UO CHEMIST IS TOPS AMONG STATE’S PATENT-HOLDING PROFESSORS

July 21, 1999

Contact: Ross West (541) 346-2060

Sources: John Keana (541) 346-4609; Todd Sherer, UO Office of Technology Transfer (541) 346-3234

EUGENE–With more than 40 patents in hand, University of Oregon chemistry professor John Keana holds more patents than any other academic in the state–and he has more than 10 other patents pending approval.

Some of Keana’s patents are for neuroprotective drugs used to minimize brain damage due to stroke, head injury or heart attack. Other patents are for processes that may lead to the development of microbiosensors to monitor levels of drugs and associated compounds in the blood. Still others are for novel amplifier molecules useful in the diagnosis and treatment of disease.

The urge to invent is not new for Keana.

Back in the 1950s, he and some of his boyhood friends invented a marble launcher by combining the explosive properties of calcium carbide and water with a metal pipe. They’d watch the small glass orbs fly over the fields near their homes in rural southwestern Michigan.

While Keana never patented the marble shooter, he has, in the years since, made numerous other inventions and acquired patent protection for them. But getting his inventions and ideas patented wasn’t always easy.

In the late ‘60s, he and fellow UO chemistry professor Hayes Griffith published a paper on a paramagnetic polymer paint that could potentially make planes invisible to radar. They tried to patent their idea.

"We didn’t try very hard," Griffith admits. Unable to find anyone in the university who knew much about applying for patents, the busy young academics let the idea die. So much for making an early contribution to stealth technology.

Years later, Keana became involved in therapeutic drug discovery by combining forces with Professor Eckard Weber, a pharmacologist who, at that time, was at Oregon Health Sciences University in Portland. Together, they identified a novel molecule with potential as a new treatment for schizophrenia.

Keana and Weber teamed up with a fledgling company in Cambridge, Mass., called Cambridge NeuroScience, to help them make the most of their drug discovery. With the exciting potential of a new major drug discovery, however, came the urgent need to patent any discoveries.

"Without protection, no company would invest the hundreds of millions of dollars necessary to see a drug to market," Keana explains.

While the university still didn’t have many resources devoted to patents and marketing, Cambridge NeuroScience was willing to pay for the worldwide patents, costing tens of thousands of dollars, in exchange for an exclusive license for the discoveries. The project eventually led to Cerestat, a promising stroke treatment drug currently in the final phase of clinical trials.

Subsequently, Keana and fellow researchers founded two companies to develop and promote their ideas: Acea (later bought out by CoCensys) to develop and market neuroprotective drugs, and Advanced Microbotics (now Ikonos) to market the technology that they hope will lead to the development of practical microbiosensors.

Both universities and researchers now generally recognize that patents can be an important–and sizeable–source of revenue.

The University of Oregon opened its Technology Transfer Office in 1992, a decision prompted, in part, by the passage of the Bayh-Dole Act of 1980. This legislation allowed universities title to inventions funded with federal dollars.

The Technology Transfer Office is responsible for finding a market for the inventions of UO faculty and students. Income from licensing agreements is divided between the inventor, the department and the university. Todd Sherer was hired as the first full-time director in 1997.

Licensing agreements have made significant contributions to research at some universities, Sherer explains. Stanford University’s Office of Technology Licensing was founded in 1970 and has successfully licensed about 300 technologies, producing $61.2 million in royalty income in fiscal year 1997-98 and employing 20 staffers.

The UO Technology Transfer office is small by comparison–Sherer directs a staff of two–but the potential is there. In the last five years, income has grown six-fold, from $50,000 to more than $300,000.

"Industry has certain objectives for their company. If that need is close to the research that a faculty member is doing in the lab, it can be a wonderful partnership for both of them," says Keana. Though modest, income from the licensing of patents he holds has helped fund further research in Keana’s lab and the UO’s Department of Chemistry.

While Keana and other inventors file many patent applications for technology that never get licensed or, if licensed, never make any money, one successful patent can mean millions of dollars for the university. For example, before the patents expired in 1998, Stanford University collected $30 million in revenue from recombinant DNA technology discoveries alone.

"Without a crystal ball, you don’t know which ones will work and which won’t," says Sherer.

Keana has no use for crystal balls–aside from the ones he shot out of the cannon he invented when a boy. Today, he’s still busy thinking up new inventions.

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