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ASSOCIATION OF UNIVERSITY TECH-NOLOGY MANAGERS’ recent study shows that technological advances developed from academic research pumped more than $33.5 billion into the nation’s economy and helped to create 280,000 jobs last year. The survey found that $24 billion in private and public support for research at the institutions resulted in issuance of approximately 3700 new patent licenses, a total of 385 new products and formation of 364 new companies to develop and market some of those products. The association estimates that licenses produced $725 million in income for the universities in 1998. Responding to the survey were 132 U.S. universities, 26 U.S. teaching hospitals and nonprofit research institutions, 20 Canadian institutions, and one patent management firm.

CALIFORNIA leads in the number of U.S. patents granted in 1999. For the period of January to June 1999, California was ranked first among states in number of patents awarded, according to the U.S. Patent and Trademark Office (PTO). PTO anticipates issuing about 160,000 patents in 1999. California was also the leader in patents received in 1998, followed by New York, Texas, Illinois, New Jersey, Ohio, Pennsylvania, Michigan, Massachusetts, and Florida.

U.S. PATENT & TRADEMARK OFFICE has begun accepting Internet patent applications under its electronic filing system. The first patent request to be filed over the Internet was a gene sequence listing for a pending biotechnology application. Biotechnology patent filings are currently the only ones that can use the Internet, but PTO plans to expand the service to most other patent filings in 2000.

NATIONAL SCIENCE FOUNDATION figures show that investment in R&D slowed or even declined during the first half of the ‘90s, but the situation has since improved. Total R&D spending as a percentage of gross national product increased in four of seven industrialized nations in 1997, the last year for which data from those countries are available. Italy was the leader, with an increase of 6% from the previous years, while the U.S., Japan and Germany showed smaller gains. Canada remained at the same level, while France and the U.K. dropped 4% each. However, the U.S. continues to significantly outspend these other countries in total R&D investment, with a budget that just about equals the total for these six countries combined. In 1997 the U.S. spent $189.6 billion on R&D in constant 1992 dollars, and boosted that number 6.2% to $201.4 billion the following year. Japan rated second in 1997, spending $80.9 billion, while Germany ranked third with $37.6 billion.

NATIONAL SCIENCE FOUNDATION is in the final stage of its $10 million project to switch from a paper-based to a paperless proposal and award system called FastLane (http://www.-fastlane.nsf.gov). By October, 2000, FastLane will be "fully implemented," meaning that every stage of an NSF grant proposal – from program proposal announcement to award close-out – will be handled electronically.

ALAN HOLMER, president of the Pharmaceutical Research and Manufacturers of America (PhRMA) warns that a bill introduced by Rep. Sherrod Brown (D-Ohio) would jeopardize the development of new drugs by forcing pharmaceutical manufacturers to give up patent rights to breakthrough medicines so these could be produced by other companies. The proposed legislation, the Affordable Prescription Drugs Act of 1999, would establish compulsory licensing for essential prescription drugs. In written materials, Rep. Brown explains, "under certain conditions – if, for example, a prescription drug provides a substantial public health benefit – the federal government could require drug manufacturers to license their patent to generic drug companies. Competitors would be permitted to market new drugs before patent expiration."

GENENTECH INC. will pay the University of California $200 million to settle a patent suit over the company’s human growth hormone. Genentech agreed to pay the university $150 million and contribute $50 million toward construction of a biological sciences research building on a new campus at San Francisco’s Mission Bay. Five UC researchers who worked on the growth hormone will receive $85 million of the payment. Genentech admitted no wrongdoing.

ENIGMA MARKETING RESEARCH (Man-chester, U.K.) says that a recent study shows that patents for more than 30 pesticide active ingredients, each with sales of at least $50 million/year, will expire by 2005, fueling a surge in the generics market. Enigma predicts that the global market for generics, including fungicides and herbicides, will grow 54%, from $17.5 billion this year to $27 billion in 2005. Developing generics to replace patented pesticides will cost about $2 million/product – a small sum compared to developing new actives, says Enigma.

SASOL (South Africa) has agreed with Kvaerner Process Technology, based in the U.K., on a license for a 120,000-metric-ton-per-year detergent alcohols plant. To be built at Sasol’s site at Secunda, southeast of Johannesburg, the plant will use Kvaerner’s low-pressure oxo technology to hydroformylate olefin cuts prepared from Sasol’s coal-gasification feedstock.

SHELL has licensed its biodesulfurization technology to Canadian Chemical Reclaiming (Calgary) subsidiary New Paradigm Gas. The technology uses thiobacillus bacteria to convert hydrogen sulfide extracted from gasoline to elemental sulfur.

NATIONAL TITANIUM DIOXIDE CO. (Cristal, Yanbu, Saudi Arabia) has awarded a contract to Simon Carves (Manchester, U.K.) to expand Cristals’ Yanbu titanium dioxide plant and build a new chlor-alkali unit there. The chlor-alkali plant will use ICI’s membrane technology.

TOYO ENGINEERING has a contract from the Luthianhua Group (LHG) to supply a urea granulation plant at LHG’s fertilizer complex in Sichuan. Toyo will supply technology and advice on the project. The award is Toyo’s second urea granulation technology license in China.

THERMOENERGY (Little Rock, AR) has developed a wastewater treatment technology to convert ammonia recovered from wastewater to fertilizer-grade ammonium sulfate. The technology was developed through a joint venture with Foster Wheeler Environmental (Clinton, NJ).

BASF, The University of Innsbruck (Dornbirn, Austria) and DeNora (Rodenbach, Germany) have formed a joint venture to market an electrochemical dyeing process for indigo and vat dyes to the textile industry. The technology reduces dyes to their water-soluble form by passing electricity through a solution containing Fe²⁺/Fe³⁺. It replaces the need for chemical reducing agents that would otherwise require costly wastewater treatment, says BASF. The agreement combines textile dyeing expertise from the university’s Research Institute for Textile Chemistry and Textile Physics, BASF’s knowledge in indigo and vat dyes, and DeNora’s experience in building electrochemical dyeing facilities.

ROYAL DUTCH/SHELL and Daido Steel (Nagoya, Japan) have jointly developed a coating for cracker tubes to prevent reactor coking, extending decoking intervals by up to 50%, 80 days. The coating is a 2 mm-4 mm "mirror smooth" layer of an unspecified metal alloy deposited on the interior of the reactor tube using Daido Steel’s proprietary plasma powder welding system. Daido Steel will manufacture the tubes and sell them to Shell for installation in all of its ethylene plants worldwide during the next three to five years. After supplying Shell, Daido will license the technology to compete with existing anticoking additives and ceramic coatings.

EASTMAN CHEMICAL will license its Energx polyethylene (PE) to Chevron Chemical. Energx technology can be used in gas-phase linear low-density PE plants to produce products that compete with metallocene- and octene-based polymers.

DOW CHEMICAL and Mitsui Chemicals have entered a joint R&D program to develop single-site polyolefin catalysts that can incorporate polar comonomers such as methyl methacrylate and vinyl acetate. The companies have also signed a cross-licensing deal covering patents on metallocene-catalyzed copolymers of ethylene, alpha-olefins and polyenes.

FIBERVISIONS and Chisso will establish a joint venture to develop and market biocomponent polyethylene-polypropylene fibers for use in hygienic and other applications worldwide, excluding Japan. The venture will be named ES FiberVisions. Chisso will provide a technology license for the manufacture, use, and sale of bicomponent fibers and access to its manufacturing facilities at Guangzhou, China and Moriyama, Japan. FiberVisions will provide access to its manufacturing facilities in Verde, Denmark and Athens, GA.

EVC (Brussels) has a deal with E&C Firm Bechtel under which Bechtel will market and build plants using EVC’s ethane-to-vinyl chloride monomer (VCM) process technology. EVC says its ethane-to-VCM technology could shave close to 30% off the cash cost of VCM production based on ethylene.

GEON has formed a polyvinyl chloride (PVC) compounding joint venture with Petroquimica Columbiana’s PVC division Petco (Bogota). The new company, Geon/Polimeros Colombianos (Bogota), will operate in Columbia and Venezuela and supply markets in the Andean Pact region – Columbia, Venezuela, Peru, Ecuador, and Bolivia. Petco will supply most of the PVC resin for the venture, and Geon will supply technology.

DOW CHEMICAL has licensed technology for producing solvent-soluble polyvinylidene chloride (PVDC) resins from Avecia subsidiary Zeneca Resins (The Netherlands). The resins are used to coat cellophane, and other films.

KOBE STEEL has selected Shinwha Engineering and Construction (Seoul) to build chlor-alkali and epichlorohydrin units for Arabian Industrial Development CO. (Nama; Al-Jubail) at Al-Jubail. The membrane cell chlor-alkali unit will use Asahi Chemical technology.

BOC and Mitsubishi Chemical say they have successfully tested their new process for production of maleic anhydride. The technology operates at low butane conversion to maximize selectivity to maleic anhydride by using a butane oxidation catalyst developed and patented by Mitsubishi. Mitsubishi will build a larger manufacturing plant using the technology, which Mitsubishi and BOC will license.

IRAN RUBBER INDUSTRIES INVESTMENT & DEVELOPMENT CO. (Tehran) has awarded a $59 million contract to Lurgi Zimmer for a nylon-6.6 tire cord plant at Zinjan, Iran. The plant will use Lurgi technology.

BP AMOCO is seeking a buyer for its proprietary Ketonex aliphatic polyketone technology, including a pilot plant and market development activities. The Ketonex process generates polyketones from carbon monoxide and olefins. Polyketones are blended with commodity polymers to improve barrier and thermal properties.

DUPONT has purchased ImaRx Pharmaceutical Corp, (Tucson, AZ), the developer of the ultrasound contrast agent Definity. Since 1995, DuPont Pharmaceuticals held the rights to make and market Definity in North America, Latin America, and Europe. Now, DuPont assumes the complete patent estate and world marketing rights for the compound, which was submitted to FDA in December 1998 for approval as a heart, liver, and kidney imaging agent.

ARQULE INC. (Medford, MA) and Bayer AG have entered a combinatorial chemistry collaboration under which Bayer will pay ArQule $30 million as compound delivery goals are met. The alliance will design and create several hundred thousand compounds for screening against Bayer’s proprietary therapeutic and agrochemical targets. Bayer will own all rights to the compounds resulting form the collaboration.

GENZYME (Cambridge, MA) and Genovo (Sharon Hill, PA) will collaborate on gene therapy products for lysosomal storage disorders, a class of rare genetic diseases. Genova will conduct R&D and product development on one product through Phase I clinical trials. Genzyme will have the option of taking on further development. Also, Genzyme will have an exclusive worldwide license to Genovo’s patents and technology for certain viral vectors that can carry corrected or replacement genes to cells in the body. Genovo is to receive milestone payments and royalties on sales of resulting products. Genzyme will make an equity investment of less than $5 million in the smaller company.

BRISTOL-MYERS SQUIBB COMPANY has a development, commercialization and collaboration agreement with Otsuka Pharmaceutical Co. Ltd. for aripiprazole, a new drug in Phase III studies as a treatment for schizophrenia. Aripiprazole was discovered by Otsuka and represents a new generation of antipsychotics.

TEGAL CORP. (Petaluma, CA) and Symetrix Corp. (Colorado Springs) will collaborate on process development of ferroelectric random access memory. (FeRAM) technology using Symetrix’s FeRAM materials. FeRAMs employ a special class of ferroelectric and electrode materials that are particularly difficult to etch. Tegal has developed and patented capabilities in etching these emerging materials, while Symetrix holds FeRAM device and materials patents and has secured license agreements with leading manufacturers of these devices.

MIPS TECHNOLOGIES INC. (Mountain View, CA) has introduced the 4Km processor core, an addition to its synthesizable core portfolio that is targeted at consumer electronics, communications and network management applications. The core, part of MIPS’ MIP32/MIPS64 core family, is a 32-bit engine compatible with R3000 and R4000 processors. Texas Instruments Inc. (TI) and Chartered Semiconductor Corp. will be the initial users of the core. TI will integrate the core into its intellectual property portfolio for ASIC designers. Chartered will use the core for its foundry customers. In both situations, users of the core will have to pay a royalty fee to MIPS. However, there is not a licensing or up-front fee for use of the core if they go through TI or Chartered.

AMKOR TECHNOLOGY INC. (Chandler, AZ) and Sharp Corp. (Osaka, Japan) share stacked-die IC chip-scale packaging (CSP) assembly technologies. Under the agreement, Amkor is licensed to use Sharp’s tape-based stacked-chip package assembly techniques to build stacked ICs for Sharp and other chip manufacturers; Sharp is licensed to use Amkor’s laminate-based ChipArray technology to package any of its products.

IDT INC. and Via Technologies Inc. signed an agreement in which Via and its partners would acquire IDT’s Centaur Technology x86 microprocessor design subsidiary. IDT will receive cash proceeds of $51 million for the intellectual property related to WinChip microprocessor technology, IDT’s Centaur x86 MPU design subsidiary and a patent cross license.

SONICS INC. (Mountain View, CA) announced a new system-on-a-chip (SOC) integration system it says will simplify the process of integrating multiple cores and logic blocks onto a single chip. Dubbed FastForward, the system aims to simplify and shorten SOC design time and make it more practical for mainstream system and IC designers. The fee for an annual license for the product is $46,500. It runs on the Solaris operating system from Sun Microsystems Inc.

TEXAS INSTRUMENTS INC. (TI) (Dallas) added the MystiPHY110 digital Ethernet physical interface (PHY) to its TimeBuilder ASIC portfolio. The core was developed by MystiCom Ltd. (Netanya, Israel) and is licensed to TI. When combined with TI’s digital signal processors (DSPs), the PHY provides designers of networking equipment with the ability to integrate multiple Ethernet PHYs onto a digital media access controller (MAC).

TOKYO ELECTRON LTD. (TEL) and Varian Semiconductor Associates Inc. (VSEA) of Gloucester, MA, have entered into a patent license agreement. TEL will make an initial payment of $25 million to VSEA and pay royalties based on future sales of equipment. In exchange, it gets a worldwide license for VSEA patents on controlling the temperature of silicon wafers in integrated circuit manufacturing.

NATIONAL SEMICONDUCTOR has a pact with Boca Research Inc. (Boca Raton, FL) whereby National will purchase about 6 percent of currently outstanding Boca Research common stock, at a purchase price of $7.235 per chare, or about $5 million in cash. The companies also entered into a cooperative development and licensing pact. Boca markets modems, I/O cards and multiport products.

GENERAL INSTRUMENT CORP. (GI) will incorporate 32-bit MIPS processors into custom system-on-a-chip (SOC) silicon under a new licensing agreement. The license offers GI the flexibility to develop custom SOCs and add new features down the road for its digital network systems. The chip uses a MIPS-based 64-bit chip to allow consumers to simultaneously watch TV, surf the Internet and talk using the advanced Internet.

INTEL CORP. and Standard Microsystems Corp. (SMSC) signed a new technology exchange agreement enabling SMSC to accelerate development of value-added chipsets to support Intel products.

INFINEON TECHNOLOGIES CORP. (formerly Siemens Microelectronics Inc.) and Molex Fiber Optics will multiple-source fiber optic backplane solutions. Infineon and Molex have agreed on a mutual licensing agreement that allows either company to make and sell the back-plane solutions.

2000 Winter Meeting

February 15-18, 2000

Westin La Paloma, Tucson, Arizona

This winter meeting will feature Dr. Thomas Bopp, co-discoverer of the Hale Bopp comet. In addition there will be seminars covering healthcare/biotechnology and electronic com-munications as well as a LES Professional Development Program. Contact: Licensing Executives Society, (U.S.A. and Canada), Inc., 1800 Diagonal Road – Ste. 280, Alexandria, VA 22314-2840. Tel: (703) 836-3106.

"TECHNOLOGY TRANSFER 2000"

February 23-25, 2000

Renaissance Orlando Resort, Orlando, Florida

This 3^rd annual meeting is designed for those in the Pharmaceutical, Biotechnology or Medical Device industry who are responsible for technology transfer. The conference will specifically focus on establishing technology transfer strategies, understanding guidelines and building effective team communication for successful technology transfers. Contact: Institute for International Research, 708 Third Ave., 4^th Floor, New York, NY 10017-4103. Tel: 888-670-8200.

1999 LICENSING UPDATE $150.00

By Gregory J. Battersby and Charles Grimes

This is a guide on "mastering the complex licensing issues and exploiting the opportunities." It covers in-depth the latest rate trends and formulas used to calculate royalties. It includes critical information on licensing in the international arena. It surveys and studies the implications of the past year’s most significant cases and developments. There is also an automatic supplement program for periodic updates. Contact: Aspen Law & Business, P.O. Box 990, Frederick, MD 21705-0990. Tel: (800) 638-8437.

DRAFTING PATENT LICENSE AGREEMENTS $125.00

By Brian Brunsuold and Dennis O’Reilley

Published by BNA Books.

This 4^th edition contains the latest legal developments in negotiating and drafting technologies. It provides guidance on all provisions of license agreements. Included is a computer disk that contains over 200 sample forms. Contact: BNA Books, P.O. Box 7814, Edison, NJ 08818-7814. Tel: (800) 960-1220.

Edited by Melvin Simensky, Lanning Bryer
and Dr. Neil J. Wilkof.

This second edition of this two-volume reference contains much new material. It covers things you need to know to understand fully the significance of intellectual assets; to set the highest value on your intellectual property; to market them in countries with complex and ever-changing laws; and to protect your property from infringement. It shows you how to make the most of intellectual assets in global settings. Contact: John Wiley & Sons, Inc., One Wiley Drive, Somerset, NJ 08875-1272, Tel: 800-567-4797; Fax: 1-732-302-2300.