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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