UCAR > Communications > Staff Notes > November 1996 Search

The market heats up for licensing of UCAR technology

What do the Stevenson-Wydler Technology Innovation Act, the Bayh-Dole Act, and the Federal Technology Transfer Act have in common? They are three of the most significant among several bills passed by Congress in the last 16 years calling for federal research centers to export their discoveries to society at large. "To me," says Rich Mignogna, "the spirit of this legislation is pretty clear: 'Thou shalt transfer technology.' "

Members of the technology commercialization team at UCAR include (left to right) Curt Lutes, Rich Mignogna, Paul White, and Halina Dziewit. (Photo by Curt Zukosky.)
Rich is working to help NCAR and UOP obey that eleventh commandment. Over the past year, Rich has directed UCAR's technology commercialization efforts on behalf of the UCAR Foundation. There are signs that a lengthy push to transfer our software and instrumentation developments to the world is finally beginning to pay off.

The push has been mostly uphill. A decade after the UCAR Foundation was created to stimulate technology transfer, the number of products licensed or patented remains modest. Income from external royalties and license fees over the past ten years has totaled $890,000. Rich, along with others, believes we could be doing better.

Some products of NCAR work are clearly designed in noncommercial fashion for the research world at large. For instance, the climate systems model and the Penn State/NCAR mesoscale computer model both are offered without charge to any interested users. However, notes Rich, there are other products and byproducts of NCAR work that can be repackaged and offered for sale in a way that benefits all concerned. Finding those golden eggs is a challenge, though.

"We deal in markets that are very narrow and specialized, unlike the markets for something that might come out of Sandia [National Laboratories], for example. There are not immediate applications for a lot of atmospheric-science technology," says Rich.

At the same time, Rich believes, there are saleable NCAR and UOP technologies that go unleveraged because the staff who create them may not be motivated to spend time and energy in licensing and marketing. In other organizations that Rich is familiar with, there is a more routine acceptance of the tech-transfer process. "If you look at many federal laboratories and universities, you see a much greater commitment to tech transfer. In some cases, it's a part of job evaluations."

Rich tells of a scientist at Lawrence Livermore Laboratories who recently developed a micropower impulse radar, a "radar on a chip," as he puts it. "The lab has 17 separate licenses, each one paying a $100,000 fee and a sliding scale of royalties. They'll get millions upon millions of dollars in royalties from that single invention."

UCAR has yet to locate that hot a property within its ranks. However, the NCAR GRAPHICS® software package has been a notable success, bringing in more than $330,000 in income to the foundation over the past five years from commercial licensees. (Proceeds from sales to universities go directly to the Scientific Computing Division to reimburse their out-of-pocket expenses for making the software available.) COMET® CD-ROM and laser-disc training modules produced by the Cooperative Program for Meteorology, Education and Training have also piqued considerable interest. Over the past several years, modules have been sold to foreign meteorological services as well as U.S. universities and private firms. (The modules' primary audience is forecasters in the nation's civilian and military weather services.) Distribution of the modules was recently transferred to the UCAR Foundation from Weather Information Technologies, Inc., which has undergone a restructuring in the past few months (see sidebar).

Of the 13 licenses for UCAR-based technology secured in the past few years, 6 have been obtained in the last year. They include:

• PC-based integrated radar acquisition (PIRAQ), a compact signal-processing PC board developed by Mitch Randall; licensed to Applied Technologies, Inc., for use in a variety of radar systems

• the conditional flux sampling system, invented by Joost Businger, and the constant flow pump, by Pat Zimmerman and Gary Hampton; jointly licensed to Applied Technologies, Inc., for sale to anyone requiring precise atmospheric sampling

• WEATHER, a software package written by Peter Neilley for accessing weather data; licensed to Alden Electronics for a weather-access workstation (see sidebar)

• the low-level wind shear alert system (LLWAS), with software developed by Larry Cornman; licensed to Loral (now part of Lockheed Martin), with additional licenses expected

• software for thunderstorm identification, tracking, analysis, and nowcasting (TITAN), developed by Mike Dixon; licensed for one-time research use by the Australian Bureau of Meteorology, with other licensing possible for a variety of forecasting applications

• the Global Positioning System dropwindsonde and associated data processing system for measuring temperature, humidity, and pressure, developed by ATD; licensed to Vaisala, Inc.

The search is on

Rich brings a wide range of technical and business experience to his UCAR role. He holds a doctorate from the University of Colorado in operations research and master's degrees in business administration (University of Denver) and mining engineering (Colorado School of Mines). As a professor at DU, Rich launched a master's degree program in technology management that included coursework in strategic technology planning, technology forecasting and assessment, ethics, and other aspects of tech transfer.

To keep tabs on UCAR technology, Rich works with the Intellectual Property Management Program--including IPMP director Halina Dziewit and manager Paul White. Together, they determine the commercial potential of intellectual property generated at UCAR and determine the kinds of protection needed. While he keeps an eye on new technologies as they come into IPMP, Rich has been working his way through a stockpile of already-protected creations from the past few years to determine their potential. Much of the past year's licensing boom has been from inventions developed years earlier.

A major challenge for Rich is bridging the gap between somewhat esoteric technologies developed for NCAR or UOP use and industry's need for more polished, ready-to-market products. "A lot of things we come across are too far from being commercially viable to be of interest," says Rich. "It's been said that in R&D, you spend ten times as much on the D as you do on the R."

Once licensing time is at hand, the UCAR Foundation enters the picture. The foundation was established in 1986 as a not-for-profit subsidiary of UCAR; it is the primary agent for commercializing NCAR and UOP creations. The foundation's officers are president R. C. "Merc" Mercure (University of Colorado) and UCAR's Jeff Reaves, Dan Wilson, and Harriet Barker.

Roughly half of the gross income from NCAR- and UOP-related licensing carried out by the foundation returns to support future marketing efforts. The other half goes to a product's inventor(s), their NCAR division or UOP program, and the UCAR general fund. Overall income of the foundation has varied widely from year to year with the flow of licenses.

Smoothing the way

In order for technology transfer to become commonplace at UCAR, staff have to become comfortable with the process. One step that can trigger misunderstanding is the first one: protecting UCAR's claim to a given creation by its employees.

UCAR distributed a new agreement to all staff earlier this year to clarify the issues of intellectual-property ownership. Like any legal document, these agreements can be difficult to digest; the most recent revision was drafted in a way to make it more readable by staff. It is essential that UCAR have a signed agreement on hand from each employee before that person's creations can be marketed to bring in royalties for NCAR, UCAR, and for the creator herself or himself.

"I hope that we're beginning to develop some credibility with the scientific staff, which is really important," says Rich.

Omnipresent concern over federal science budgets can't hurt the cause. The income raised by commercializing our technology, while it won't fund the institution entirely, could be a welcome adjunct to core support. However, says Rich, "Perhaps more important than the financial benefits are the exposure and satisfaction the institution gets from having the results of its work put to beneficial use beyond the laboratory." •BH

IPMP is launching a new program to recognize staff whose inventions have been patented. In an upcoming issue of Staff Notes Monthly, we will spotlight the 1996 patents and the people behind them.

Our tech-transfer policy

Among the six institutional goals in UCAR 2001: A Mid-Course Assessment (April 1996) is technology transfer: "In conjunction with the UCAR Foundation, transfer appropriate UCAR technology to the public and private sectors." The institution's stated mission is ". . . to support, enhance, and extend the capabilities of the university community, nationally and internationally; to understand the behavior of the atmospheric and related systems and the global environment; and to foster the transfer of knowledge and technology for the betterment of life on Earth."

Peter Neilley's fine WEATHER

When Peter Neilley (Research Applications Program) first cobbled together some software for looking at weather data, he was a graduate student at the Massachusetts Institute of Technology. Little did he know that over a decade later, the program he called WEATHER would prove lucrative as well as popular--a good example of unexpected tech transfer.

Peter's goal in creating WEATHER was to intercept the National Weather Service stream of raw data (observations, model output, forecasts, and discussions) through an interface that enabled a user to call up desired items quickly. "It provided a simple, unified, and efficient way to get at all types of weather data. You didn't need to know the intimate details of each type of data to get at them," he says. In its first and subsequent incarnations, WEATHER came to be used at several dozen research centers and universities, including Texas A&M and Colorado. It can be downloaded for nonprofit use from Unidata community servers.

Peter Neilley with WEATHER at his fingertips. (Photo by Carlye Calvin.)
The UCAR intellectual property office had the foresight to write some protection for WEATHER back in 1992, just when it was starting to be disseminated by Unidata." says Peter. "In April of this year, Alden called me and said, 'We'd like it.' " One of the country's largest vendors of weather data and related hardware, Alden Electronics was putting together a workstation that would use preinstalled interfaces to display and use Alden data. After several months of negotiations, Peter and the UCAR Foundation inked a license with Alden this summer for use of WEATHER in the workstations.

How prepared was Peter for the world of technology transfer? "I knew nothing. We'd all signed the intellectual property agreements, but I didn't know how it all worked and I didn't care to. This wouldn't have happened without Rich [Mignogna] or someone else helping out. I don't have the business savvy, and I would have been reluctant to pursue things without him."

According to Peter, the negotiations went relatively smoothly. "I don't remember any difficulties in the licensing process, other than a few things that were beyond UCAR's control." Like most authors, he wouldn't have minded a bigger piece of the pie--"I feel a bit like the farmer who produces a few pennies' worth of wheat and then watches it go into a $4 box of Wheaties"--but overall, he's satisfied with the tech-transfer experience.

"The exposure's nice. The money will be nice. It's satisfying to feel that there's some real justification to this software package. Probably as many people know me from WEATHER as from anything else I've ever done." •

A new shape for WITI

The company known as Weather Information Technologies, Inc., (WITI) is now several companies in one. WITI Corporation (without the spellout) is the new name for an umbrella organization that will manage WITI itself and several closely related companies, each targeted to a specific technology market. "Our reorganization is designed to focus our expertise and capitalize on new business opportunities," says president Bruce Donaldson. In recent years, WITI has served as a consulting firm on airport weather-warning systems and similar projects. Most WITI Corp. projects use NCAR and UOP technology and know-how purchased from UCAR, although a new subsidiary, World Aviation Safety, Limited Liability Company, may draw from beyond the institution. More details on WITI Corp., housed at 3300 Mitchell Lane, can be obtained from Sheridan Garcia, 497-8582, garcia@witicorp.com.

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Prepared by Jacque Marshall, jacque@ucar.edu, 303-497-8616