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With 126, MIT is Patent Pick

By Jackson Jung
Staff Reporter

Boston-area attorneys must love MIT -- patent attorneys, that is. In 1992, the Institute was awarded 126 patents, more than 8 percent of the 1,491 U.S. patents granted to all American colleges and universities, according to the Chronicle of Higher Education.

MIT received the most patents by far, followed by the University of California's 81 patents and the 75 patents awarded to the University of Texas. The University of Florida had the fourth largest number, with 50 patents, and Stanford University came in fifth with 44 patents.

Lori Pressman, technology licensing officer for MIT, suggests that part of the reason MIT received so many patents could be the large amount of sponsored research dollars the Institute receives from industry for practical engineering. "[MIT] has a history and tradition of fostering interaction with industry," Pressman said.

Industry in general approaches an academic institution like MIT in search of "inspiration." It is the job of researchers who have chosen to work closely with industry to come up with an idea that may have commercial potential, and not necessarily to "work out all the bugs." It is then the role of industry to turn the idea into a marketable, producible resource.

According to Pressman, by the time patents have been issued for MIT inventions, more than half of them have already been licensed to industry.

This is in contrast to many other institutions, which devote large sums of money to patenting research with little commercial potential. In this case, obtaining patents can actually become a money-losing venture.

Patents require time and money

The patent application process usually requires "several years and tens of thousands of dollars," Pressman said. A large portion of this money goes to patent attorneys, who charge $200-250 an hour.

An MIT inventor who seeks a patent should be prepared to convince the Technology Licensing Office that the invention is new and practical. It must "solve a problem in a different and better way."

The MIT inventor is asked to perform an exhaustive literature search to determine the originality of his solution and how it compares with other solutions.

If the inventor's solution has not been anticipated by others and it is deemed to be new and practical, then MIT hires a patent attorney to convince the U.S. Patent and Trademark Office. The attorney must demonstrate to the patent office that "it would not be obvious for someone else to think of [the same solution]," Pressman said.

The Institute pays for the patent filing and attorneys' fees, and the inventor is eligible to receive approximately one-third of any licensing royalties which may develop. Pressman noted that this policy is in contrast to industry policy, where an employee inventor usually does not receive any direct royalties from his invention.

Over the last decade, there has been a tremendous increase in the number of patents awarded each year to both colleges and industry. According to Pressman, one reason for the renewed interest in new ideas is that they have become more attractive as investments. As the returns from conventional investments in the financial markets have fallen, high-risk investments have become more favorable because of the potential for enormous returns.

Another reason is that some companies have "assumed a more defensive" position, patenting ideas to prevent competition or profit from licensing agreements.