INTRODUCTION

University technology transfer in its broadest sense is the transfer of knowledge from a university to the public, and it happens in many ways, for example faculty publication, formal or informal collaboration with companies, students working with companies. However, perhaps the most formal method of technology transfer is when the Office of Technology Transfer (“OTT”) licenses rights to inventions to corporate partners. The history of technology transfer at the University of Michigan dates back over 90 years and this rich history is presented below.

EARLY 1920s

Mortimer Cooley and Establishment of Department of Engineering Research

During the late 19th and early 20th century, under the tenure of President James B. Angell (1871-1909), the University of Michigan aggressively expanded its curriculum.

The departments of dentistry, architecture, engineering, government, and medicine all saw significant growth during this time period. In 1896, the University established the College of Engineering and Architecture (the “College”) from a department within Literature, Science, and the Arts, where it had resided for its initial 43 years. Due to these expansion efforts, the College was primed to step into a leading role in engineering education. At the beginning of the 20th century the College established itself as one of the nation’s most influential engineering schools. The College eventually led to the establishment of a research administration function, which facilitated corporate-sponsored research.

Background

In 1904 the total enrollment at the University was 4,136 students, and 826 of them were enrolled in the College of Engineering and Architecture. 1904 was a year of major change for the College. Construction of the new engineering building, known for years as the “New Engineering Building” (now West Hall), finished and all offices, classrooms, and laboratories of the College were moved there.

Additionally, Mortimer E. Cooley was named Dean of the College of Engineering and Architecture, a position he held until 1928. Cooley believed that privately-sponsored research should be integrated into the College’s activities. It is possible that this view was influenced by great assortment of outside endeavors in which Cooley participated, including as a consultant to many municipalities on public utilities and infrastructure, appraiser of the Detroit Street Railways, an expert witness in patent and other types of litigation, a state engineer in the federal Public Works Administration, and a variety of others. Cooley likewise encouraged members of his engineering faculty to engage in private consulting, even devoting a separate chapter to the subject in his autobiography.

Sponsored Research and Establishing The Department of Engineering Research

Cooley first proposed his idea for privately-sponsored research in 1916, and received support from College of Engineering Alumni in Chicago, who Cooley and others, including President Harry B. Hutchins (1909-1920), valued as University collaborators. However, Cooley’s proposal remained unpopular among faculty members and industry leaders. It was not until World War I that the possibilities for sponsored research were clearly recognized. Inspired by the recent war efforts, the acting chairman of the Department of Chemical and Metallurgical Engineering, Clifford D. Holley, interested the Michigan Manufacturers’ Association (MMA) in sponsoring University research.

The MMA, which still exists today, was established in 1902 to represent the interests of Michigan manufacturers in dealings with the state government.

During the February 1919 Board of Regents meeting, a committee from the MMA discussed the potential benefits of a collaborative research relationship between industries of the state and the College of Engineering. The committee emphasized that other prominent academic institutions such as the Massachusetts Institute of Technology (MIT), University of Illinois, and the University of Pittsburgh had already begun participating in sponsored research. In response, the Regents created a committee consisting of Regents Hanchett, Leland, Clements, President Hutchins, Dean Cooley, and Professors J.E. Emswiler and A.E. White. The committee was to work with the MMA to further examine the University’s potential for a research relationship with outside industries. At the next meeting Regents’ meeting the committee concluded that:

The establishment of such co-operation will promote the work and influence of the University and greatly enhance its prestige and standing, and be the means of performing a definite and valuable service to the industries and people of the State. (Regent Proceedings, 1919, 505.)

Specifically, the committee proposed that the Department of Engineering Research (the “Department”) be established within the College of Engineering and Architecture. The Department would remain under the jurisdiction of the Dean of the College of Engineering. However, it would be led by a board-appointed Director, and consist of an Advisory Board and an Administrative Committee. The Advisory Board represented the interests of industries and the state, while the Administrative Committee was responsible for conducting the research work of the Department.

The Department was formally established in 1919. Initially, the growth of the Department was slow. Most faculty members were still not enthusiastic about the idea of industry-sponsored research, and manufacturers were hesitant to utilize the Department because of the lack of patent protection for discoveries made through its research.

In his autobiography, Scientific Blacksmith, Cooley shared his thoughts concerning the establishment of the Department:

The Department of Engineering Research was established in the fall of 1920. It was inaugurated to meet a very definite need. It makes available to industry, particularly Michigan and Midwestern industry, considerable research equipment and a faculty of expert engineers. This department is the official channel through which these facilities are made available to civic and industrial interests. … No degrees are conferred by the Department of Engineering Research, its function being largely administrative. It has acted as a clearinghouse for industrial problems, both practical and theoretical. … Should the postwar dreams all of us have for the College of Engineering materialize, these limitations will disappear, and there will be at the University of Michigan a research program which will contribute so greatly to the welfare of industry and civilization that we shall wonder why the program was ever delayed so long (pg. 115).

1924 Patent Policy – Patent Rights and Research Protection

Patent rights were an area of concern since 1916 when the idea of sponsored research was first proposed. In the fall of 1924, President Marion L. Burton (1920-25) received a letter from President Kinley of the University of Illinois, and Director E.R. Weidlein of the Mellon Institute of Pittsburgh concerning the “general problems” with engineering research at public universities. President Burton agreed with his colleagues and reported the letter to the Regents during the October 1924 Regents’ Meeting.

The Regents asked the Department’s Administrative Committee to submit a set of recommendations to address these problems. The Committee found that the current patent policy impeded the work of the Department and proposed to amend it. The policy was modified so that patents could be taken out in the name of the inventor, provided that their assignment was made to the Board of Regents. This modification was the first step in providing some protection to research done at the University.

However, there was still the question of establishing a policy concerning compensation, royalties, and license fees. The Administrative Committee and the Board of Regents concluded that it would be “unwise” to establish any official policy regarding compensation, royalties, and license fees because each case required separate considerations and actions. Instead, the Administrative Committee agreed to propose establishment of a temporary compensation policy which stated:

On motion of Regent Hanchett, final consideration of the above was postponed until a later meeting. Concerns regarding the patent policy were not addressed again until 1928.

MID 1920s

Regular Filing of Patent Applications Begins in the Mid 1920’s

By the mid 1920s, it was not wholly unusual for the University to file a patent application. The Regents, either directly or through the Regents’ Executive Committee, appears to have specifically discussed and addressed patent filings and technology transfer.

Regents’ Proceedings record discussions of such activities, with the minutes reflecting a consideration of filing premised on the notion that if the University did not file and application, a company might. (At this time, the patent system was based on first-to-file, and one need not have been an original inventor in order to apply for and receive a patent.)

Patent Applications

In June of 1925, the Regents authorized the filing of a patent application on by Professor Bailey “at his own expense, … on condition that Professor Bailey shall assign the said patent to the Regents of the University of Michigan for such disposition as they may direct,” and that the Regents shall reimburse Bailey for the cost of securing the patent out of royalties from licensing. Regents Proceedings, 1925, 632. (Regents’ Proceedings of May 1927 corrected the earlier proceedings to correctly refer to the invention as an electric motor.) Professor Bailey complied with this assignment obligation and retained patent attorney Charles W. Hills in Chicago. Regents’ Proceedings, 1925, 687.

In January 1926, Dean Cabot apparently proposed to patent a drug, the question of which was referred to a special committee consisting of the President, Regent Sawyer, and Regent Murfin. Regents’ Proceedings, 1926, 812.

Proceedings of the Regent meeting of September 30, 1927 (p. 320) indicate that the Regents approved of recent actions of its Executive Committee on September 2, 1927 to have “authorized application for patent in the name of the Regents of the University of Michigan on a mechanical device originated by Mr. Sawyer and used in the accounting system of the University Hospital. This device may be of general use an accounting systems and if no patent were applied for by the University certain manufactures of the office devices are ready to apply for a patent upon it.”

In February 1928 the University Secretary reported to the Regents on the patents upon inventions growing out of the work of the Department of Engineering Research, stating that “only one patent, No. 1,640,567 has actually been issued.” By this time, at least the following licenses had been granted (p. 452):

  1. To the Timken Roller Bearing Company of Canton, Ohio, a license to “An Automatic device for raven inspection of objects for minute flaws” by Floyd Firestone (Application No. 44,955). Regents’ Proceedings, 1928, 452; Regents’ Proceedings, 1926, 810.
  2. To the Timken Roller Bearing Company of Canton Ohio, a license to “A new and useful improvement in hook-up of electrical apparatus” by Floyd Firestone (Application No. 196,828)
  3. To the Detroit Edison Company “Electric Motor” invented by Benjamin F. Bailey (Canadian Application No. 327,308).

In response to these findings, the Department sought to find a solution that would produce formative work within the department and further bolster its growth and development.

LATE 1920’s

Significant Changes to Patent Policy: Patent Trust Agreement

During the 1928 March Regents’ meeting the Board asked the Administrative Committee to develop a comprehensive solution to the problems within the Department. The Committee turned to A.E. White, Director of the Department, to create a proposal that would address the issue of proper protection for sponsored research and promote the growth of the Department. The Committee approved White’s plan and it was presented to the Board during their April meeting. The primary purpose of his plan was to address the issues with the Department’s current patent policy.

The introduction of White’s proposal states:

The Director’s proposal consisted of four options (A, B, C, D). The details of each option are listed below:

The Committee agreed with the Director’s opinion that option A was the best course of action. Option A was eventually called the “Patent-Trust Agreement” and was later approved by the Board of Regents in the late Spring of 1928. It was not until the approval of this patent-trust agreement that sponsored research at the University took off and the Department saw significant growth and success.

Notable Research and Inventions

Most of the work that came out of the department during the 1920s was sponsored by the various industries of the state. While the majority of research projects were conducted by the departments within the College of Engineering, primarily the Department of Chemical and Metallurgical Engineering, a significant amount of research was also handled by the Physics Department of the College of Literature, Science, and Arts.

In 1923, another construction on another engineering building finished. The new building was called the East Engineering Building, while the old engineering building became known as the West Engineering Building. The Department remained in the West Engineering Building and most research work was conducted in the laboratories located on the 4th floor of the building.

Several projects throughout the 1920s resulted in significant work and notable inventions.

The Department of Chemical and Metallurgical Engineering completed a considerable amount of research concerning the ability of metals to operate in high-temperature environments. Professors A.E. White, C.L. Clark, and J.W. Freeman worked on the development and utilization of alloys in the high-temperature components of aircraft propulsion systems. The Department also researched different types of steel and evaluated their potential use in power plants and in the petroleum industry.

Physics Professor Benjamin F. Bailey, through research sponsored by the Detroit Edison Company, designed and developed a capacitor-type single-phase alternating-current motor. Early on the potential commercial success of the motor was recognized, and a patent, in accordance with the 1924 patent policy, was issued. The motor was extremely profitable, and was used as an equipment part for vacuum sweepers, washing machines, fans, sewing machines, and many other household appliances. This motor is considered one of the most important and successful inventions to come out of the Department during this time period.

F.A. Firestone, a professor in the Physics Department, worked on a project sponsored by the Timken Roller Bearing Company to improve the process of inspecting roller bearings. The research resulted in the development of an automatic device for the rapid inspection of object for minute flaws. This invention was patented in accordance with the 1928 patent- trust agreement. The exclusive license agreement between University and the Timken Roller Bearing Company is shown below: