April 14, 2000
Dovichi's sequencer a lesson in lost opportunity
DNA mapping device was developed in pre-technology transfer days
While he's excited about the role his DNA sequencer has played in mapping the human genetic code, Dr. Norm Dovichi says the story of his machine's development is mostly "a sad one." He and colleague Jianzhong Zhang started working on the prototype in the late '80s, but were forced to keep quiet about it through most of the '90s while they struggled to secure funding and patents.
In the end the patent ended up with a U.S. company, P.E. Biosystems. It sold 1,000 of the sequencers last year at a cost of $500,000 (Cdn.) each for total revenue of $500 million. The U of A's cut could have been about $1 million for 1999 alone, says Dr. Peter Robertson, director of the Industrial Liaison Office (ILO), but all it has seen is a modest $128,000. Dovichi's invention was developed in the days before the U of A had an ILO and a licensing process to ensure university inventors received their fair share of royalties.
"We agree with Norm it's a technology way ahead of its time, and now 10 years later it's coming to market and is worth a significant amount of money," says Robertson. "The university in those days was not very knowledgeable [about technology transfer], and so we probably did not do things as well as we could have. But of course that's partly why the ILO office did get formed. It was recognized these sorts of things were happening, and the university and inventors were not getting as much as they could."
In response to a proposal sent to the Natural Sciences and Engineering Research Council, for example, one reviewer argued since U.S. companies were probably doing similar research, there was no point in a Canadian university competing. The final sentence of the review: "$750,000 is a lot of money to spend on a sure failure!"
Dovichi and Zhang were forced to approach the U.S. Department of Energy for support, and in exchange the American government acquired the patents. The two researchers spent years trying to get them back and had a Toronto company ready to provide financial backing, but the delay cost them almost everything. Before Dovichi could file patents, a Japanese company he chooses not to name mysteriously filed their own patents based on the same technology.
"I know they heard me speak [at conferences]," he says. "I don't know if they figured out what we were doing, or found out through other means."
The two sets of patents existed concurrently for a time, he says, but because of complicated international trade agreements the Japanese ones carried more weight and covered the U.S., Japanese and German markets (the largest by far.) In the end they were sold to California-based P.E. Biosystems. They did the engineering on the machine and turned it into "an astonishing success story," says Dovichi.
Robertson stresses the purpose of the relatively recent ILO is not to make "huge sums of money" for the university. However it does entice researchers to work at the U of A, knowing they can benefit from the fruits of their inventions.
"In our best year two years ago-and we were the number one university that year-we made $4.3 million.It's small peanuts as far as the university's overall budget is concerned, but it helps attract and retain leading researchers and more research dollars to the university."