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Office of Technology ManagementFiscal 2008 Mid-Year Update

Patent Reform UpdateIn the fiscal 2007 annual report, we reported on the Patent Reform Act that passed in the House of Representatives in September 2007. This bill is of some concern to the University community who feel the proposed reforms will nega-tively impact our ability to obtain and enforce patents.

The bill, H.R. 1908 and S1145, is cur-rently being considered by the Senate. In April 2008 it was reported that the bill had hit a roadblock and was unlikely to be voted on by the Senate this year.

Also in April, a court struck down new patent rules that the U.S. Patent and Trademark Office (USPTO) had sought to implement. GlaxoSmithKline had filed a suit against the USPTO. The U.S. District Court for the Eastern District of Virginia ruled that the USPTO had overstepped its authority when it issued the regula-tions.

OTM Patent StrategyOver the past several months the office has been re-examining our patent strat-egy and its impact on the office’s patent budget.

Increasing attorney costs, filing fees, and domestic and foreign filings have required OTM to use deficit funding to underwrite part of our patent budget.

While the office will always be proactive about protecting the University’s intel-lectual property, we are also being more strategic in our assessment of when to file patent applications, particularly in foreign markets.

From Lesley Millar, Director, Office of Technology Management

Dear Colleagues,In January 2008, we welcomed Avijit Ghosh as our new Vice President for Technol-ogy and Economic Development. We look forward to working with him as he leads our system for commercialization of University of Illinois research.

This report highlights some of our activities in the first half of fiscal 2008 (July - December 2007). There have been important developments for several licensees, and our office is busy as ever making contacts and raising the profile of the Univer-sity’s research in order to meet our commercialization goals.

OTM’s Intern Program Featured The December issue of the new profes-sional publication Technology Transfer Tactics featured a story on the OTM’s IP Landscape Analysis. The electronic version of this publication has a circula-tion of more than 120,000 technology transfer and research commercialization professionals.

In an IP landscape analysis the OTM provides a report for investigators that details license opportunities and also commercial opportunities in their area of research.

To learn more about IP landscape analy-sis, contact otm@uiuc.edu.

Open Access ForumOn November 9, the OTM, in conjunction with GSLIS and the University Library, hosted a “Forum on Open Access, Alter-native Publishing Models, and Author Rights.” Featuring speakers from our campus, including Provost Linda Katehi, and from around the country, this event sought to inform and engage the cam-pus community concerning open access to intellectual property. Topics included current trends and issues in scholarly communication, open access and teach-ing, open access and tools for discovery, and the potential for open access to increase the dissemination and impact of research publications. Also discussed were various models for, or degrees of, openness, from open-access institution-al repositories to other alternative pub-lishing models. Each presentation was taped and is available to view at: http://www.otm.uiuc.edu/openaccess.asp

Other EventsThe Office continues to hold coffee break events in departments and units giving faculty, staff, and students the opportunity to meet OTM personnel in an informal setting. In the first half of the year these events were held at Beck-man, MRL, IGB, Natural Resources and Environmental Sciences, and the Illinois State Geological Survey.

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Updates

In the NewsWhile some of our deals require confi-dentiality, there have been some devel-opments with our licensees this year that have received some press attention and that we are proud to report.

BiolineBioLineRx Ltd., one of Israel’s leading drug development companies, and the University have entered into an exclusive worldwide licensing agreement for the research, development and commercial-ization of BL-4030, a small molecule for the treatment of cancer. By activating a cell death specific protein, BL-4030, developed by Professor Paul J. Hergen-rother from the Department of Chem-istry, induces apoptosis (cell death) in cancer cells.

Rim Semiconductor CompanyRim Semiconductor has acquired Broad-band Distance Systems, Inc., a wholly owned subsidiary of UTEK, an open innovation company focused on technol-ogy transfer.

Broadband Distance Systems, Inc. contains a worldwide exclusive license to an algorithm technology developed by Douglas Jones that is designed to enhance power allocation in telecommu-nications systems.

SmartSpark Energy SystemsSmartSpark Energy Systems, a power electronics company based on tech-nologies developed by Philip Krein and licensed from the University, secured Series A financing from Battery Ventures in October 2007. SmartSpark devel-ops products that support the efficient transformation of power used in renew-able energy technologies. SmartSpark will utilize this early financing to develop its SolarBridge product line. SolarBridge seeks to increase the adoption of solar power by lowering the cost and increas-ing the reliability of the inverter, one of the most critical components of a solar power system.

Yondelis approved for useYondelis, a cancer drug based on the research of late faculty member Ken Rinehart, has been approved for use in Europe.

In December 2007, The European Com-mission authorized Yondelis’ developer, PharmaMar, to commercialize Yondelis in the 27 countries of the European Union.

In the United States, PharmaMar has partnered with Johnson and Johnson for clinical trials, which are ongoing.

Yondelis, now obtained synthetically, is based on an extract produced by sea squirts, ecteinasciden, which Dr Rinehart isolated in 1990.

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Performance

Statistics Q1 + Q2(July 1, 2007 - December 31, 2007)

Disclosures 105

U.S. Patents filed 85

U.S. Patents Issued 19

Licenses & Options 19

Licenses to Start-ups 3

License Income $1,635,929

Patent Cost Reimbursed $420,717

Start-upsThree new start-up companies were licensed in the first half of fiscal 2008.

CleanmakeCleanMake provides IT professionals with scalable solutions to intelligently analyze, search, and mine valuable information contained in technical data. Their solutions help to reduce the cost of operations and technology development and mitigate risk. www.cleanmake.com

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LK4LK4 Technology Corporation licensed the University’s web accessibility wizard, a technology that provides a simple way to create highly accessible and standards compliant web versions of Office docu-ments that are more accessible and us-able by everyone, including people with disabilities. www.virtual508.com

NanoSi Advanced TechnologiesThe company’s silicon nanoparticles have several pivotal characteristics that may enable solar application.

Sponsored Research AgreementsThe Office of Technology Management worked with the Office of Sponsored Programs & Research Administration on more than 47 sponsored research agree-ments in the first half of fiscal 2008.

Tradeshows & Company MeetingsSo far this year, OTM has attended the following tradeshows & conferences:Farm Progress Show,World Dairy ExpoLicensing Executives Society Military Communications ConferenceNanoconRadiological Society of North AmericaMidwest Alternative Energy Forum

OTM met with the following companies:Dow CorningGE Healthcare Siemens Medical Johnson & Johnson Sigma Aldrich State Farm Finisar Thermo Northrup GrummanBeijing Wandong Medical EquipmentParamed Medical SystemsADM Cargill AdPharma Novartis Wyeth Decatur ElectronicsSoMat

OTM helps MarketMaker expandMarketMaker, developed by the Univer-sity of Illinois Extension, is an interactive web resource designed to connect food producers, distributors, buyers, and sell-ers to their specific consumer markets.

The Office of Technology Management has been working with Extension to license MarketMaker for use in other states, primarily through those state’s extension programs.

To date, MarketMaker has been licensed for use in 9 states, including Iowa, Ne-braska, Kentucky, Ohio, and Indiana. Ne-gotiations are under way with Colorado and South Carolina and ten additional states are in discussion.

The University of Illinois at Urbana-ChampaignOffice of Technology Management319 Ceramics Building105 South Goodwin AvenueUrbana, IL 61801217.333.7862; otm@uiuc.eduwww.otm.uiuc.edu

MTOInventors Title College/Organization U.S. Patent NumberPlacid Ferreira & Qing Yao Meso-Scale Parallel-Kinematics Nano-Positioning Engineering 7,239,107 XY Flexure Stage

Mark Spong, Romeo Ortega Method and System of Compensating Wave Reflections Engineering 7,245,102 in Transmission Lines

Youssef Hashash & Jamshid Ghaboussi Methods for Modeling Material Response to Applied Force Engineering 7,246,047

Chang Liu & David Bullen Electrostatic Nanolithography Probe Actuation Engineering 7,247,895 Device and Method

Larry Markoski, Paul Kenis, Eric Choban Fuel Cells Comprising Laminar Flow Induced Dynamic Beckman & LAS 7,252,898 Conducting Interfaces, Electronic Devices Comprising Such Cells, and Methods Employing Same

Kenneth Suslick, Neal Rakow, Colorimetric Artificial Nose Having an LAS 7,261,857Avijit Sen, William McNamara, Array of Dyes and Method for Artificial OlfactionMaragret Kosal

Latif Khan & Christopher Manrique Flotation Device and Method of Froth Flotation State Geological Survey 7,267,232

Paul Kenis & Theodore Tzedakis Microfluid Device and Synthetic Methods LAS 7,273,541

David Carroll, Joseph Verdeyen, Method, System and Apparatus for an Engineering 7,274,724Wayne Solomon, Daren King Enhanced Electrically Pumped Oxygen Iodine Laser

David Goldberg, Tian-Li Yu, Ali Yassine Methods and Program Products for Optimizing Engineering 7,280,986 Problem Clustering

Chang Liu & Xuefeng Wang Multifunctional Probe Array System Beckman, IGB, Engineering 7,281,419

Richard Masel, Su Yun Ha, Brian Adams Organic Fuel Cells and Fuel Cell Conducting Sheets LAS 7,282,282

Shun Lien Chuang, Jian Li, Rui Yang Interband Cascade Detectors Engineering 7,282,777

Chrsitopher Shade & Robert Hudson Analysis of Mercury Containing Samples NRES 7,285,419

Milton Feng, Nick Holonyak, Semiconductor Laser Device and Method Engineering 7,286,583Richard Chan, Gabriel Walter

Gary Eden & Sung-Jin Park Method of Manufacturing Microdischarge Devices Engineering 7,297,041 with Encapsulated Electrodes

Milton Feng Transistor Device and Method Engineering 7,297,589

Thomas Mackin & Zayd Leseman Apparatus and Method for Determining a Thickness Engineering 7,301,149 of a Deposited Material

Kevin Kim, Hyungsoo Choi, Microparticles Beckman & Engineering 7,309,500Young Bin Choy

U.S. Patents Issued in Q1 & Q2