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July 8, 2002

Technology transfer has bigger role

By Holly Korschun


Early in June, GlaxoSmithKline, Shire Pharmaceuticals Group and Emory signed the final agreement in settlement of global disputes and related U.S. litigation over certain patent rights relating to the drugs lamivudine and emtricitabine.

Patent rights refer to who “owns” a discovery, whether it’s a new drug or a new device, whereas “license” refers to who has the right to use the patent to produce a useable product. Both designations are important, because both have the potential to earn royalties for the institutions involved.

Under the terms of the somewhat complicated settlement, Emory received a license related to emtricitabine under patents held by Shire Pharmaceutical Group, a rapidly growing international specialty pharmaceutical company. Using the Emory license, North Carolina-based Triangle Pharmaceuticals, is now developing Coviracil® (emtricitabine) for the treatment of HIV infections.

Also under the terms of the settlement, Shire and GlaxoSmithKline (GSK), one of the world’s leading research-based pharmaceutical and healthcare companies, received licenses under Emory’s patents related to lamivudine. GSK developed and markets the drug Epivir® (lamivudine) for the treatment of HIV under license from Shire. Shire and GSK jointly market 3TC® (lamivudine) in Canada.

This announcement, like announcements of most legal settlements, was completed with precise legal wording and according to an agreement that severely restricted what could be said publicly at the time. Nonetheless, the entire release was immediately placed on Emory’s health sciences webpage and deans, departmental chairs, and the researchers involved were given more precise information at the time.

Emory's contributors to this work include Dennis Liotta, Samuel Candler Dobbs Professor of Chemistry; Raymond Schinazi, professor of pediatrics and senior research career scientist at the VA Medical Center; and former chemistry postdoctoral fellow Woo-Baeg Choi, president of FOB Synthesis.

“This is an example of the excellent science conducted by our outstanding faculty,” said interim Provost Woody Hunter. “Emory scientists have been at the forefront of research on HIV therapeutics for more than 15 years. Our Emory Center for AIDS Research and Emory Vaccine Center also include a group of the most respected immunologists and virologists at any university worldwide.”

Mary Severson, director of the Office of Technology Transfer, said after 10 years of steadily growing its program in technology transfer, the process through which discoveries are patented and licensed in order to move from the laboratory to the marketplace, Emory is beginning to reap significant financial, scientific and medical benefits from laboratory discoveries that have been patented and licensed to industry. Since 1991, when Emory hired its first dedicated technology licensing specialist, the University has made dramatic strides in moving research discoveries from its own laboratories into licensing agreements with established companies as well as with Emory-created start-up companies,

The financial benefits to Emory and its scientists, although modest compared to other funding sources, are beginning to return solid support for ongoing research programs. In 1991–96, Emory received nearly $8.6 million in royalties and fees through contracts with industry. Over the next five years, from 1996–2001, Emory realized revenue of more than $37 million from its technology transfer program, for a 10-year total of more than $45.7 million.

In addition to the direct financial return, Emory scientists have patented hundreds of inventions, created several successful new companies, forged strong ties with industrial partners, and licensed products that either are in use already or have excellent therapeutic potential and are currently undergoing testing through clinical trials.

“There are many excellent reasons for Emory to pursue the transfer of technology,” said Frank Stout, vice president for research administration. “It allows us to create products that benefit patients that might not exist without the protection of patents and copyrights and the ability to transfer intellectual property to industry. It also allows us to reward and recruit faculty. In addition, we view collaborations with industry to be a positive step in promoting economic growth and in generating income to support teaching and research.”

In 1980, the U.S. Congress enacted the Bayh-Dole Act, encouraging patenting and licensing of federally funded inventions for the public good. According to the Association of University Technology Managers’ (AUTM) 10th annual survey, this act has created opportunities for numerous significant scientific and medical advances as well as the formation of new companies that create new jobs and new streams of income that support further academic research education and corporate growth.

Emory’s Office of Technology Transfer matches researchers and their ideas with companies or individuals desiring to develop and market products. Researchers are guided through the patening and licensing process including review of conflicts of interest among researchers, the university and prospective investors. In addition, the tech transfer office provides companies a portal of entry into the university and access to information about investment opportunities. When Emory receives a royalty for a product, a percentage goes to the inventor and the remainder is funneled into continued research and support.

“One of the primary goals of technology transfer is to advance important research that otherwise might go unfunded,” Severson said.