q&a: luis proenza, president of the university of akron

In Dr. Luis Proenza’s 12 years as President of the University of Akron, its revenue and research portfolio has more than doubled. Dr. Proenza has been involved in a range of national science and technology leadership positions since the 1970s.

This week, Dr. Proenza traveled to Cleveland to speak about recent changes in the U.S. patent system as a result of the Leahy-Smith America Invents Act. His remarks were part of the Ohio Aerospace Institute’s Protect Your Intellectual Property seminar.

Recently, hiVelocity spoke with Dr. Proenza about how the America Invents Act -- the biggest change in U.S. patent law in 60 years -- will impact Ohio universities, the role of higher education in the state's economic competitiveness, and open innovation practices that are being pioneered at the University of Akron.

What changed economically that made it necessary to alter U.S. patent law?

Technology has simply exploded in the last 20 years, and the rise in patentable inventions has been enormous. The agency has had difficulty keeping up.

The original patent law that was created in 1860s simultaneously did two things – first, it created a period of protection that incentivized inventors, and second, it furthered innovation. It created an open system that’s been very beneficial to the nation.

The new law brings our system into line with most of the patent systems in the rest of the world. This is at the basis of many countries’ economic advancement and prosperity.

Why do you believe the America Invents Act is important to Ohio's economy?

The legislation affects Ohio because it improves the support we can expect from the US. Patent Office. The new law provides the agency with more resources to deal with new patents. It creates a new framework based on “first to file” rather than “first to invent” that makes it easier for patents to be challenged during the review process. In the past, there were things that never should have been patented, and these will be caught earlier. It will discourage gaming and obfuscation tactics some have used. 

Explain broadly why it was necessary to change U.S. patent law in the first place.

During the 1990s and 2000s, it became clear that there were a number of aspects of the U.S. patent system that were causing difficulties. First, there was a huge backup in applications. Processing patents had become cumbersome and there were not enough staff. Also, some patents were being granted that should never have been granted, because they weren’t well-written and created problems of interpretation. In those cases, the underlying technology should not have been interpreted so broadly.

Second, in the 1990s and 2000s there was a challenge to American competitiveness. The growth of foreign economies increased their innovation capacity. If not exactly a threat, there was definitely a press to find ways to remain competitive. In 2007 and 2008, there were a series of pieces of legislation called the America Competes Acts that laid the groundwork for the kinds of technology innovations that the nation needed to engage in through education and research in order to sustain American competitiveness. There was a general recognition that the patent system could use some improvement.

Critics have charged that the new law will put smaller companies and startups at a disadvantage. Do you think this is true?

The patent process may get a little more costly, and that could favor established companies while also making it more challenging for startup companies. One of the concerns that remain is how university innovation, which often goes to startup companies, will be affected. The legislation is useful, but could be more costly.

How will the America Invents Act affect Ohio universities like the University of Akron?

We often deal with proof of concept ideas, many of which are later manifested in the creation of new companies. We often do this on a shoestring budget, and the law could impact universities’ ability to bring these ideas into significant commercial application.

At the OAI seminar, you’re going to discuss some ideas about American competitiveness. Can you share some of these thoughts?

Sure. I think we need to remain a leader in science, technology, math and education (STEM). We need to remain a leader in fundamental research in these areas. What we have been finding over the past decade is that many of the components of what people call the national innovation ecosystem are not well linked with one another. So we must find ways to improve the linkages between different elements of that ecosystem.

As an example, we have graduate students at universities who are engaged in research with professors. They may work on something innovative while they’re here, and by the time they leave, they may find something that’s patentable. Yet it might take a couple of years to patent it – maybe more – and by that time the student has lost interest and gone elsewhere. So the talent that is related to innovation and implementation is often decoupled.

One of the things that we’re doing at the University of Akron is creating synergies between different components of the innovation ecosystem. We want to ensure that students who are involved in innovation have a chance to work with existing companies that could ultimately be licensees. In doing so, we can create a new relationship.

We want to bring people that have potential solutions together with the companies and individuals that could become users of those innovative deas. So we’re creating synergy seminars that bring researchers together with, say, physicians that have a problem in orthopedics or wound healing. We let them describe the problem, and often we find a researcher saying, ‘Oh, I’ve got a technology that could have an impact on that.’

This sounds much like what’s happening with business accelerator programs around the state. They’re helping to match entrepreneurs with end users.

That’s exactly right. We know that universities are tremendously innovative, and that patenting and the creation of new companies at universities have really exploded. Yet the amount of research done at universities with the support of industry remains very low – it’s about 5-6 percent on average currently. Certainly, if universities help accelerate commercialization of technology, then it makes sense to work more closely with industry to understand the problems and have them see what technologies are emerging. We see this area as one of the disconnections in the innovation ecosystem that needs to be reduced by having strategic, synergistic partnerships with industry.

What are some examples of companies that UA researchers have worked with?

We’ve recently taken scientists from the Timken Company in Canton and the University of Akron and put them together in a joint laboratory. We have people working on problems of direct interest to industry, so we wanted to find out what is needed by industry and how we might accelerate the process. What Timken decided to do was take a group of researchers that are working on technologies and have these researchers become part of our team. So we’ll see what happens. It’s an entirely new model. We also do contract research work, and have other synergistic relationships.

Over time, we’ve learned how to manage this and companies are increasingly more open. They used to be very, very secretive and didn’t want to say what their problems were – they were afraid their competitors would find out, even though their competitors were dealing with the same challenges. Yet they need to have problems solved, and we know how to write nondisclosure agreements. Now they know they can’t solve all of their problems. Just as Proctor and Gamble has done, many companies are now seeking to ensure that more of their innovation comes from outside sources.

How does this relate to the efforts of Ohio Third Frontier?

Third Frontier needs to realize that open innovation needs to happen not just at companies, but also between companies and universities. The current mode is supporting growing companies. They’re not disregarding universities, but at the same time, I don’t think they’re yet creating that balance that I think is essential.


*All Photos Submitted

1. Dr. Luiz Proenza, President of the University of Akron.

2. Mary-Beth Wade, a graduate student, working in Dr. Landis’ lab.

3. Dr. Jessica Kemppainen.

4. Precipitation of a polymer sample by UA polymer science graduate student Andrea Charif.

5. Weighing polymer samples are (from left): Balaka Barkakaty, a postdoctoral researcher; Andrew McClain a first-year student in biomedical engineering; and Attila Gergely, a graduate student in UA’s polymer science program.