollars on litigation involving patent infringement. In 2002 and again in the past year, Streck went to federal court to protect its patents. One case was settled by a California company for a reported $39 million plus royalties. In the second case, a jury decided in Streck’s favor.
Pioneer Hi-bred, the international seed company headquartered in Des Moines, also thinks the legislation is an improvement over the existing law.
“While it is not perfect, we believe it better aligns the U.S. with international patent systems,” a company spokeswoman said in a statement. “Ultimately, improvements like this will help encourage innovation and job growth.”
Some other large, patent-holding Midlands firms have been largely silent on the issue. A spokeswoman declined to comment for Atlanta-based payment processing giant First Data, which has significant operations in Omaha. A spokesman at West Corp., the Omaha-based provider of voice- and technology-based business outsourcing services, also declined to comment.
Many of the nation’s large companies — including Apple, Microsoft, IBM, Google, General Electric and Johnson & Johnson — supported passage of the America Invents Act.
The U.S. Chamber of Commerce, the United Steelworkers and the Association of American Universities also favor the change.
Much of the debate in the six years it took to pass the patent revisions centered on issues related to money.
Because of inventors needing to file more patents frequently under the first-to-file policy, Nita Lovejoy, associate director of the Iowa State University research foundation, expects more of the university’s budget to be allocated toward patent filing. Typically, Iowa State spends between $800,000 and $900,000 on patents. When the bill becomes law in 18 months, Lovejoy expects that number to exceed $1 million.
Lovejoy said the updated system could cause some problems for universities to find corporate sponsors to back their inventions because it’s critical that information about the invention or idea not leak into the wrong hands. “There’s going to be more questions about value of what we have.”
But for the most part, Lovejoy said, the results will be positive for ISU.
“We are fortunate that we’re self-supporting and have some funds to be able to meet these challenges, but we don’t want to frivolously start filing on everything,” Lovejoy said. “I’m sure we’ll be doing some analysis of how we’re reviewing inventions as they come in.”
Michael Dixon, president and CEO of UNeMed Corp., which helps bring inventions from the University of Nebraska system to market, said the passing of the reform will be a boon for the U.S. Patent and Trademark Office as long as the money gained by patent fees are kept within the patent system. The money, he said, is expected to hire more patent office employees, update software programs and increase the number of satellite offices across the country.
“I think the biggest reason that most universities are in support of this is the fee diversion,” Dixon said. “The patent and trademark offices have been used as a piggy bank for years, funding other programs. By now allowing them to keep the fees they charge it will help clear out the backlog of patents in the system. That’s the biggest benefit to the reform, for us.”
Sen. Chuck Grassley, R-Iowa, was a longtime supporter of patent reform, primarily because he sees it eliminating patents that allow companies to find loopholes in the tax system or hold exclusive rights to use loopholes.
“More and more legal tax strategies are unavailable or more expensive for more and more taxpayers,” Grassley said in a statement after the bill’s passage. “We have to protect the right of taxpayers to have equal access to legal tax strategies.”
The Senate passed a final version of the bill on Thursday with rare bipartisan support. Nebraska Sens. Ben Nelson, a Democrat, and Mike Johanns, a Republican, and Iowa Sen. Tom Harkin, a Democrat, joined Grassley in voting for final passage. The bill had passed the House in June.
Obama signaled his support most recently in his Thursday night address about job creation, calling the bill “the kind of action we need.”
“You passed reform,” he told Congress, “that will speed up the outdated patent process so that entrepreneurs can turn a new idea into a new business as quickly as possibly.”
Contact the writer:
402-444-1414, ross.boettcher@owh.com
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Gov. Heineman signs Talent & Innovation Initiative Bills into law
LINCOLN, Neb. (May 24, 2011)—Governor Dave Heineman today signed the final measures of a four-part legislative package into law. The Talent and Innovation Initiative was a 2011 legislative priority for the Governor and introduced by several State Senators on his behalf. The initiative is aimed at advancing business innovation and strengthening workforce recruitment efforts in Nebraska.
“The Talent and Innovation Initiative is about enhancing technology and innovation, and growing and attracting new, technology-focused companies to Nebraska,” Gov. Heineman said. “It puts a laser-like focus on growing Nebraska’s innovation economy. With this initiative, Nebraska has one of the strongest public policy strategies in place to advance business recruitment and development.”
Based on 2010 recommendations made in a comprehensive review of Nebraska’s economic climate, the Talent & Innovation Initiative was developed to better leverage existing funds and enhance momentum in developing industries positioned to benefit from technology and innovation. Programs contained in the bills will be implemented by the Nebraska Department of Economic Development.
LB 386, the Nebraska Internship Program, introduced by Sen. Lavon Heidemann of Elk Creek, takes effect June 1. It is a partnership with Nebraska businesses to create new internship opportunities for college and university students. Funded with $1.5 million a year in job training funds, and matched by eligible companies, the program will create opportunities for 500 to 750 juniors and seniors studying at four-year institutions or students in their second year at a Nebraska community college to gain job experience.
Awards will be made on a first-come, first-serve basis to companies creating new internship opportunities, which are capped at 10 per business. Internships will pay at least minimum wage and range from 12 week to year-long programs.
LB 387, the Business Innovation Act, introduced by Sen. Galen Hadley of Kearney, intended to help businesses develop new technologies to enhance quality job opportunities in the state. It will provide competitive grants for research at Nebraska institutions, new product development and testing, and help expand small business and entrepreneur outreach efforts.
It will expand grant opportunities within targeted industries to help businesses providing matching funds with prototype development, commercialization and applied research in the state and provide assistance for microenterprise projects. The law takes effect Oct. 1.
LB 388, the Site & Building Development Fund, introduced by Sen. John Wightman of Lexington, takes effect Oct. 1 and is intended to help increase industrial and commercial sites available and ready for business development. Communities will provide matching funds toward projects that can involve demolition, new construction and rehabilitation. State funding will be focused on land and infrastructure costs with 40 percent of funding available to non-metro areas.
LB 389, the Angel Investment Tax Credit, introduced by Sen. Abbie Cornett of Bellevue, is effective for the current tax year. It encourages investment in high-tech and other startup enterprises in Nebraska by providing refundable state income tax credits to qualified investors investing in qualified early-stage companies. Capped at $3 million annually, the program requires a minimum investment of $25,000 for individuals and $50,000 for investment funds. Eligible small businesses must have fewer than 25 employees, with the majority based in the state.
Additionally, the Governor signed LB 345, the Small Business Innovation Act sponsored by Sen. Danielle Conrad of Lincoln, which provides additional tools and technical assistance for entrepreneurs across Nebraska.
Gov. Heineman said, “I want to thank the many senators who supported these proposals, the business community and other private sector leaders. This is about making investments that will develop new career opportunities in innovative and technologically-advanced sectors.”
KUDOS award to Valerie Gunderson
OMAHA, Neb. (May 20, 2011)—On behalf of the Board of Regents, UNeMed Business Manager Valerie Gunderson was presented a KUDOS award by Chancellor Harold Mauer.
Her supervisor and nominator, James Linder, M.D., executive director of the UNeMed Corporation and professor of pathology and microbiology, said, “As the ‘administrator’ of UNeMed (the technology transfer office for UNMC), Val has helped to grow the unit during periods of recruiting and staff realignment. She has helped communicate the mission of UNeMed to our internal customers (faculty and staff) and to our external partners (UNL, UNO, Creighton University, the Omaha Chamber of Commerce and private business). These interactions are carried out with the highest quality work and represent UNMC in an outstanding manner.” Dr. Linder also said, “Val is known to virtually all administrative personnel on campus because of the years of service she has provided at UNMC. From implementing the Electronic Residency Application Service for all medical students to creating the awareness among faculty of grant transfer opportunities, Val is part of the administrative bedrock that allows UNMC to accomplish its mission.”
Another nominator, Michael Dixon, PhD, director of UNeMed, said, “Val has the unique ability to bridge the scientists, lawyers, business professionals, paralegals, marketing specialists and administrative associates in our group to ensure that the ‘job gets done and on time.’ She also always knows the right person or department to contact for anything.”
Today, Valerie Gunderson has brought her husband, Scott Gunderson and her direct supervisor and nominator, Dr. Jim Linder.
UNeMed hosts Midwest Technology Exchange on May 8-10
OMAHA, Neb. (May 6, 2011)—Over the past few years there has been an increasing discussion that commercialization of university-based discoveries is essential to help the US recover from the latest economic recession. As noted by Secretary of Commerce, Gary Locke, “How well America moves ideas out of the research lab and into the marketplace will determine whether we remain the most competitive and vibrant economy in the world.”
As any third grade geography teacher will tell you, the Midwestern states comprise a large percentage of the US land mass. What you won’t find in that geography book is that there is also a considerable amount of medical research occurring in this corridor. With the majority of biomedical commercialization resources and venture capital located on the two coasts, it is essential that the Midwest collaborate to leverage resources effectively.
On May 8-10 in Omaha, NE, the Midwest Technology Exchange (mTechx) will gather an internationally-renowned panel of speakers to help lead a collaborative conference focusing on the development and commercialization of Midwestern technologies which have been developed in collaboration with the U.S. Army Medical Research and Materiel Command (USAMRMC) and the Telemedicine and Advanced Technology Research Center (TATRC). Confirmed speakers include, Richard Bendis of Innovation America, Steven G. Burrill of Burrill & Company, Lesa Mitchell of the Kauffman Foundation, Rohit Shukla of Larta, and Jim Jaffe of NASVF. See the bios of all the speakers here.
This conference will be an inclusive two-day meeting that will bring together Army funded principal investigators in the Midwest region, technology transfer experts, company representatives, venture capitals, economic developers, military and civilian experts to discuss and collaborate on advanced methods to achieve tangible commercial success and develop an infrastructure to help advance technology development and commercialization of Army funded projects in the Midwest.
For more information on mTechx, visit our website www.mtechx.org or download MTECHX May 8-10, 2011.
Licensing Executives Society seminar on IP and licensing is April 16
OMAHA, Neb. (April 10, 2011)—Do you want to know more about how to protect your ideas and inventions? Are you curious about how to move an idea to the marketplace? On April 16, 2011 UNeMed and the Licensing Executives Society (LES) will host a one day seminar, “Intellectual Property and Licensing Basics” in the Durham Research Center on the UNMC Campus in Omaha.
This course is designed for anyone interested in developing a fundamental understanding of Intellectual Property (IP) commercialization, including students, faculty researchers, entrepreneurs, postdocs, business development professionals and business owners. Those who attend will gain a practical understanding of core IP and licensing concepts from both the business and legal perspectives, which will help them to understand and participate effectively in the process of protecting IP and facilitating its commercialization.
In today’s innovation economy, protection and commercialization of IP is the best way to create high growth/high value companies. IP is used as a means to spur business development, job creation and to help secure a competitive advantage.
The course is taught by both legal and business experts who leverage real-world examples, interactive exercises and valuable information sharing between instructors and fellow students to cover the material in a very dynamic way.
The course covers five areas:
- IP Basics: patents, trademarks, know-how, and trade secrets
- Smart strategies for creating, organizing, managing and securing IP assets
- Bringing IP to market
- Royalties and ideas for maximizing IP value
- A licensing game with an interactive deal negotiation
This is part of LES’ popular Professional Development Series. LES is a professional society comprised of nearly 5,000 members engaged in the transfer, use, development and marketing of intellectual property.
This course has been approved for 7.5 hours of CLE credit. Registration includes breakfast, lunch and a networking reception. And, this is a particularly good opportunity for students who can register for only $35 and receive a free one-year membership to LES (USA & Canada). For more information about the seminar: LES Seminar 4.16.11.
For more information on the course or to register visit www.lesusacanada.org/newlicensing/apr11.
UNMC brings in Research Funding
by Leslie Reed, Omaha World-Herald
OMAHA, Neb. (March 12, 2011)—University of Nebraska Medical Center leaders appear to have found the magic formula to expand federally funded research.
They built state-of-the-art research towers in midtown Omaha and stocked them with sophisticated laboratory equipment. The facilities helped attract more top-notch scientists. Those scientists, in turn, helped win more federal grant dollars. Research funding at the medical center has increased an average of nearly 27 percent each of the past three years, Vice Chancellor Tom Rosenquist told the NU Board of Regents Friday.
“It’s no secret — we just have a strategic plan to utilize our best research space to recruit and retain the best scientists,” he said in an interview. “We make this a desirable place for people to come and to stay and to do their research.”
He credited researchers like Ken Bayles, wooed from the University of Idaho five years ago, who does groundbreaking work on antibiotic-resistant bacteria. Howard Fox came three years ago from the Scripps Research Institute in La Jolla, Calif., to study the chronic effects of HIV on the nervous system. Not all of the big grant generators are new recruits, however. Irv Zucker has been on the UNMC faculty since 1971, studying congestive heart failure.
“I think facilities are critical to attracting top faculty,” said UNMC Chancellor Harold Maurer. “We’ve got great core laboratories and great infrastructure to allow research. If you have all that, you have the ability to attract the best and the brightest.”
UNMC researchers have been able to capture a growing share of National Institutes of Health funding even though NIH funds are increasingly limited, Rosenquist said. UNMC has outperformed its peer group institutions. Over the past five years, NIH research funding at the medical center has grown 35.5 percent. The University of Kansas Medical Center, also with more than 30 percent growth, is the peer that comes the closest. But the remaining eight peer institutions had less than 10 percent growth. Four received fewer NIH dollars in 2009 than they did in 2005.
With $91.6 million in federal research grants for the 2009-10 fiscal year, UNMC is closing the gap with its sister campus, the University of Nebraska-Lincoln, which reported $94.3 million in federal research funding for the same time frame.
It’s not that UNL is slacking off. It has increased its research effort by an average of nearly 11 percent a year for over the past three years.
“We should be proud of these two campuses, they’re outcompeting their academic peers,” said Richard Hoffman, associate vice president for academic affairs and research, in the NU Provost’s Office.
In 2007-08, UNL received $72.3 million in federal research grants, while UNMC collected $43 million.The N U system now collects more than $300 million a year in outside support for its research, NU President J.B. Milliken said. The bulk of that funding comes in the form of federal grants awarded to UNL and UNMC faculty researchers. Both campuses have exceeded goals set by the regents for growth in federal research dollars. It may be challenging to maintain that momentum, however.
Matt Hammons, NU’s director of federal relations, warned that federal budget cuts likely will make the competition for federal research dollars more intense in coming years. “We are really entering a new era,” he said. In addition, neither UNMC nor UNL have given faculty a general pay increase during the past three years, because of state budget cuts.
As of 2009-10, UNL average faculty salaries were 4.6 percent lower than the average paid at 10 comparable institutions, such as Iowa State, Iowa, Purdue and Ohio State. UNMC faculty salaries, not including clinical staff, were 7.4 percent lower than nine comparable institutions, such as Iowa, Oklahoma, Kansas and the University of Illinois-Chicago.
Milliken told the regents that NU will make an effort to boost faculty salaries next year, even though it does not expect to receive increased funding from state government. He said that may require budget cuts elsewhere in the system.
Maurer told board members that improving salaries is the Med Center’s “No. 1” budget priority.
“People are coming to me to talk about it,” he said. “People are going to leave unless it’s addressed.”
UNeMed gains record licensing revenue with tenfold increase
From the December 10, 2010 issue of the Midlands Business Journal. Reprinted with permission.
UNeMed’s work to see ideas and research become products and solutions that may be sold and used to advance health care is shown with the likes of Vireo Systems or Virtual Incision.
Vireo is a manufacturer of nutritional supplements with a brick and mortar presence in Plattsmouth, Neb., which has been an economic engine generating jobs and even overseas business. Virtual Incision Corp. is set to make its remotely controlled surgical tools available to health care practitioners. These research initiatives-turned-viable businesses represent the seven of every 10 patents that go on to be licensed — and in turn available to industry — thanks to UNeMed’s support.
“One of the central criticisms of any technology transfer is to patent things that are not available to industry,” said CEO Dr. James Linder. But in this case, he said, 70 percent of all the ideas are later commercialized and “sent out the door” to be used by the greater society.
This is in contrast to the industry average for programs comparable to UNeMed, which focus on taking intellectual property out of the lab and bringing it to the marketplace.
“The national average is 50-50,” said President Michael Dixon, PhD As such, the idea has just as much of a chance of never being broadly used, as it does of being utilized by industry; however, the odds are in favor of success on this front, with regard to UNeMed.
Specifically, Dixon said, as of mid- November there were 543 patents and patent applications. Of those, 377 are licensed.
“That means a company is working to develop it into a product,” he said.
Dixon said the total number grows by some 15 to 25 patents each year. With regard to actual license agreements, UNeMed expects roughly 15 to 17 new ones every year. Last year, he said, it was on the higher end of the scale at 17. These new licensing agreements also represent a twofold increase over 2006 and 2007 figures, according to Dixon.
“Just looking at last year, our licensing revenue was $2.1 million, which was the most we’ve been able to generate with tech licensing ever,” he said, noting this represents a tenfold increase in the past four to five years.
Linder attributes such boosts directly to Dixon and his team’s interfacing with industry.
“We try to be an inventor-friendly office, as well as an industry-friendly office,” he said. “We want to see the technology put to use, and we’re not difficult to work with.”
For example, Linder noted that in addition to listening to one’s needs, technology may be utilized for some time before full terms kick in, which helps to develop a relationship with what he coins a “mutually beneficial arrangement.”
UNeMed has also got a little help from some external factors.
“The country’s been in an economic downturn for a couple of years now and that’s caused a lot of job loss, and companies are looking for ways to get back on track,” Linder said. “There is more of a national emphasis on looking into universities and trying to understand there is technology there to try to utilize.”
In fact, Dixon referred to the $130 million in research activity at the med center, which shoots up to more than $350 million when combined with other research institutions, like Creighton University.
In turn, Linder said the organization’s team has worked hard to develop relationships and collaborate with other entities, such as the Peter Kiewit Institute. Linder is also on the board of the Halo Institute; based out of Creighton, it seeks to transform ideas into viable business in part through the guidance of existing business professionals.
UNeMed is also focusing on fostering relationships that enable long-term research to be funded, in a way that flies in the face of traditional funding, through the likes of NIH grants.
The UNeMed team supports entrepreneurs in other ways as well, recently judging three business plan competitions in one week. It’s also working to solidify plans for a technology commercialization and economic development conference, with a focus on government-related tech transfer, in March.
It’s expected that more than 100 universities and 30 companies hailing from at least 17 states will be on hand.
UNeMed and Biomedical Research in Nebraska
The Reader interviews UNeMed President Dr. Michael Dixon who discusses the role that UNeMed plays in the transfer of Biomedical innovations and the research environment in Nebraska. (Link to full story in The Reader.)
Healthy Economy
by Steve Brewer
Billions of dollars go into medical research, and billions can eventually be made from the resulting products.
Unfortunately, there is often a large gap between an idea and its profits. This is called the “valley of death” in the health care field, and it’s UneMed’s job to bring local ideas through that valley to the other side.
UNeMed is a division of the University of Nebraska Medical Center, transferring intellectual property from the laboratory to the marketplace and helping to build a bioscience sector in Omaha and Lincoln. UNeMed is funded by UNMC, and from royalties generated from licenses. UNMC researchers brought in more than $115 million of funding during the 2009-10 fiscal year, from around 200 funded projects. According to UNeMed president Michael Dixon, all inventions stemming from that research are submitted to his division and evaluated for commercial potential.
“We look at two things,” Dixon says. “First, can we get intellectual property (IP) protection? We utilize sophisticated search techniques, and have a patent attorney in-house. If there is not IP available, we probably cannot invest in it.”
The second factor is the potential market for an invention, and that is more difficult to measure. UNeMed’s 12 full-time employees and six interns talk with contacts in the industry and investigate competitive products.
“Is this quicker, faster, better?” Dixon says. “Do we have an advantage? We try to assess the possible value.”
“We license the technology or start a company that licenses it,” Dixon says. “We have about 120 technologies available for licensing right now, and we do between 12 and 18 new licenses per year. Some of these are for new technology, and some for older technology.”UNMC researchers submit about 60 inventions to UNeMed annually, and Dixon’s staff applies for IP protection on about half of those. Dixon estimates that about five inventions per year eventually find a company interested in developing them.
Recent examples include PCR-related technology licensed by Streck, microbial isolates licensed by Sanofi Pasteur and airway management technology licensed by Truer Medical.
“Even if they (private companies) are not interested in an asset we have, perhaps there are some synergies and that allow productive research to go on. We want to bring in that corporate money to go along with government research money.”
Dixon says corporate sponsorships are typically in the range of $1 to $2 million, not including the sponsorship of clinical trials at UNMC.
UNeMed was founded in 1991, and Dixon says it was initially a struggle to persuade companies on the coasts that world-class research was being done in Omaha.
Dixon has a PhD in molecular biology from UNMC, and has worked for UNeMed since 2003. He was director of intellectual property and then chief operating officer before being named president last year.
As UNMC has become more prominent it has become easier to find potential business partners.
“UNMC is more on their radar now,” Dixon says. “We get into conversations quicker without having to describe where Omaha is. Now, we have companies coming to talk to us and they know about the work we are doing.”
Dixon says research by UNMC’s Center for Drug Delivery and Nanomedicine draws interest from many potential partner companies; so has work on Alzheimer’s and Parkinson’s diseases by Dr. Howard Gendelman.
There is a long timeline between a medical invention and the eventual financial payoff, and Dixon says one of UNeMed’s functions is to keep the momentum going through the slow times.
“Just to illustrate the timing involved, we are working with a start-up called Versalion right now on a delivery polymer for arthritis,” he says. “It shows more efficacy and fewer side effects, and has the ability to localize joints that are inflamed.”
This technology was presented to UNeMed three years ago by Dr. Dong Wang. Dixon says that makes it an “early stage” project.
“Assuming everything goes as well as possible, it could still be another seven to eight years before anything hits the market,” he says.
Versalion is talking to venture capitalists and hopes to close a Series A financing round soon.
UNeMed’s work is slow and can be costly, but Dixon believes it provides a big economic return for the area. He said 30 local jobs are created for every million dollars of research grants that UNMC brings in. The resulting technologies can create spin-off companies or persuade out-of-state companies to open offices here.
Dixon acknowledges bioscience is not yet one of the area’s premier economic sectors, but he believes that is changing. The nonprofit think tank Battelle recently assessed economic opportunities in Nebraska, and its report identified bioscience as one of the state’s strengths for the future.
“Between UNMC, Creighton Medical Center, Boys Town National Research Hospital, and people in Lincoln, you have a very strong corridor of bioscience,” Dixon says. “There are big research dollars, and very competitive grants being won. Omaha and Lincoln don’t really know about all of the biomedical research that’s going on.”
Virtual Incision completes $2 million Series A financing
The University of Nebraska technology based company Virtual Incision has completed their Series A financing round. (Link to full story at Marketwire.com)
Proceeds of Financing Will Be Used for Development of In Vivo Single Incision Laparoscopic Robotic Surgical Devices for Abdominal and Pelvic Procedures
LINCOLN, NE–(Marketwire – October 29, 2010) – Virtual Incision Corporation, a developer of in vivo robots for use in single incision laparoscopic surgery, today announced it has completed a $2 million Series A financing led by PrairieGold Venture Partners and Bluestem Capital. The Company also announced the establishment of its corporate headquarters in Lincoln, Nebraska, home to the University of Nebraska out of which the technology is exclusively licensed.
Proceeds from the financing will be used to develop advanced prototypes of the Company’s robotic surgical platform. The Company has engaged two experienced contract manufacturers — Honeybee Robotics and Devicix — to assist in the continued development of the robot and user interface, as well as Peter Hinchliffe, a medical device senior executive with over 17 years of experience managing multiple business areas at USSC (now Covidien) and Datascope (now MAQUET) who holds over 70 issued US patents.
The development of Virtual Incision’s technology is an important step in the evolution toward scarless surgical procedures performed on a robotic platform. Virtual Incision’s robots will offer a number of advantages. Insertion can be done through a single incision in the navel and requires just a few minutes. The platform will not require a dedicated operating room or other specialized infrastructure. Virtual Incision robots will be able to perform multi-quadrant surgery with quick, simple in vivo repositioning during a procedure while maintaining stable fixation. The technology utilizes existing tools and techniques surgeons are already familiar with, and the platform will be significantly less expensive than existing robotic alternatives.
The initial application of the Company’s technology will be for colon resection procedures. Currently, greater than eighty percent of these procedures are done “open,” that is, with a large incision down the center of the peritoneum. Open procedures have higher rates of morbidity, require longer hospital stays and leave larger scars than laparoscopic procedures. However, colon resection has not been widely adopted laparoscopically due to the complexity of the procedure. Because Virtual Incision’s robotic platform allows for multi-quadrant capability through a single port with stable fixation, the Company believes its technology will enable wider adoption of laparoscopic surgery for colon resection procedures, thus improving patient outcomes. Over time, the Company believes that its technology will have applicability across a number of surgical procedures.
The Company was founded by two University of Nebraska professors. Dr. Shane Farritor is a professor in the Department of Mechanical Engineering. Prior to coming to UNL he worked in the Field and Space Robotics Laboratory at the Massachusetts Institute of Technology and the Unmanned Vehicle Lab at the C.S. Draper Laboratories. He received his Ph.D and Masters in Mechanical Engineering from the Massachusetts Institute of Technology. Dr. Dmitry Oleynikov is an Associate Professor of Surgery, Joseph and Richard Still Faculty Fellow in Medicine, and Director of the Center for Advanced Surgical Technology at the University of Nebraska Medical Center. Dr. Oleynikov received his medical education at the Albert Einstein College of Medicine, Yeshiva University in 1994. He completed his residency at the University of Utah Medical Center and served as an instructor and senior fellow at the Center for Videoendoscopic Surgery at the University of Washington School of Medicine in Seattle. His current collaborative, multidisciplinary research interests include robotic surgical technology, educational simulation and clinical outcomes research.
“We are pleased to receive institutional funding at this critical time in the development of our robotic surgical platform,” said Dr. Farritor. “The University has been an excellent place to prototype and test multiple designs and concepts for our robotic technology, and we are excited to take this technology to the next level with our development partners and investors.”
“Virtual Incision is in a unique position to both change the way certain surgical procedures are performed through technological advances, as well as reduce healthcare costs by converting expensive open procedures to laparoscopic techniques,” said Mike Jerstad, partner of PrairieGold Venture Partners and Chairman of the Board of Virtual Incision. “Because the Company’s technology is simple to use and employs existing tools and techniques, we believe adoption of this innovative technology will be brisk.”
About Virtual Incision Corporation
Virtual Incision Corporation is a developer of in vivo robotic surgical devices that can be inserted through a single incision in the navel. Virtual Incision robots will be able to perform multi-quadrant surgery with quick, simple in vivo repositioning during a procedure while maintaining stable fixation. The technology utilizes existing tools and techniques surgeons are already familiar with, and the platform will be much less expensive than existing robotic alternatives. Headquartered in Lincoln, NE, Virtual Incision is backed by PrairieGold Venture Partners and Bluestem Capital. For more information, please visit www.virtualincision.com.
2010 Innovation Week
Calendar of Events
Monday – October 4th
** Kick off to Innovation Week
8am – 10am ~ DRC 1 Atrium ~ Meet the UNeMed Staff
FREE T-shirts, breakfast snacks & Jo-On-The-Go Espresso Bar
** Science on Tap ~ “Portraits of Care”
6:00pm – 7:30pm ~ Kaneko Center ~ 1111 Jones Street, Omaha
UNMC Clinical & Research Community
Refreshments & hors d’oeuvres will be sponsored by UNeMed
R.S.V.P. required to unemed@unmc.edu
Tuesday – October 5th
** Dr. David M. Brown of miRNA Therapeutics
Eppley Science Hall Amp ~ 1pm – 2pm
“Therapeutic Application of a Tumor Suppressor microRNA”
Thursday – October 7th
2010 Innovation Awards Ceremony & Reception
4pm ~ Awards Ceremony in the DRC Auditorium
5pm ~ Reception in the DRC 1 Atrium
Announce iPad drawing winner! (MUST BE PRESENT TO WIN)
Friday – October 8th
VA Presentation, “Technology Transfer at the VA”
Joe Runge, Business & Development Manager, UNeMed Corporation
9am – 10am – Education Conference Room
VA Nebraska-Western Iowa Health Care System, 4101 Woolworth, Omaha
**Register to win an iPad at the Oct. 4th & 5th events or at a UNeMed Office
location nearest you ~ DRC-1 Office Suite 1007 or ANX14 Office Suite 3000
UNeMed advances the ball on CEE enforcement front
OMAHA, Neb. (Aug. 6, 2010)—UNeMed Corporation has made progress in its efforts to enforce its intellectual property directed to creatine ethyl ester (CEE) used as a nutritional supplement. On April 1, 2010, the United States International Trade Commission issued exclusion and cease and desist orders against the four remaining respondents in Certain Products Advertised as Containing Creatine Ethyl Ester, 337-TA-679. The period of Presidential review of those orders expired on May 31, 2010 with no modifications being made to those orders. Thus, the respondents are no longer permitted either to import their products falsely advertised as containing creatine ethyl ester, or to sell any such products that have already been imported into the United States.
UNeMed has also concluded a license agreement with Bio-Engineered Supplements & Nutrition, Inc. (BSN) of Boca Raton, Florida for all of UNeMed’s worldwide issued patents directed to creatine ethyl ester. BSN is a major supplier of nutritional supplements in the United States and around the world.
Finally, UNeMed continues to pursue its remedies in New Zealand for patent infringement against Punch Supplements, an online seller of nutritional supplements in that country. UNeMed is evaluating its options to pursue similar remedies around the world against other, similar companies.
UNeMed Corporation is the technology transfer leader for the University of Nebraska Medical Center. UNeMed has a diverse technology portfolio that addresses significant medical and clinical needs in areas such as Therapeutics, Diagnostics, Medical Devices, Research Tools and Software. For further information regarding UNeMed and its patent portfolio, please contact Dr. Michael J. Dixon (mdixon@unmc.edu).
UNeMed deal with Eli Lilly puts UNMC in PD2 Program
OMAHA, Neb. (May 5, 2010)—UNMC is now a registered participant for a new Phenotypic Drug Discovery (PD2) program. Eli Lilly and Company, one of the world’s largest pharmaceutical companies, has launched the new drug discovery initiative created to identify new molecules that display activity in relevant disease models and that can serve as a foundation for the development of research collaborations between Eli Lilly and external researchers for the development of new therapeutic molecules.
The program allows UNMC researchers to submit potential therapeutic compounds for phenotypic drug screening. Researchers can submit compound structures by completing a New Invention Notification (NIN) through the UNeMed office. NIN forms are available on line at billowy-sleep.flywheelsites.com. The NIN will then be reviewed, by the UNeMed staff and if approved the researcher will receive an affiliation code to submit the compound(s) on line to Eli Lilly and Company.
If selected by Eli Lilly, the compounds will be screened for activity in five phenotypic assay modules: Alzheimer’s disease, Cancer (cell cycle arrest), Cancer (Anti-Angiogensis), Diabetes, and Bone Formation. Promising results may lead to a license agreement or collaboration between Eli Lilly and UNMC to further develop the drug molecules. Any UNMC researchers, who are interested in participating in this program, should contact Licensing Specialist Matt Boehm, PhD, mboehm@unmc.edu or 9-2166 in the UNeMed office for further details.
“The PD2 program provides a unique opportunity for UNMC researchers to gain valuable information about their compounds. This initiative also gives us a potential route to develop collaborations with a major pharmaceutical company,” said Dr. Boehm.
PD2 Website for more detailed information:
NU research translates into business opportunity
FROM THE OMAHA WORLD-HERALD
It’s all academic, but that doesn’t mean it can’t make good business sense.
When Omaha’s Streck Laboratories acquired the assets of Philisa Technology Corp., it was just the latest example of scientific research in the University of Nebraska system translating into real-world business opportunity.
Hendrik Viljoen, a professor in chemical biomolecular engineering with dual appointments at the University of Nebraska-Lincoln and the University of Nebraska Medical Center, was one of the owners of Philisa, along with Joel TerMaat, a doctoral candidate in chemical engineering at UNL, and Scott Whitney, a postdoctoral fellow in chemical engineering at UNL.
Viljoen called the work of UNeMed, the University of Nebraska Medical Center’s “technology commercialization office,” vital in helping his fledgling company succeed. He also credited NUtech Ventures. That organization is designed to raise money, write business plans and provide other help for startups built around NU research.
“When we started up, we basically just had ideas,” Viljoen said.
Michael Dixon, president of UNeMed, said UNMC has about $130 million in research currently being conducted, “and that generates a lot of new discoveries.”
“So … as we work with and develop the intellectual property associated with those discoveries, we try to find people who want to develop them commercially,” he said.
Dixon said UNeMed wants to see university research culminate in results that have real-world application and that produce revenue. “We’re a company trying to increase the economic value of the university.”
“This acquisition is important,” he said of the Streck-Philisa deal, “because we feel the technology will make it into the commercial marketplace and succeed.”
Viljoen said the product that attracted Streck’s attention is called a rapid PCR (polymerase chain reaction) thermocycler, “basically a device that enables you to make copies of certain specific regions of DNA.” It is useful for diagnosing diseases such as tuberculosis, among other applications.
Connie Ryan, president of Streck, said the rapid PCR thermocycler allows the company to continue to build presence in the molecular diagnostics market, which it recently entered with the creation of blood collection tubes for the preservation of cell-free DNA and RNA circulating in plasma.
“It’s new technology, and it gives us a new way to grow our business, and it’s clearly the future of clinical diagnostics,” she said.
Terms of the sale were not disclosed, but a portion of the proceeds went to UNeMed and NUtech Ventures, Viljoen said. That money is reinvested by the university into further research efforts.
“That’s our sole mission,” said David Conrad, executive director of NUtech Ventures.
Viljoen credited the business know-how of TerMaat, who now works at Streck as a project manager, as essential to Philisa’s success. He also said UNeMed and NUtech Ventures are doing a good job helping potential or new entrepreneurs.
Streck Laboratories became aware of Philisa after Ryan was approached by a friend who belonged to the Nebraska Angels, a group that explores early stage investment opportunities and start-up companies with ties to Nebraska.
“We thought it was such a great opportunity, not only because it was an innovative product and these are interesting, intelligent people to work with, but it’s Nebraska technology, developed at UNL and UNMC, and we were going to be able to keep it here,” Ryan said.
Conrad also was excited about keeping Philisa in the state. Viljoen and Whitney will serve as consultants to Streck.
“Not only was it a start-up that came out of the university and was operating in Lincoln but then the acquirer was also a Nebraska company,” Conrad said.
NUtech is emphasizing deals with Nebraska companies, in part so that more local jobs are created.
“There are several start-ups we’re working with in the pipeline that we hope go a similar path,” Conrad said.
Dixon estimated that UNeMed has developed seven to 12 products marketed commercially, with 35 to 40 more currently in development.
There are all sorts of upsides to the Streck acquisition, Dixon said, and not just for the principals and the university.
“It was a local company, and it was acquired by another local company, so it strengthened our local economy,” Dixon said. “We’re able to add jobs locally through the transfer of this technology into the commercial sector.”
He said the university-sponsored ventures need to be innovative and create business that will pull the state out of the economic slump.
That these companies have the potential to be bought and sold for millions of dollars means a lot to the local economy, Dixon said. “We’re very interested in helping to create as many high-growth companies as possible, based on technology.”
Ryan said it was exciting to see such great new technology coming out of UNL and UNMC.
“We’re hoping that it grows into a significant business,” she said.