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The newspaper of The Johns Hopkins University May 1, 2006 | Vol. 35 No. 32
Homewood Schools Name Director for Intellectual Property

Jane Kuhl will work with faculty on tech transfer questions and paperwork.

By Phil Sneiderman

Homewood researchers have a new guide for moving their discoveries and inventions out of the lab and into the marketplace. Jane Kuhl's role is to protect the researchers' and the university's ownership rights while steering Homewood projects through the challenging patent and development process.

On March 1, she assumed the new post of director of the Intellectual Property Program for the Homewood Schools. In doing so, she filled a need that became evident after the university's technology transfer offices for Homewood and the School of Medicine merged several years ago. With the consolidated office now based in downtown Baltimore, Homewood researchers believed it would be useful to have their own expert on campus to answer tech transfer questions and help with related paperwork.

"I'm here to help that situation," said Kuhl, who has an office in the New Engineering Building. "Researchers will have all the advantages of access to the large central tech transfer office with all of its services, and they'll also have a 'local' person they can meet with here at Homewood."

Her position is funded equally by the Whiting School of Engineering and the Krieger School of Arts and Sciences. She reports to Eaton Lattman, dean of research for the Krieger School, and Marc Donohue, associate dean for research in the Whiting School. She will also attend meetings of the university's central technology transfer staff.

"We are fortunate to have somebody with Ms. Kuhl's experience directing tech transfer for the Homewood campus," Donohue said.

Lattman hopes Kuhl's hiring will help encourage more Homewood researchers to move toward commercializing their research and, in some cases, set up partnerships with private industry. Having a tech transfer representative on campus should make the process easier and more convenient.

"We feel that there is often only a slight difference in emphasis between basic research and research that leads to the creation of useful intellectual property," Lattman said. "So we would like the faculty to be aware of the value of creating intellectual property, both for themselves and for their labs, departments and school. We'd like them to feel there are support mechanisms to help them, to answer questions and to give advice."

Kuhl's intent is to expedite the tech transfer review of discoveries and inventions by Homewood scientists and engineers. This assessment is designed to determine whether Hopkins has a clear title to the breakthrough and whether the invention is distinct enough to qualify for a patent. The review also focuses on the invention's potential commercial value and how far along it is in development.

"My goal is to have the assessment done within 30 days of receiving a complete report from the inventor," she said. "If the invention scores high on all of the criteria, we probably would proceed on it."

In evaluating Homewood discoveries, Kuhl will draw upon her strong background in science, engineering and tech transfer. At Georgia Tech, she earned a bachelor's degree in physics and a master's in electrical engineering.

She spent 22 years at AT&T and its spin-offs, Lucent Technologies and Agere Systems. With these companies, she conducted optical fiber research and development and managed departments involving switching engineering and technical support for wireless customers. She also spent several years as a senior licensing manager, responsible for developing and licensing patent portfolios related to optical devices.

From October 2003 through early this year, she headed the technology transfer office and exhibits marketing groups of the U.S. Naval Research Laboratory in Washington, D.C. In a two-year period, her office tripled the number of technology licenses at the lab, she said.

That job, however, required an onerous commute between her home in Baltimore and Washington. The opportunity to do similar work for Johns Hopkins, just minutes from her Guilford neighborhood, prompted Kuhl to apply for the new post at Homewood.

Although she's only recently settled into her new office, she's already begun conferring with faculty members. "Those who are interested in tech transfer have already found me," she said. "Some have come in to talk to me about how the process here could be made better."

Kuhl is keenly aware that attitudes toward technology transfer vary widely among faculty members. Some professors prefer to focus solely on their own basic research. Others are eager to collaborate on projects with private industry, a course in which Kuhl and her colleagues can provide assistance. She plans to focus personally on engineering and physical science projects and refer inventions involving the life sciences to staff in the central tech transfer office with expertise in that area.

When a Johns Hopkins discovery does progress to the marketplace, the resulting revenue is split among the inventors, their lab, their academic department, their division and the university, according to guidelines established by the board of trustees.

Although the university ultimately may choose not to pursue a patent, and not all discoveries will lead to a lucrative payoff, Kuhl wants to make sure faculty members preserve their right to benefit from a breakthrough. If a journal article about a new discovery is published before an inventor has filed the proper paperwork, Kuhl said, his or her international patent rights may be lost.

By filing for a relatively inexpensive provisional U.S. patent, faculty members can preserve their ownership rights for at least a year, while Kuhl and her colleagues evaluate the long-term potential.

"The message we're trying to get out is that faculty members should never think that nothing's going to happen with their idea," she said. "They should put it down in writing for us before it is published so that we can get it protected."


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