Disclosure process helps grad students bring inventions to market

By Meghan Chua

A laser projection system
Graduate students Ji-Hyun Nam, Xiaochun Liu and Toan Le worked with assistant professor and principal investigator Andreas Velten in the Computational Optics lab at UW–Madison on a project designed to create non-line-of-sight images using reflected laser light. Pictured here are components of the laser projection system. Results of their work, released in the journal Nature in August 2019, have been disclosed to the Wisconsin Alumni Research Foundation for purposes of intellectual property protection. (Photo by Bryce Richter /UW-Madison)

Graduate students don’t always start their studies with the goal of becoming an inventor. But the numbers show a different outcome: over half of UW–Madison invention disclosures to the Wisconsin Alumni Research Foundation include at least one graduate student who has conducted research on the project.

The Wisconsin Alumni Research Foundation (WARF) is the nation’s oldest dedicated patenting and licensing organization for any university, having organized in 1925. Since then, WARF has helped many researchers at UW–Madison bring their inventions to a wider market, graduate students included.

“If somebody would have told me that as a graduate student I would be creating something that someone might want to license for use, I would have thought they were crazy,” said Lindsay Bodart, a graduate student in Medical Physics.

Bodart’s lab develops imaging techniques for medical procedures, using both x-ray and ultrasound images to help physicians track medical device insertion and patient anatomy simultaneously. Ensuring that their technique is as accurate and efficient as possible can be challenging when human subjects are involved. So, Bodart and her team invented a device meant to mimic the human body, called a phantom, for testing purposes.

The phantom contains a gel-like substance that copycats human tissue, surrounding a more solid core that represents the human heart. Small targets throughout phantom that are easy to see in x-ray and ultrasound images help researchers measure how well different imaging technologies are synchronized. Plus, the phantom can undergo tests time and time again without the risks involved with real patients and provide more precise measurements that combine both x-ray and ultrasound.

Though the benefits of their phantom patient were clear, Bodart said that her advisor Michael Speidel, who had gone through the patent process before, and their team were not sure if the device was worth patenting.

Speidel and Bodart decided to work with WARF to explore patenting. They contacted WARF through an invention disclosure report, describing why the phantom is a unique technology worth patenting, and what potential market exists for the phantom. As the team worked with WARF to explore patenting the device, Gammex, a medical device company in Middleton, started to show interest.

WARF can help researchers who disclose inventions take their products to market. Companies might license the technology, bringing monetary compensation back to the inventors but also creating a wider impact.

“That would take our work beyond just our small little lab,” Bodart said. “It would help others to be able to perform more efficient work.”

Bodart added that graduate students who have any indication that they want to protect an invention should begin with the invention disclosure report and work with WARF to determine if a patent is feasible. The process may seem daunting, but that shouldn’t deter inventors.

“[The process] was a little less scary than I initially had thought, and part of it was because WARF is just a real pleasure to work with,” Bodart said. “They really want to make sure that at the end of the day this all comes back to benefit the inventors here at UW.”

According to the World Intellectual Property Organization, intellectual property includes inventions and artistic works that can be legally protected through patents, copyrights, and trademarks. Researchers on campus, including graduate research assistants, must disclose inventions that result from research at UW–Madison. The university has obligations to notify federal funding agencies and most other third party funding sources of inventions made under their funding.

Over half of UW–Madison invention disclosures to the Wisconsin Alumni Research Foundation include at least one graduate student who has conducted research on the project.

While Bodart didn’t know about the WARF disclosure process until working on it with her advisor, graduate student Jacob Rapp started his research knowing that at some point, something patentable would come out of it. Rapp is a PhD student in biochemistry who uses machine learning to teach a robot how to engineer proteins that can be used for anything from medicine to industrial production.

Rapp said his first contact was WARF was working with an intellectual property specialist to make sure a presentation he was giving on his research would not count as public disclosure. According to a micro-course on intellectual property by the UW–Madison Libraries, inventors can hinder patentability if their own publications, conference presentations, or websites provide enough preexisting information about the invention that is it no longer considered novel during the application process. This makes it important for students to reach out to an expert sooner rather than later.

Beth Werner, senior intellectual property manager at WARF, said that students shouldn’t feel like they can only speak with WARF if they know for sure their invention is patentable.

“We at WARF love to learn about science going on throughout the UW–Madison campus,” Werner said. “You can never talk to WARF too early about intellectual property, so I would encourage graduate students to reach out to us to talk about anything relating to their research, WARF processes, and even careers in technology management and patent law.”

The patent process takes time and investment up front, and WARF covers the costs involved for UW–Madison researchers. Part of this includes connecting UW researchers with a patent lawyer. In Rapp’s case, they were able to find someone with expertise in both biochemistry and computer science, which was crucial for this invention.

“We effectively just handed him as detailed a summary as we could give him and he converted that into the necessary legal language,” Rapp said. “We didn’t have to handle any of that bit, which was very helpful.”

Rapp also said working through the patent process to bring a new technology to the market ultimately helps advance research and create a broader impact.

“I’m a scientist; I like to see my work used,” he said. “Going through the patent process helps to make sure WARF will put out the effort to get some company to license it and make sure that it’s actually a physical product that helps people out.”

Graduate students and other researchers who are interested in learning more about intellectual property at UW–Madison are invited to attend an upcoming lunch and learn event on Nov. 7 about intellectual property and invention disclosure. Students will have the opportunity to ask questions to experts and inventors in small groups as well as meet potential mentors. Lunch will be served; registration is required.