A ‘Deal of Distinction’

Green Chemistry Partnership with BASF Wins Recognition

By Chris Bryant

LES selected for honor one intellectual property deal brokered during the past year from each of its six industry sectors. The UA-BASF deal won within the Energy and Materials Industry Sector.
LES selected for honor one intellectual property deal brokered during the past year from each of its six industry sectors. The UA-BASF deal won within the Energy and Materials Industry Sector.

The Licensing Executives Society named an agreement between The University of Alabama and chemical giant BASF one of its “2006 Deals of Distinction” in connection with its annual meeting in New York City in August.

“The award-winning licensing deal between BASF and The University of Alabama is a great example of how a major chemical company and a university can build new and promising relationships through technology licensing,” said Bob Payne, 2006 chair of the LES Chemicals, Energy and Materials Industry Sector.

UA’s team which licensed the technology and negotiated the deal with BASF included Dr. Marianne Woods, associate vice president for research; Dr. Dan Daly, director of both technology transfer at UA and the University’s Alabama Institute for Manufacturing Excellence; Michael Spearing, an attorney in UA’s Office of Counsel; and Dr. Robin Rogers, the Robert Ramsay Chair of Chemistry and director of UA’s Center for Green Manufacturing.

The UA/BASF partnership was recognized for “The Ionic Fluids for Cellulose Processing Transaction.” In March, BASF and UA formalized BASF’s exclusive licensing from UA of patents covering the use of ionic liquids to dissolve, regenerate and process cellulose – found in the cell walls of trees and other plants – as well as an arrangement for continuing research by UA for BASF concerning the use of ionic liquids with cellulose.

Ionic liquids are a new class of solvents that typically are not flammable, do not evaporate, and exhibit high thermal stability. By using cellulose in new ways, the researchers have the potential of creating new materials with improved performance and requiring less petroleum to manufacture.

In 2005, a University of Alabama research team, led by Rogers, a faculty member in UA’s College of Arts and Sciences, was presented with one of only six Presidential Green Chemistry Challenge Awards. The UA team was the nation’s academic winner and won the award for demonstrating a new way to dissolve and use cellulose in producing environmentally friendly materials.

Shown at the award presentation ceremony are, from left, Robert Payne, chair, LES Chemicals, Energy and Materials Sector; Calvin Emanuel, BASF new business development manager; and Marianne Woods, associate vice president for research at UA.
Shown at the award presentation ceremony are, from left, Robert Payne, chair, LES Chemicals, Energy and Materials Sector; Calvin Emanuel, BASF new business development manager; and Marianne Woods, associate vice president for research at UA.

LES selected for honor one intellectual property deal brokered during the past year from each of its six industry sectors. The UA-BASF deal won within the Energy and Materials Industry Sector. Intellectual property is new knowledge with commercial applications.

In October 2004, UA started a technology transfer office, directed by Daly, which aggressively markets intellectual property developed by faculty.

“This year, we are proud to recognize six transactions that exemplify the theme of creation through licensing,” said Jake Schaible, chair of the LES Deals of Distinction Award Committee, “and it is especially satisfying to highlight several of these deals which not only are good business, but aim to improve the health of society or the quality of our environment.”

In addition to the UA/BASF deal, others honored were:

  • Proctor & Gamble and Gillette in the Consumer Products Industry Sector
  • Paul Capital Partners and Verus Pharmaceuticals Inc. in the Financial Markets Industry Sector
  • Biogen Idec and PDL in the Healthcare Industry Sector
  • Los Alamos National Laboratory, Sandia National Laboratories, Science and Technology Corporation at the University of New Mexico, New Mexico State University, New Mexico Institute of Mining and Technology, The MIND Institute, and the National Center for Genome Resources in the High Technology Industry Sector
  • The Global Alliance for TB Drug Development and Bayer Healthcare AG in the Industry/University and Government Laboratory Transactions Industry Sector

The LES Deals of Distinction Awards Program aspires to recognize worthy transactions involving licensing and transfer of intellectual property and promote creative and innovative solutions to business issues involving contracts, according to the LES release.

Nominations with the support of a LES member are considered and recommended by the LES Deals of Distinction Awards Committee, with input from the industry, and ratified by the LES Executive Committee.

The criteria for the 2006 awards include distinctive deals in structure or objective, announced in 2005, with at least one party having a presence in the U.S.A. and Canada.

Established in 1965, the Licensing Executives Society (U.S.A. and Canada) Inc. is a professional society comprised of over 6,000 members engaged in the transfer, use, development, manufacture and marketing of intellectual property. The LES membership includes a wide range of professionals, including business executives, lawyers, licensing consultants, engineers, academicians, scientists and government officials.

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