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Modes to protect university research for tech transfer have shifted dramatically

By BECKY GILLETTE

The field of technology transfer from higher education to business and commercial developments once focused strongly on obtaining patents for products developed by university research. Today, there are many commercialization projects that may benefit more from other types of protection, said Chase Kasper, assistant vice president for research, technology transfer and corporate relations, University of Southern Mississippi (USM).

“I would be quick to point out that USM has had a great legacy and continues to be involved with patented innovations largely from the School of Polymers and High Performance Materials,” Kasper said. “Intellectual property, generally speaking, is just not patentable work. Intellectual property can be protected by copyrights, trademarks, and trade secrets. When you are looking at all these areas combined, there are a lot of intellectual assets that are being created by USM.”

One example is USM’s acquisition of Aqua Green in Stone County that is going to be used by Gulf Coast Research Lab for research such as culturing oyster spawn to restock offshore reefs. Aqua Green is expected to create special materials for aquaculture.

“We will likely have innovations come out of AquaGreen that will be commercialized in the maritime industries, or what we are calling now the ‘Blue Economy’,” Kasper said. “We are likely to develop the knowledge for rearing certain forms of aquaculture like oysters or fin fish native to Mississippi’s Gulf Coast. If we are lucky enough, we might be able to identify species with special characteristics that might be desirable for the food sectors. We are doing research on oyster larvae, copepods, blue crabs, speckled trout, and triple tail, which are native to Mississippi Gulf Coast. Some of that research may not necessarily patentable, but could be protected with other forms of intellectual property.”

USM has more than 50 active patents, but also 400 pieces of issued patents, patent applications, trademarks, and copyrights over the past 20-25 years.

Kasper has been involved in the field of tech transfer since 2003, spending ten years at Mississippi State University (MSU) before coming to USM about five years ago. In that time he has seen a remarkable shift in the models used to protect research developments.

“The old model was patent, market and license,” Kasper said. “What you are seeing now are innovations that are protected in other ways. Patent applications are still widely used, but software and information is what is driving the majority of market sectors today. A lot of those innovations are not necessarily patentable. Software is an authored work, so it can be copyrighted, and the life span of a copyright is significantly longer than that of a patent.”

The first video games back in the 1980s were copyrighted and are still used today, he said.

“Derivative works of the first video game materials are still very much protected today even though almost 40 years have passed since those games were created,” Kasper said. “A patent would have expired back in the 1990s, but a copyright would still be enforceable today. We try to educate our faculty, staff and students about all form of intellectual property mechanisms as they have a different sets of rights. Patents cover inventive works and exclude others from making, using or selling the invention. Copyrights cover creative works, and those rights include the right to copy, perform, distribute, display or prepare derivative works. Knowing which set of rights to use for an innovation becomes an important step in taking the next step in commercialization.”

MSU architecture professor Michael Berk’s GreenMobile project that Kasper worked on is an example of a development that is not patentable, but protectable. The GreenMobile, a mobile home that has many features for energy conservation and natural lighting, has been licensed to a couple of manufacturers.

“Basically Michael’s GreenMobile is a tiny home, and tiny homes have become very popular now,” Kasper said. “The GreenMobile is a sustainable home you can move around. Michael’s research was marketed in 2005, and more than a decade passed before the concept became popular in the mainstream.”

Another example is USM’s National Center for Spectator Safety and Security (NCS4). Kasper has been working with the center to create a series of trademarks to help with the brand and make it easily recognizable to major leagues. Kasper said the NCS4, which was born out of a Department of Homeland Security grant in 2003, has created a great network of individuals and organizations working to put in best practices for the sports security professional at multiple levels.

Kasper is also working with other groups within the university on developments.

“Exciting things are coming out of our School of Computing, School of Ocean Science and Technology, and College of Nursing,” he said. “The departments within our College of Education and Psychology Departments have also come up with innovations.”

Kasper said overall benefits to technology transfer are multi-pronged: Companies are able to tap into the research enterprise of the university and leverage the capabilities and skill sets of not only the faculty, but the students. Intellectual assets might be able to be licensed out by a business to help give them a competitive advantage. And, the benefit most invisible is the actual knowledge creation that has happened because an industry has actually asked the university to look into a particular problem and provide feedback. Still another benefit is workforce development of students.

“For example, almost all of our polymer students have a job when they graduate,” Kasper said.

The national reputation of the School of Polymers and High Performance Materials attracted Hybrid Plastics to relocate from Los Angeles to Hattiesburg in 2005, said Hybrid Plastics Chief Operating Officer Carl Hagstrom. Hagstrom said Hybrid Plastics, one of the top ten nanotechnology companies in the U.S., has benefitted from the relationship with USM.

“It is exciting to watch the enthusiasm with which the university is now expanding that effort into other STEM programs,” Hagstrom said. “Technological innovation begins with a culture that values discovery. Southern Miss has that culture. Encouraging technological development is more than just a numbers count of certain metrics. It is encouraging a mind-set, a determination to push the boundaries from academic curiosities to practical commercial applications.”

Kasper said each university in Mississippi has expertise in different disciplines.

“It is exciting to see the innovations coming out of higher education in the State of Mississippi,” he said. “In today’s climate, the creation and sharing of information has become more and more robust and efficient. The speed and amount at which information travels and is disseminated is increasing at an increasing rate. Research universities are constantly learning and creating new knowledge. I think there is no question that not just Mississippi, but across the U.S., where you see strong economic development, you also see the presence of large university research enterprise(s) in close proximity.”

Kasper said he really enjoys engaging with faculty members who are so talented.

“It is a privilege to work with some of the best and brightest in their fields internationally,” he said.

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