On the Road: Bringing Science to Market
by Eve Jacobs
left to right: Laura M. Schepps, MBA, Director of Finance & Administration; Barbara V. Maurer, Esq, Patent Counsel; Vincent A. Smeraglia, Esq, Director; Tatiana Litvin-Vechnyak, PhD, Assistant Director, all from the UMDNJ Office of Patents & Licensing
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ot even a feverish flu can keep “the patent guy” down for long. His mile-high schedule sends him moving north to south, east to west along New Jersey’s highways and zipping along the electronic global thruways. Perhaps his arrival at UMDNJ five years ago created this need, or maybe he appeared in exactly the right place at the right time for a job that sorely needed his attention.
Lucky that the patent guy — also known as Vince Smeraglia — has big energy and a big personality to meet his position’s growing demands. Think of him in terms of a major bridge — connecting the University’s researchers with a world of commercial potential and intricacy that many had once perceived as foreign, and somewhat sinister, territory. A scientist by training and first career, as well as an attorney with the right background to protect intellectual property, he straddles these worlds with relative ease, speaking the specialized languages of both, inhibited by the boundaries of neither.
With a BS in biochemistry from Rutgers in hand, Smeraglia landed a first job at Cytogen Corporation in Princeton in 1989, where he did lab research in cancer diagnostics for seven years. The young scientist found a lunchtime lecture by a patent attorney so compelling that he boldly decided to take the giant step from “bench” to law school — so he could prepare for a career in “tech transfer.”
With the necessary background in science, he was accepted into the Franklin Pierce Law Center in Concord, NH, repeatedly ranked among the country’s top 10 in intellectual property law by U.S. News and World Report. After graduating, he worked for McCarter and English for one year and Rutgers’ Office of Technology Commercialization for six years before landing at UMDNJ, where he managed to double the number of license agreements signed in his very first year.
As Federal grant monies dwindle, income from the commercialization of intellectual property becomes ever more important to universities. “There is a lot of compelling, innovative research going on here,” says Smeraglia, but little of it traveled into the marketplace before the patent guy came onboard to teach, encourage and handhold through the complex, often tedious and always expensive process called technology transfer.
“Filing patent applications is time-consuming and resource-intensive,” he explains. The review process can stretch to several years, and the “inventor will have to spend a lot of time with a lawyer properly describing the invention and helping to refute patent examiners’ legal arguments of why the inventor should not get the patent.”
But this is a road that Smeraglia has walked down many times. He knows his way and doesn’t lose heart; and University inventors know they have a skilled, determined advocate to see them through the process. “As the review is going on, we are also aggressively marketing to pharma, diagnostic, medical device and biotechnology firms,” Smeraglia states.
“Success means a licensing agreement,” giving the licensee permission to use the invention to make a product, he says. The company will have to demonstrate safety and efficacy of the product to the FDA, which usually takes three to five years, but sometimes up to eight years. “We get a royalty — a percentage of the sale of the product,” he states, which is divided, according to a formula, among the University, the school, the department, the inventor and the Office of Patents and Licensing, which uses its small fraction of the pie to underwrite its operations.
“A licensed technology, if successful, can provide a terrific monetary benefit to UMDNJ and a solution to an unmet medical need for the public,” he says.
“Our University is an upstart, but we’re coming along rapidly,” states Smeraglia with pride. With 75 to 80 inventions submitted to his office annually for review, and ongoing relationships with more than 100 UMDNJ faculty members, the patent guy’s schedule won’t be slowing down anytime soon. In fact, his work-life will likely become even more hectic.
But he’s not worried. “I love this job,” he says. “It’s thrilling and it is an important and growing part of UMDNJ’s success."