Some years back I was an assistant professor of chemistry. I had a series of sabbatical replacement gigs and as a result had the opportunity to teach in a variety of chemistry departments across the USA. Eventually I got a tenure track slot at a department that had the critical enabler for an organikker- an FTNMR. It was interesting to compare the departments up close.  Honestly, I was treated warmly at every post I held. 

So, zooming back to the present, I can’t help but ponder the opportunities for academics and industry to collaborate.  From a distance, there would appear to be a great many benefits from academic/industrial alliances.  Synergies, even.  But now that I’ve been on both sides, my enthusiasm is limited.

At the most basic level, the imperatives of industrial and academic scientists are quite different. I am limiting my comments to experimentalists.  The unmistakable sign of progress for an industrial scientist is getting a profitable product to market. For an academic scientist, it is uncovering some insight and getting a publication.  Industrial scientists develop proprietary technologies and carefully guard company secrets.  Academic scientists develop technologies with the intent of folding the work into the big picture. 

In general, when industry wants something special from an academic, they want it kept quiet.  The academic must agree to the strictures of secrecy in order to play the game.  In fact, it is somewhat complicated for industry to engage an academic for some problem solving.  There is the problem of the ownership of inventions that may arise.  What if you engage the professor and his/her group to work on a problem and they invent something? 

For the professor, this is a kind of freelancing that the university may or may not be pleased about.  Who owns the invention? Most universities will require a professor to turn over the ownership of an invention to the university.  Who gets paid for work done in the university lab? Can the student use the work towards a dissertation? How do you handle having the professors work done in the same lab as the proprietary industrial work- do they have separate secret and open group meetings? Secret and public lab notebooks?  Is the professor being absolutely scrupulous about disclosure, documentation, and inventorship?  All of this can float to the surface during litigation and sink a patent or clinch a charge of infringement. 

If the company owns the IP, what’s in it for the university and the students involved?  If the University owns the IP, why should an outside company commit resources to fund it’s development? Licensing a university’s IP could work well, or it could tie your ankle to a boat anchor when competitors jump in the water, as they have a maddening habit of doing. 

One way to handle this matter is for universities to back business startups with their own IP.  This technology incubator approach been going on for quite a while now with some schools racking up spectacular results.  In the early Reagan days the Dole-Bayh Act enabled universities to patent work funded by grants from federal agencies. There are a few strings, but generally it isn’t onerous.

So, what is wrong with this? Seems like a vigorous way to get technologies and industries on stream.  Well, in a sense, it is.  But, think about it from a public policy perspective.  Is this what our universities should be doing? That is, using public grant monies for patenting compositions and processes and receiving a 20 year monopoly on its use? That is, barring the taxpayers who paid for it from practicing it?

Our university system is a key structural element of our vitality as an advanced technological culture.  Until recently it was accepted  by our society that resources are set aside for centers of learning and research and from this the culture as a whole reaps the advances through open access.  Most students pass through the system and move on to contribute productive activity in our industrial culture.  But the system will snare unusually productive persons who will make step changes that advance the system into new paradigms.  Their work in particular has been available for everyone to apply to the advancement of our culture.

Until recently, that is.  If you’re paying attention to this, and you do if you’re in industry, you’ll see more and more that the fabulous reactions found in journal articles may be claimed in one or more patents.  And these patents may not surface for several years.  I have yet to see an journal article where the authors are up front about this matter. 

It is quite possible for a company to adopt a literature transformation into a process only to find out well after the due diligence research that the process they have been practicing is suddenly claimed in a freshly issued patent. 

So here is the situation in a nutshell.  We pay taxes that fund a variety of grants that enable research at university institutions both public and private. We pay Chemical Abstracts Service to have access to the literature.  We pay ACS for memberships and journal subscriptions or downloads.  The work gets patented and we are either barred outright or are required to enter into a licensing agreement.  We pay fees up front to enter the agreement and pay royalities on sales.  Quite possibly, the technology has an exclusive licensee who then has a monopolistic hold on the technology and the public pays a premium for products manufactured under the monopoly. 

Oh, there is more. Since the university requires the faculty member to assign inventions to the institution, the institution pays for the patent prosecution and for the annuities for the lifetime of the patent.  For a US patent prosecution, figure nominally $15k to $50 k. But for foreign patents, there could be dozens of countries with many foreign law firms doing office actions that are orchestrated from the US patent attorney.  This means big bucks flow away from the institution years before any of that elusive royalty stream comes in.  The annuities on foreign patents come up every year, unlike US patents, so an institution is burdened with annual payments to keep the foreign patents valid.  And Gawd help you if there is litigation- US or off shore. That is when you open a big vein and the real bleeding starts.

The run up to litigation can be fantastically expensive.  At this point, you have many attorneys involved- a lead attorney, junior attorneys, mock trial specialists, jury consultants, videographers & transcript stenographers to record depositions, contractors who do graphics for presentation to the jury, and maybe even specialist litigators. Even IP specialists in companies have trouble grasping the possibilities.

One of the joys of owning a patent is paying defend it. In fact, seasoned patent experts will say that a patent is only as good as the last attempt to bring it down.

In the end, why does a unversity need to defend its IP?  Who is it defending it from?  The public? 

But that is the wrong question.  Universities get involved in patenting because they think that a revenue stream can be tapped from an invention.  There are cases where some inventions have paid huge royalties. But if you ask the patent office, they’ll tell you that they estimate that only 2 or 3 thousand of the million and a half or so patents in force actually make a profit for the owner. 

The matter of academic IP seems to be poor public policy and more people need to raise hell about it. If an academic wants to be a business person, then he/she should be a business person.  Raise the money and take the risks like the rest of us do.