From research to inventions to patents to products

Alicia Balog

Joe Ortiz has been teaching geology and researching climate change at Kent State since 2001, and an X-ray Fluorescence Scanner is a large part of his work.

However, the scanner, which can analyze the composition of sediments from around the world, also gives off potentially harmful X-rays. This led Ortiz to build a metal shield that can hold, raise and lower the device while protecting the user, like the lead vest a patient wears at the dentist.

He shared his invention with the university and obtained a provisional patent in 2009 and a utility patent application in 2010 for his device and began to market his product to interested companies.

“But unfortunately all of this happened right at the time the economy collapsed,” Ortiz said. “So there were no companies willing to go out to purchase the device at that time.”

Still, Ortiz said the experience is a positive one many professors pursue. He now has a device that helps him research sediment half-cores and learned how the university’s patent and marketing process works.

“Bringing those kinds of skills into the lab to help me build devices that will let me make more accurate measurements is something that I’ve always done since I’ve came here,” he said.

Why Kent State patents and licenses inventions:

Gregory Wilson, associate vice president of research in the Office of Corporate Engagement and Commercialization, said the university typically ranks high in terms in research productivity with its budget of around $32 million from the federal government, state and corporate funding.

Departments on campus perform research in various fields that usually lead to inventions like Ortiz’s. The university then tries to patent those innovations.

The university covers all the costs for the patent and shares in some of the revenue. Wilson said filing a U.S. patent usually costs around $7,000 to $15,000 because of legal fees and could reach a total cost of around $25,000 over several years because of maintenance fees.

Wilson said that the university earns revenues from licensing patents to different companies, such as Sony and Samsung, and the amount of money the university earns depends on which companies buy in.

Large companies sometimes pay several hundred thousand dollars up front for a license, he said.

“Then we have start-up companies which are short on cash, so sometimes we will take an equity position in the company, which means that you have an ownership position in the company.”

The money earned from licenses is not part of the research budget, Wilson wrote in an email. Sixty percent of the money from licensing goes back to the university for research and education, while the remaining 40 percent is distributed twice a year to the researchers involved.

Suguna Rachakonda, associate director of technology commercialization, said that the revenue is not the main incentive for the inventors — many of whom are graduate students — but is an added perk.

“For grad students, they get paid whatever their salary is,” she said. “But this is an added income for them.”

Wilson said the reason Kent State files and licenses patents is to benefit the economy, which he estimates has added 300 jobs to the local area through successful start-up companies.

“From new vaccines and medical devices to breakthroughs in your television, there are many different types – hundreds actually – of inventions that are very useful to the public and beneficial to mankind,” he said.

How patenting works:

Wilson said his office and the university patent board evaluate invention disclosures submitted by the researchers and decide which inventions the university will patent.

Outside legal firms write and file the patent applications and send them to the U.S. Patent Office. The patent could take two to six years to be finalized, Wilson said, and is effective as long as 20 years within the initial filing or 17 years from when it is issued.

“You try to work towards getting your patent application allowed by the patent office,” he said. “But you know not everyone gets allowed.”

The office works closely with the inventors while marketing the invention to interested companies. Wilson said they will license the invention before the patent is even issued, so the company can work on creating new products, which could take up to six years before the product is released to the market.

Wilson said the university can take additional time to see if there is interest in the marketplace by filing a provisional patent application before applying for an official patent.

What Kent State patents:

Wilson said the liquid crystal institute produces most of the display-based technologies patented over the years but has diversified with new products, including Crystal Diagnostics’ liquid crystal-based bio-sensor technology.

Crystal Diagnostics’ market is the food industry, especially with lettuce and meat products. The product tests the different food for pathogens by placing samples into a device where it sucks them into a vacuum to analyze the samples and release results in minutes.

“The benefit there is rapid and sensitive detection of various kinds of pathogens,” Wilson said, adding that the product should be on the market by the end of the year.

Rachakonda said the company, Kent Displays, sold the “Boogie Board” — a liquid crystal display tablet that people can write with — in the Kent State bookstore and to a Canadian company.

“The latest version of the same, similar product actually has a save button,” Rachakonda said. “That means so you can take this to your class and write notes on this and save it. And you have a power cord, which you can actually connect it and transfer it to a computer as your notes as a PDF.”

A complete list of patents Kent State University has filed is available online on the US Patent and Trademark Office website:

Contact Alicia Balog at [email protected].