UConn moves on multiple fronts to cash in on its research and technology incubation programs

Abhijit Banerjee

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After taking a leadership role at UConn’s Technology Commercialization Services program four years ago, Abhijit Banerjee and his team launched a deep search for ways to improve cash flow from discoveries and inventions tied to the university.

New reforms have begun to take root over the past two years, and as recently as this summer. These efforts go well beyond the university’s decision to finally enforce its five-year limit on residency in its technology incubation spaces in Farmington and Storrs.

In the fiscal year that ended June 30, UConn netted about $1.4 million from licenses and royalties of its patented intellectual property.

Banerjee — UConn’s associate vice president for research, innovation and entrepreneurship — said he aims to increase that to $2 million annually over the coming two years.

Two years ago, UConn engaged Ohio-based Innovaito – a consultant that specializes in monetizing university intellectual property — to thoroughly research the school’s patent inventory, Banerjee said. The project’s aim was to identify patents that weren’t being used to their full potential, he said. The study cost the university less than $50,000.

The examination turned up several patents that the consultants thought were being infringed, Banerjee said. So far, one lawsuit has been filed, and others could follow.

In April 2023, UConn joined the Research Foundation for the State University of New York and Worcester Polytechnic Institute in a suit against Samsung, claiming the electronics manufacturer infringed on patents related to algorithms and technology used to gather health data through electronic devices, including smartwatches.

Samsung refutes the allegations.

Filed in the U.S. District Court for Eastern Texas, the suit noted more than 200 million smartwatch users by the close of 2021, generating more than $40 billion in revenue. The ability to collect health data is a prime selling point, according to the suit.

The suit alleges Samsung’s devices use data and patented algorithms of Dr. Ki Chon, a biomedical engineer who worked, at various points, at UConn, SUNY and WPI.

“As a tech transfer office, we have one of the most important missions in the university,” Banerjee said. “We are the guardian angel for our patents. We protect them, we file them and make sure they are in the market for the public good. We also have a fiduciary responsibility for our faculty. So, these discoveries they make working 20-30 years of their life, they don’t miss out on the receipts that come out of it.”

Equity stakes

Banerjee said the university is also keen not to pass up on its fair share of profits from startups that prosper after incubating under its wing. Of the 168 companies that have participated in its TIP program in the past two decades, UConn has only taken equity stakes in 24 that were launched by UConn staff, students or graduates, and received startup grants, officials said.

Beginning last month, all new incubation program participants will have to grant UConn equity “in the single digits,” Banerjee said. That’s in exchange for the value provided by UConn’s incubator program, including access to the school’s library, equipment, faculty, students and more, Banerjee said.

The University is currently negotiating an equity stake in one potential startup eyeing space in the incubation program. Such equity can be worth millions of dollars if a technology really hits, Banerjee said.

“If you package that, it’s a lot of tangible and intangible offerings that we provide to our startups that we never accounted for in the past,” he said. “At the end of the day, you cannot run a program unless you are sustainable. This is a way to get some capital.”

Since 2003, UConn’s TIP program has worked with 168 companies, which have raised about $1.4 billion in equity, grants, revenue and debt funding, according to the university.

Two years ago, UConn hired two attorneys to concentrate on its intellectual property. Now, most of its applications to the U.S. Patent and Trademark Office are handled in-house, Banerjee said. That has produced better-quality applications and resulted in more than $400,000 in savings by not paying outside counsel, he said.

Banerjee said his team is also contemplating the launch of a venture capital arm for the broader Technology Commercialization Services program. That could take the form of a partnership with an existing venture capital firm that would get space in UConn facilities and access to its startups, he said.