Racine, Wis. – In the first partnership of its new joint-venture model, the Center for Advanced Technology and Innovation will market and license 10 United States patents held by the Wayne, N.J.-based International Specialty Products.
The joint venture model is seen by CATI as the next big wave in acquiring underutilized, or “off-strategy” technologies, and making them available to entrepreneurs or existing companies in southeastern Wisconsin.
It also marks a change from the previous technology-transfer model, in which unused patents were donated to CATI. “We’ve had some success turning patents into products, but we needed a different business model,” said Brian Curry, assistant director of CATI. “The joint-venture model will be good for Racine and Wisconsin.”
CATI was formed in 2001 as a private, non-profit organization by a group of academic, workforce development, and economic development organizations in Southeastern Wisconsin. The purpose was and still is to be a source of innovation for entrepreneurs, companies, and students interested in harnessing underused research and development.
For the first few years, the organization accepted donated patents and licensed them to interested parties, and the inventing company then claimed a tax deduction. That was until the Internal Revenue Service, concerned that a number of donating companies were over valuing their patents, began to make the valuation process more rigorous, which resulted in fewer donations.
Fortunately, CATI already was in the process of making the transition to a joint-venture model. While this method does not convey patent exclusivity to CATI, it still enables the organization to identify under-used patents of large companies like Johnson & Johnson and Boeing, gain the knowledge of those patents, and spin out new companies based on the technology the patents protect, or incorporate the patented technology into existing businesses.
“We’re not just making a profit on brokering a deal for the patents,” Curry said. “We were founded on economic development.”
The inventing company, which typically wants to see the patents used, rids itself of maintenance fees for unused patents, and both the inventing company and CATI reap the financial benefits.
According to Curry, this package of ISP patents represents leading research into agricultural chemical technology, and is designed to convert insect and weed-control chemicals into consumer and environmentally-friendly products.
The patents available for licensing are categorized in five different groups, including:
• Group 1: Two patents that cover water-based, microemulsion delivery systems that potentially are applicable for a range of agricultural and household pesticides.
• Group 2: Three patents pertaining to technology that allow the development of “stable solid” or emulsion delivery systems of agricultural chemicals, wood preservatives, and similar systems. The technology enables the formulation of easily stored and shipped concentrates that can be safely diluted to working concentrations.
• Group 3: Two patents that cover a method of delivering pesticides or herbicides in a stable, water-based system. The system avoids the use of solvents and their environmental consequences.
• Group 4: This group includes two patented technologies used in the preparation of solid carrier systems that can be made into easily dispersed tablets. According to CATI, the value of this technology is that pharmaceutical, veterinary, or agricultural actives can be formulated as stable, solid dosage systems and reconstituted in water at the time of use. This can be done without the physical loss of an active ingredient during shipping or storage, which simplifies shipping and handling.
• Group 5: This “group” includes a single patent that protects a method of delivering an antifungal agricultural agent potentially in combination with other active materials, with possible applications in concentrated, combination treatments for crop protection. The agent is delivered as a dilutable microemulsion concentrate, which carries a high level of the active ingredient.
Curry said the partnership with ISP “is a great first trial” for the joint-venture model, and will complement the center’s current suite of agriculture-related technologies. ISP is a $1 billion global chemical company that manufactures specialty solvents used by large agricultural chemical companies to form crop-protection chemicals.
William J. Davis, chief patent officer and associate general counsel of intellectual property for ISP, said in a statement that his company has been “thoroughly impressed” by the CATI method of commercializing private-sector technologies.
“Indeed, this was a primary factor in our selecting CATI as our partner,” he stated.
As a non-profit, CATI is limited in how it can spend revenues. Venture investing, for example, would not be permitted, Curry said.