Diagram shows components -- Sensay A, Antilles, and Sensay B -- arranged parallel to each other within an outer structure. The dimensions of the outer structure are labeled. It is 117mm long by 25 mm wide by 25 mm deep.

Miami faculty, small company team up to develop smaller, faster, more efficient computing device

We’ve all seen the message tacked onto the end of emails: “Please consider the environment before printing.” For those who do, indeed, consider the environment, digital often seems the better choice. Not printing that email saves a tree. Buying the digital version of a movie bypasses plastic waste. Holding a videoconference avoids the carbon emissions associated with travel to a face-to-face meeting.

But while having many of our digital possessions tucked away in the cloud may mean they leave virtually no footprint on our personal environments, they nevertheless leave a sizable footprint on the global environment. That’s because “the cloud” is actually millions of networked servers housed in huge data centers. According to an article in Yale Environment 360, “The biggest [data centers], covering a million square feet or more, consume as much power as a city of a million people. In total, they eat up more than 2 percent of the world’s electricity and emit roughly as much CO2 as the airline industry.”

Obviously, there’s no question of turning back; for environmental better or worse, digital is here to stay. So, where the analog world may have beat a path to the door of the inventor of a better mousetrap, the online world may beat a path to the door of the inventor of a better data center. That could end up being a team of researchers from Miami University and their industrial partner, Look Dynamics.

Powering artificial intelligence

The Miami researchers – Dave Hartup, Gokhan Sahin, and Chi-Hao Cheng in the Department of Electrical and Computer Engineering; John Femiani in the Department of Computer and Software Engineering; and Anthony Rapp in the Department of Physics – are working with photonic processing company Look Dynamics on a project funded by the U.S. Department of Defense’s Defense Advanced Research Projects Agency (DARPA). The project aims to create computing hardware that is not only smaller and more energy-efficient, but also faster, enabling higher performance hardware for artificial intelligence (AI) systems.

According to Hartup, AI, and specifically deep learning, are “hot topics” in engineering because of their use in technologies such as autonomous vehicles, advanced medical imaging, and remote sensing. But generating the powerful algorithms behind that AI requires computers that consume large amounts of energy and space. These issues of sustainability (all those data centers!) and portability limit the application of AI to applications where power and space are readily available.

In collaboration with Look Dynamics, Hartup, Sahin, Cheng, Femiani, and Rapp – along with undergraduate students Owen Hichens and Janelle Ghanem – are helping to overcome these limitations by creating hardware that functions in a completely different way from conventional computers.

A prototype of the novel AI optical processing hardware being developed by Miami University researchers and Look Dynamics.

Replacing electrons with photons

Conventional computers and devices that are controlled by conventional computers – like smart TVs, gaming consoles, and microwaves – are sometimes called “electronics” because they function by moving electrons along circuits. The flow of electrons is controlled by computer chip components called transistors. To process large amounts of information, computer chips contain many transistors, but adding too many slows down processing speeds. And using more transistors results in higher power consumption and generates more heat, which must then be dissipated by fans, which require even more power. So far, scientific advances have enabled a steady increase in the number of transistors on each computer chip, but there’s consensus among electrical engineers that a hard limit is on the horizon.

What the Miami team and Look Dynamics are working on is optical computing hardware. Instead of electrons, optical computing devices rely on photons, particles that make up light. Because photons are transmitted in free space, they are unconstrained by the need for circuits and transistors. As a result, optical systems are able to achieve a high degree of what electrical engineers and computer scientists call “parallelism,” efficiently performing many calculations and carrying out many processes simultaneously.

“The hardware we’re working on can implement AI algorithms 1,000 times faster with 1,000 times less power,” Hartup says, “and it’s 500 to 1,000 times smaller than conventional hardware.”

That’s exactly what’s needed to expand the use of AI to new applications where power and space are limited. New contexts require new AI algorithms, and the more efficiently those algorithms can be implemented, the more quickly technologies can be brought to market. Smaller algorithmic computing devices enable more portable, wearable, or seamlessly integrated technologies.

Enabling new AI applications

Hartup says portable technologies are of particular interest to project sponsor DARPA. Many of the things that AI is really good at enabling, like image recognition and the detection and tracking of moving objects, have obvious relevance to defense. That relevance is sometimes lost if the technology can’t be applied in the field.

“If you’re talking about something like advanced AI algorithms for image processing, you’re not going to carry around a rack of electronics capable of doing that,” Hartup says. “It’s too big and heavy. But with an optical system, it’s small enough and light enough to carry around.”

In the context of data centers, optical computers’ small size means improved sustainability. Swapping out conventional systems with smaller, faster optical ones could allow the physical footprint of data centers to be maintained or reduced, even as the proliferation of AI-enabled technologies ratchets up demand for computing capacity. And because optical computers use less electricity, data centers’ carbon footprints could shrink as well.

For all the complex technology involved, what the Miami-Look Dynamics team is doing boils down to something very simple: applying new design – optics – to make an existing, useful thing – a computer – even more useful. Metaphorically speaking, they’re building a better mousetrap, and DARPA has been the first to take what will surely become a well beaten path to their door.

Images courtesy of Dave Hartup.

Illustration communicating ideas and connections

TVSF applications being accepted through July

A man wearing a business suit touches a drawing of an illuminated lightbulb.Applications are being accepted for the University of Dayton-Miami University Technology Validation and Startup Fund (TVSF) on a rolling basis through July 2019.

Funded by a $200,000 grant awarded by the Ohio Third Frontier Commission and $200,000 in matching funds supplied by the two universities, the UD-Miami TVSF supports commercialization of technology developed at either institution. Commercialization can be accomplished either through collaborations with existing Ohio companies or through the creation of new start-ups in the state.

“The TVSF will allow both universities to stimulate more innovation and — more importantly — transfer the knowledge generated at each university to the Ohio community,” says Matt Willenbrink, University of Dayton’s Director of Technology Partnerships.

“This is an important step in furthering president Greg Crawford’s agenda to grow Miami University’s reputation for innovation and commercialization,” says David Taffet, Miami University Executive in Residence for Inclusive Innovation and Commercialization. “The matching funds Miami and Dayton have invested in this program signify the universities’ joint commitment to innovate at the speed of business.”

For more information, including guidelines and instructions for submission, visit the UD-Miami TVSF website. Questions about the program can be directed to Willenbrink, Taffet, or Miami University Associate Provost for Research, Jim Oris.

Ideas image by Geralt via Pixabay. Lightbulb image via Maxpixel, public domain.

Illustration communicating ideas and connections

TVSF now accepting applications

A man wearing a business suit touches a drawing of an illuminated lightbulb.Applications are now being accepted for the University of Dayton-Miami University Technology Validation and Startup Fund (TVSF). Funded by a $200,000 grant awarded by the Ohio Third Frontier Commission and $200,000 in matching funds supplied by the two universities, the UD-Miami TVSF supports commercialization of technology developed at either institution. Commercialization can be accomplished either through collaborations with existing Ohio companies or through the creation of new start-ups in the state.

“The TVSF will allow both universities to stimulate more innovation and — more importantly — transfer the knowledge generated at each university to the Ohio community,” says Matt Willenbrink, University of Dayton’s Director of Technology Partnerships.

“This is an important step in furthering president Greg Crawford’s agenda to grow Miami University’s reputation for innovation and commercialization,” says David Taffet, Miami University Executive in Residence for Inclusive Innovation and Commercialization. “The matching funds Miami and Dayton have invested in this program signify the universities’ joint commitment to innovate at the speed of business.”

For more information, including guidelines and instructions for submission, visit the UD-Miami TVSF website. Questions about the program can be directed to Willenbrink, Taffet, or Miami University Associate Provost for Research, Jim Oris.

Ideas image by Geralt via Pixabay. Lightbulb image via Maxpixel, public domain.

Panelists Candice Matthews, John Leland, Matt Willenbrink, Jim Oris, and Darrin Redus pose behind a table with a Miami University of Ohio Graduate School and Research tablecloth.

Panel discusses future of university and business collaboration

We had a full house for our panel discussion on the future of university and business collaboration, which was held last Thursday in King Library’s Center for Digital Scholarship. Approximately 60 people attended the event, titled “Innovation and Commercialization: Launching a New Era.” Panelists were Darrin Redus, Vice President of the Cincinnati USA Regional Chamber’s Minority Business Accelerator; Candice Matthews, Co-founder and Executive Director of Hillman Accelerator; John Leland, Vice President for Research at the University of Dayton and Executive Director of the University of Dayton Research Institute; Jim Oris, Associate Provost for Research and Dean of the Graduate School at Miami University; and Matt Willenbrink, Director of Technology Partnerships at the University of Dayton. David M. M. Taffet, Executive in Residence for Inclusive Innovation and Commercialization at Miami University moderated the discussion and Miami University President Greg Crawford delivered welcome remarks. The event was streamed live on Facebook; watch a recording above.

Photo and Facebook Live video by Kelly Bennett, Manager of University Social Media and Marketing Strategy, University Communications and Marketing, Miami University.


Photo illustration of the earth inside an illuminated lightbulb.

New inclusive innovation and commercialization initiatives provide opportunities for Miami students, faculty, and staff

Two new initiatives give Miami University students, faculty, and staff the opportunity to help usher in a new era of inclusive innovation and commercialization.

Miami University–AFRL Research Technology Commercialization Accelerator

Members of the Miami community are encouraged to work with technology transfer staff to identify patents or patent applications in the Air Force Research Lab’s (AFRL) open portfolio that match their current interests. These patents could supplement a current line of inquiry or jump start an innovation.

An agreement between Miami and the Wright Brothers Institute of Dayton gives Miami support in reviewing and accessing the Air Force Research Lab’s entire open portfolio of more than 1,000 patents and patent applications. The portfolio reflects the breadth of AFRL research programs.  Technological advances that include innovations in energy storage, healthcare monitoring, and advanced manufacturing go far beyond military sciences.

As a steward of taxpayer dollars, AFRL is committed to transferring technologies with non-defense applications to the commercial sector, where they can benefit everyday Americans.

“Miami University has a wealth of researchers and entrepreneurs with the drive and know-how to mature these technologies and bring them to market,” says David M. M. Taffet, executive-in-residence.  “The Miami University-AFRL Research Technology Commercialization Accelerator is a model for how a university can work at the speed of business.”

Among the ways students will be involved with the AFRL portfolio is through a capstone course in the Farmer School of Business, led by Wayne Speer, an instructor of marketing..

Students, faculty, and staff who are interested in exploring the AFRL open portfolio should contact either Matt Willenbrink or Jim Oris. Willenbrink is director of technology partnerships at the University of Dayton, Miami’s tech transfer partner.  Oris is Miami’s associate provost for research and scholarship.

Miami University–University of Dayton Technology Validation and Start-up Fund

Applications to the Miami University–University of Dayton Technology Validation and Start-up Fund (TVSF) will be accepted beginning this month.

Supported by matching funds from the Ohio Third Frontier program [link], the Miami-UD TVSF represents an innovation because it is a partnership between a public and a private institution and because it spans two regional job markets.

Initial applications will be for Phase 1 or technology validation projects. Ohio Third Frontier defines the objectives for Phase 1 projects as follows:

  • Generate the proof needed to move technology to the point that it is either ready to be licensed by an Ohio start-up company or otherwise deemed unfeasible for commercialization.
  • Perform validation activities such as prototyping, demonstration and assessment of critical failure points in subsequent development, scale-up and commercialization in order to generate this proof, with strong preference for these validation activities being performed by an independent source.

“We would like to see projects that have high commercial potential by enabling product or services that have competitive advantages,” says Willenbrink. “A successful application will clearly detail both the commercial potential and specifically how the funding will move the technology closer to being commercialized.”

The TVSF offers an accelerated path to commercialization because projects that receive Phase 1 funding are better positioned for success in Phase 2, the start-up phase.

“Phase I TVSF projects are managed by the universities and are designed to bring university technology closer to being licensed or spun-out as a startup company. Phase II projects are for companies to further develop Phase I efforts,” says Willenbrink.

Anyone at Miami who thinks they would like to pursue a technological venture is encouraged to contact Willenbrink and Taffet to discuss potential ideas and learn more about the application process.

Both the Miami University–AFRL Research Technology Commercialization Accelerator and Miami University–University of Dayton Technology Validation and Start-up Fund are designed to leverage Miami University resources to benefit the wider community. All Miamians — including those from traditionally underrepresented groups — are encouraged to explore opportunities for sharing their talent, knowledge, and skill through these programs.

Written by Heather Beattey Johnston, Associate Director of Research Communications, Office for the Advancement of Research and Scholarship, Miami University.

Lightbulb image by PIRO4D via Good Free Photos, public domain. The Five Cogs of Innovation image by Jurgen Appelo via Flickr, used under Creative Commons license.



A compass sits on a page of financial information.

New faces in Miami’s tech transfer and commercialization community

A slide rule used to calculate flight paths.

Two new members of the Miami University community are helping guide Miami as it charts a course for the future university and business collaboration, with a focus on inclusive innovation. We introduce them here.

David M. M. Taffet

Executive in Residence for Inclusive Innovation and Commercialization, Miami University

David M.M. Taffet has a career spanning law, investment banking, private equity, not-for-profits, turnarounds, buy-outs, management, retail, and real estate.

He worked his way through college and law school and has built his own businesses, meeting the payroll needs of hundreds of employees. He has raised close to half a billion dollars of debt and equity on behalf of his own and others’ ventures. He has evaluated the merits of others’ ventures, turned others’ enterprises around, and worked internationally in varied industries with geographically-dispersed operations.

“I have enjoyed the real-world experience essential to assuming leadership positions not with a sense of entitlement, but rather with a healthy appreciation of the work ethic and personal sacrifice necessary to complete the small things that prove fundamental in accomplishing great things,” Taffet says.

Earlier this year, Taffet was selected as Miami University’s first executive-in-residence in the area of inclusive innovation and commercialization. Taffet’s accomplishments in this position include the following:

  • An agreement between Miami University and the Wright Brothers Institute of Dayton, an entity that assists the U.S. Air Force Research Lab with technology transfer, interactions with the community, workforce development, and innovation. This collaboration created the Miami University-AFRL Research Technology Commercialization Accelerator and gives Miami support in reviewing and accessing the lab’s entire open portfolio of over 1,000 patents and patent applications.
  • A successful joint submission by Miami and the University of Dayton to the Ohio Third Frontier that resulted in $200,000 in state matching funds awarded for the creation of a technology validation and start-up fund (TVSF). The TVSF will invest in advancing technologies at both institutions that can be further developed into products by startups and other young companies in Ohio.
  • An agreement between Miami and the University of Dayton to share technology transfer services. The agreement provides more efficient services in Southwest Ohio by leveraging resources of the University of Dayton to provide support for patent exploration and other areas of development and commercialization for Miami research.

Matt Willenbrink

Director of Technology Partnerships Office, University of Dayton Research Institute

As part of the shared services agreement between Miami and the University of Dayton, Matt Willenbrink is now the point-of-contact for technology transfer at Miami.

For the past decade, Willenbrink has been the director University of Dayton Research Institute’s Technology Partnerships Office, where he negotiates research-related contracts (including license agreements), intellectual property matters and other legal matters. Prior to earning his MBA and JD, Willenbrink worked as a biochemist in industry.

Willenbrink’s office provides the following services to researchers from both the University of Dayton and Miami University:

  • Support in securing industrial sponsorship for research projects;
  • Development of appropriate research agreements with industry to protect institutional intellectual property rights;
  • Handling of intellectual property issues in government and industrial contracts;
  • Commercial development of inventions to generate royalty income from licenses to support the technology commercialization program and university research programs;
  • Support to obtain patents on university inventions and to license university technology to outside companies.

University of Dayton Research Institute’s technology commercialization program has been successful in developing and commercializing inventions such as phase change materials, the RULER and COAT (smart dipstick) technology, Autodamp/Autobeam software, material analysis and testing software (MATE), and advanced polymer materials.

Compass image by freeGraphicToday via Pixabay. Flight computer image by Duke via Wikimedia Commons. Both used under Creative Commons license.

Director Andor Kiss poses by the sign for the Center for Bioinformatics and Functional Genomics (CBFG)

Research facilities provide partnership opportunities

Miami University is well-known for being the top public university for commitment to undergraduate teaching. But our top-notch research facilities may be our best-kept secret. In addition to providing our students with excellent, hands-on training, these facilities also provide research and testing services to external clients and collaborators.

This video provides an overview of what we have to offer potential partners.

A typical 3D printing set-up. Includes a FELIX 3D Printer currently printing, a Macbook running 3D printing software and some example 3D printed objects.

Challenges loom for IP rights in 3D printing

CD with skull and crossbones icon and ‘music’ text.
Just as IP protections for digital music lagged in the early 2000s, IP protections for 3D printing lag today.

My father-in-law, Carl, ran a precision machining business for the better part of 40 years. Although he’s now retired, he still retains an interest in new technologies as part of his relationship with a local college. As my son approaches his 14th birthday later this month, Carl asked me if he had a 3D printer. The answer is no, but his question prompted me to think again about the larger implications of 3D printing and IP rights and how they echo the earlier challenges that arose with digital music and illicit, unlicensed downloads.

Unlicensed downloads posed significant challenges for higher education as the new millennium approached. Institutions found themselves hosting file sharing services such as Napster that often facilitated breaches in copyright law. For the music industry, it wasn’t just the establishment of digital formats and distribution as an industry standard, but also the data transfer speed students enjoyed in their dorm environs that opened the floodgates. As the music industry grappled with how to enforce their artists’ rights, higher education institutions (HEIs) began to face both philosophical and practical consequences as ethical, legal, and bandwidth issues coalesced and landed with a reverberating thud. As (sometimes inadvertent) hosts of peer-to-peer sharing systems, HEIs felt the heat from legislators, who began to approach the intractability of the problem with regulatory compliance rules. But for many of the music industry’s smaller and independent players – who struggled the most with how to preserve and protect their intellectual property rights – it was too little too late.

Federal lawmakers are often well behind the curve when it comes to dealing with unanticipated consequences of new technology paradigms, and many in tech transfer see similar issues looming with new additive manufacturing or 3D printing technology. Low entry costs and existing advanced computer aided design (CAD) software give a tremendous breadth of possibilities for 3D printing IP development. But with that development also comes the possibility of IP infringement.

Additive manufacturing is now an important part of many engineering and advanced manufacturing programs at colleges and universities worldwide. More than 7000 patent applications related to 3D printing have been filed in recent years, including one owned by Miami University. At a 2016 conference hosted by the US Patent and Trademark Office (USPTO), USPTO Deputy Director Russ Slifer indicated that patent filings related to 3D printing technology grew 23-fold in a five-year period (USPTO blog).

One key concern surrounds the IP that resides in a basic CAD file. In some circumstances the IP extends beyond a copyright that might exist in the file itself to patent rights attributable to the printed product. Therein lies an interesting distinction: copyright protection can extend to the digital domain, whereas the patent in the generic case relates to the object produced. A digital rendering of a patented medical device has little practical utility, but a digital CAD file of the device might be highly valuable.

US patent law provides remedies against infringers, as well as individuals or entities who induce others to infringe. In the earlier example of digital music files, most people – even those who have no experience creating or producing music – have some understanding of copyright comprising the artist’s intellectual property. How, though, would a typical end-user, especially a non-commercial home user, be aware of patent rights that might exist for a product that can be printed via a downloaded CAD file? Because the current patent rights enforcement regime requires the infringer (or those who induce infringement) to have knowledge of the existence of a patent, this leaves a loophole of sorts in the protections provided to innovators.

A second, and equally important aspect is the IP nature of the printed product itself. A digital CAD file of a three-dimensional figurine from a well-known movie franchise may be copyrighted, but the printed object itself may also be subject to various elements of copyright protection, as well as trademark protection. A large part of the challenge for companies or individuals who hold these IP rights is that the low cost of some of the new additive manufacturing devices could allow end users to bypass elements of the basic business supply chain that have precluded this type of infringement in the past.

Written by Reid Smith, Director of Technology Transfer and Business Partnerships, Miami University.

3D printer photo by Jonathan Juursema via Wikimedia Commons. Music piracy photo by Santeri Viinamäki via Wikimedia Commons. Both used under Creative Commons license.

Photograph of the south side of the White House. The flag on the pole on the roof of the White House is at half-staff. A fountain is active in front of the white house, there are leaves on the surrounding trees, and a row of red tulips runs in front of the bushes framing the fountain.

Export control regulations undergoing reform

A map of the world in which each country is represented by its flag. The outlines of each country are drawn on the map, with the flag being modified to fit within those borders.
As the numbers of international students and visitors at U.S. institutions grow, export control regulations will be of increasing concern for higher education officials.

The framework of export control regulations (ECR) in the United States is an immensely complex structure with historical underpinnings that date to the Cold War era. Much of the statutory authority for today’s laws dates back to the 1970s, yielding regulations that were designed to mitigate threats that have evolved greatly over the subsequent decades. The essential purpose of export controls remains the same, that being to require governmental authorization to export certain information and items to foreign entities, but the patchwork of existing regulations challenges even the most seasoned export control administrator due to the multiplicity of agencies and overlapping, highly technical nature of the regulations.

All Presidential administrations since Kennedy have undertaken various efforts at restructuring export controls to improve and enhance national security and foreign policy objectives. President Obama’s announcement in 2009 of a broad inter-agency review of export regulations was welcomed by industry. In remarks to the Department of Commerce Annual Export Controls Update Conference in 2010, the President said, “We need fundamental reform in all four areas of our current system, in what we control, how we control it, how we enforce those controls, and how we manage our controls.” The timing, though, invited speculation that perhaps a shift toward deregulation was afoot, in light of the administration’s work on the National Export Initiative (NEI). The NEI was indeed focused on economic growth, embodying the President’s stated goal of doubling exports between 2010 and the beginning of 2015. The Administration’s current export control reform initiatives were not developed as a component of the NEI and are expected to enhance and support current national security and foreign policy objectives with respect to items on the International Traffic in Arms Regulations (ITAR) munitions list and the Department of Commerce’s Commerce Control List (CCL).

In spite of the recent rise in enforcement actions against higher education institutions (HEIs) for violations of export control laws, there persists a misconception among many in the HEI community that export regulations do not apply to post-graduate educational institutions. While this deficit in awareness has not been a primary driver, or even a key factor, in the move toward recent reform initiatives, the impact on HEIs from the changes that have been proposed for implementation is expected to be mixed. These effects derive from the fact that HEIs collectively are an important locus of activities that reflect global-scale societal changes which are reshaping the risk landscape for militarily critical technology. University research and education is a fundamental driver of the rapidly increasing pace of technological development worldwide, channeling information into ever more freely-flowing conduits of knowledge exchange to a world population that is more connected and mobile than ever. These trends are well-represented on the campuses of many U.S. HEIs, with the Brookings Institution reporting that the number of foreign students on F-1 visas in U.S. colleges and universities grew almost five-fold between 2001 and 2012. Foreign students and visitors on campus, coupled with the long-standing ethos of openness in academia, present risk for HEI’s in certain circumstances related to “deemed exports.”

While the prevalence of export controlled research activities at universities remains relatively low, the risks and deficits in the intersection of these societal changes with export laws was laid bare in a 2007 report by the Department of Commerce’s Deemed Export Advisory Committee. These findings, together with the broader critique assembled by the National Research Council of the National Academies in their 2009 report “Beyond ‘Fortress America’: National Security Controls on Science and Technology in a Globalized World,” are generally acknowledged to have played a role in motivating the President’s strategy for export control reform. Succinctly summarizing the President’s strategy in remarks at the Business Executives for National Security Conference in 2010, Defense Secretary Robert Gates called for “higher walls . . . placed around fewer, more critical items” to address an existing regulatory framework that is excessively complicated and fragmented, with too much emphasis on lower risk items due to the way those items are classified, listed, and controlled.

The long-term blueprint for the President’s export control reform plan involves three overarching changes. The first change involves the creation of a single list of controlled items, merging the ITAR-based U.S. Munitions List (USML) and the Commerce Department’s CCL, while in the interim transferring thousands of items from the USML to the CCL under a new export control classification number, known as the 600 Series. The second major reform will result in a single licensing entity having jurisdiction over military and dual-use items, with the intent of producing more consistent and higher quality licensing decisions. A Single IT System to integrate these changes is proposed as an additional major reform. Finally, a single enforcement agency is proposed to streamline and harmonize coordination with existing intelligence infrastructure to produce more robust investigation and prosecution with fewer jurisdictional uncertainties.

Update on the Reform Process

In April 2013, the Departments of Commerce and State issued the first set of a number of anticipated final rules that will begin the process of implementing the first phase of the reforms laid out by the President and the Secretary of Defense. Additional rules were issued in October 2013, and January 2014, resulting in the transfer of thousands of ITAR controlled items (primarily parts and components) to the jurisdiction of the Export Administration Regulations administered by the Department of Commerce through the CCL. All of these items will now be classified under a new Export Control Classification Number (ECCN) structure designated as the 600 Series, with a smaller set of items now classified within 9×515 (satellites, spacecraft and components).

These new ECCNs remain restrictive, but pose new challenges for the university export compliance administrator in that they don’t follow the prior standard for dual-use technology established by the “use technology” definition. The technology controls applicable to these new categories may require more careful analysis of licensing requirements and more diligence in avoiding deemed export risk when items from these categories are involved in campus research activities. In addition to reclassification for items, changes have been made to reduce the vagaries and confusion of jurisdiction and classification by moving away from the old “design intent” standard to a new approach of specific enumeration of performance characteristics or other specifications for the highest levels of controls. When this level of specificity is not possible within the USML or CCL, a new definition for “specially designed” will be applicable. Both approaches are intended to apply more objective criteria to the classification process by moving away from the subjective standard of “design intent” that industry felt was the source of variability, uncertainty and risk in the commodity classification process. The newly classified 600 series items will also benefit from more flexibility in the tailoring of controls under the CCL regulations, affording many items the benefit of much more limited control based on item sensitivity, country of destination and end use/user, in contrast to ITAR’s “one size fits all” broad-based controls, which offer very few country-based exemptions. This, coupled with a new Strategic Trade Authorization exception, will benefit commercial exporters of controlled items, but is not expected to offset the increased burden of compliance review that the new rules will require for 600 Series and 9×515 items.

The Bureau of Industry and Security within the Department of Commerce maintains an ECR dashboard that periodically updates progress on the various elements of the President’s ECR priorities. The most recent update available indicates that final rules have been set for a number of categories, and implementations . However, it may be some time before definitions related to public domain and fundamental research, which are important to HEIs, are finalized and the Single IT System is fully implemented.

Written by Reid Smith, Director of Technology Transfer & Business Partnerships, Miami University.

Photo of White House by Black and White on en.wikipedia (public domain) via Wikimedia Commons.  Map and flag image by Merasoe via Wikimedia Commons, used under Creative Commons license.

Four schematics of a Lego figure of a man appear in white on a grey background. The figures are labeled Fig. 6 (back of the Lego figure, with arms and legs extended as though the figure were walking); Fig. 7 (front of the figure in the same walking-type pose as Fig. 6); Fig. 8 (back of figure in sitting position, with arms and legs extended straight out from the front of the figure); and Fig. 9 (front of figure in same pose as Fig. 8). Written at the top is "U.S. Patent Dec 18 1979 Sheet 2 of 2 Des. 253,711.

Inventors play critical role in patenting, licensing inventions

A yellow Lego figure "wearing" a blue uniform stands at the center of a green tile platform. The figure holds a black stick that touches a paper laid out on a drawing board in front of him. The paper has several schematics hand-drawn on it. The drafting table, which is made of white plastic tiles and grey plastic cubes and spirals, has a mini spotlight attached to it. Behind the inventor is some sort of machine -- it has a clear bubble on top of a grey wheeled cart with a corrugated pipe extending from it. On a shelf in the background, several plastic parts are stacked. Other plastic parts are on the floor surrounding the figure.

The innovation enterprise in academia is dependent on two complementary processes: the recognition of an innovation or discovery by the innovators, and the harvesting of those opportunities by the university. Because the pursuit of patents is costly and university budgets are constrained, the university must evaluate each case to assess its commercial potential and patent prospects prior to deciding whether to move forward into the patent process.

Patent preparation and prosecution are the most time-consuming elements of the commercialization process for most inventors. Because inventions tend to be very technical, the patent attorney assigned to the invention case usually needs substantial input and review from the inventor to best capture the key elements of the technology that will inform the scope of the patent claims. While patent attorneys will have technical expertise in subject matter areas they routinely handle, they also need the innovator’s input to structure the claim set and support those claims effectively.

Once the application enters the prosecution phase at the U.S. Patents and Trademark Office (USPTO), inventor input is critical to helping inform the USPTO about the prior art most closely related to the invention. The key here is to identify and report information that is material to the patentability of any claim in the application. This obligation extends to the inventors, the patent attorney, and any other individual (associated with the inventor or owner of the invention) who is substantively involved in the preparation of the application. In this case, the inventor does not have a duty to search for references or descriptions of closely related technology, but merely has to provide copies of the information about which they are aware through their work on the technology. This information is communicated to the patent office by way of an Information Disclosure Statement (IDS).

Section 2016 of the Manual of Patent Examination Procedures (MPEP) specifies that “a finding of ‘fraud’, ‘inequitable conduct’, or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.” Therefore, diligence must be applied when completing an IDS.

Responding to USPTO Office Actions also requires substantial input from the inventor. An Office Action is an official, time-sensitive notification indicating whether the patent is allowed or rejected (for reasons stated in the Office Action). If a claim is rejected for any reason, the patent attorney will seek analysis and input from the inventor to help overcome the examiner’s rejection(s). The inventor’s technical expertise and intimate knowledge of the invention are critical factors in convincing the examiner that the innovation should be allowed to issue as a patent.

In many cases, academic technology transfer offices have an inventory of applications and patents that need further development before they are marketable. This intellectual property must be marketed to potential licensees by the technology transfer office.

Often, the inventor’s role in marketing is simply to connect the technology transfer office with individuals who are already aware of the research program and have an interest in pursuing licensing opportunities. This is especially common when the inventor has partnered with a corporate research sponsor in the development of the innovation, and in many cases the corporate sponsor will have certain option or license rights through the funding agreement. In other cases, the inventor’s familiarity with the target market will provide potential leads.

The technology transfer office will also attempt to establish leads by examining ownership of related patents, reading market research reports from subscription services, conducting independent analysis of potential product markets, and leveraging business contacts and relationships. The inventor should be active in asking about marketing strategy and offering to review potential target lists. Later in the process, the inventor will likely be asked to assist with the review of marketing materials, or to meet with company representatives to provide insight on what makes the innovation commercially valuable.

Once a licensing negotiation has begun, the inventor can assist with the process of identifying opportunities for non-royalty components, such as appropriate milestone achievements for future development, future sponsored research to continue with development of the technology, or consulting opportunities.

Although some inventions from the academic realm may have found significant commercial success without substantial assistance from the inventor after issue of the patent, a hallmark of most successfully commercialized academic inventions is a motivated inventor or group of inventors who communicate a vision for achieving a successful outcome for an innovation that is measured in terms that extend beyond royalty rates or license fees. Public benefit from an invention or discovery is derived in a number of additional ways, such as transfer of knowledge and research resources. Each element of success relies on a partnership between the inventor and the technology transfer office.

Written by Reid Smith, Director of Technology Transfer & Business Partnerships, Office for the Advancement of Research & Scholarship, Miami University.

Lego patent image via Flickr user Vera de Kok (U.S. patents published prior to 1989 are copyright-free).  Lego inventor image by crises_crs via Flickr, used under Creative Commons license.