UNIVERSITY PARK — Next month, for the second time this year, Penn State plans to auction some of its U. S. patents online. Winning bidders will get licensing rights to patents derived from faculty research in a broad range of technical fields.
The first auction, held in April and believed to be the first of its kind in the nation conducted directly by a university, was not a huge financial success — only two patents were licensed out of 73 on offer. It was nonetheless judged successful by other important measures.
“The auction has spawned many ongoing conversations with companies that hadn’t known about our IP portfolio before,” said Don Mothersbaugh, senior technology specialist at Penn State’s Office of Technology Management. “It’s a good way to let these companies know what we have to offer and vice versa.”
Of equal importance, the auction’s results have given the University a better understanding of the value of the patents it continues to hold.
Over the last 10 years an average of 40 U.S. patents per year have been issued to the Penn State Research Foundation, Penn State’s technology transfer agent. Roughly half of these patents have been licensed right away to companies with the interest, ability and resources to commercialize them. The rest sit on the proverbial shelf.
“Just like every other research university, Penn State owns hundreds of U.S. patents that are not licensed despite everyone’s best efforts,” said Ron Huss, associate vice president for research and technology transfer. Keeping these patents protected requires paying maintenance fees.
“The patent auction is a final attempt to capture value from some of our older unlicensed patents, and put them into the hands of companies that can use them at a favorable price,” Huss said.
The University has discontinued payment of maintenance fees on those patents not licensed in the April auction, he said, and by doing so will save over $300,000. “That money can be redirected toward protecting the next generation of Penn State inventions.”
Unlike the first installment, which was limited to engineering patents, the second auction will include patents from the fields of materials, chemistry, human health, agriculture, biotechnology, engineering, and information sciences. In all, 112 patents will be included.
The auction is set to begin on Dec. 8 at 8:a.m. EST and continue through Dec.12 at 5 p.m. EST. Interested parties may view available patents, create an account and pre-register for the auction at http://patents.psu.edu/.
The auction is being offered to the global market and is not restricted to parties in any particular geographic region. Required bid minimums will be as low as $5,000, and the winning bidder will get exclusive rights, and be required to enter into a licensing agreement with The Penn State Research Foundation.
“The success of this auction will be defined as more than what’s licensed,” Mothersbaugh said. “We’re gaining knowledge every time we do this to make better decisions with our IP.”
“After this one, we will regroup, assess, and then we’ll probably do this once a year,” Huss said. “The feedback we’ve received from our faculty researchers has been overwhelmingly positive.”