I had the occasion to have a conversation with a very prominent chemistry professor this week. He has many hundreds of publications and many, many patents. The fellow’s name would be familiar to many. As such characters tend to be, he was overflowing with ideas and enthusiasm. His energy was evident from the precocious stream of insights and commentary that flowed from his gurgling fountain of knowledge.
But something he said in passing caught my attention and for a moment halted my petit mal seizures resulting from overexposure to his relentless rhapsody of intellection and hypercogency. He chimed that not so long ago his University had been passively collecting a stack of patents generated by its faculty. They had been in no particular hurry to do anything with the IP and had only recently started to take an interest in it. He made a furtive attempt to strike a spark of interest in his patents and when met with silence, quickly retracted it back into its sheath.
In my travels I have encountered professors who have made faint reference to their patents, say, during a poster session, in the manner of weary gentry casually mentioning an obscure parcel of prairie in Oklahoma. Interesting, but yesterday’s news. Sort of a publication, but … not really. Not all profs have such a casual view of patents, however.
<<<<<< A snarky sentence was removed>>>>>>> … Apparently he was patenting most everything that spewed from his labs. Every permutation- methyl, ethyl, butyl, … futyl- was carefully covered by complex Markush claims so as to anticipate even the most clever work-around. It makes one wonder how such research groups are properly managed. Do you have an IP group and a public domain group? Should people doing the IP work be paid more?
What raises my hackles about university patents is this: As a result of the Bayh-Dole act, universities can be assigned patents to inventions that were funded by federal tax money. Superficially, it sounds like a decent idea. It sounds like it might facilitate technology transfer. What’s wrong with that?
Well, let’s see. A patent confers 20 year monopoly rights to the assignee (rarely the inventor) for a process and/or composition of matter. One obtains a patent in order to enjoy protection from infringement, or unauthorized use. In the case of a university, just who do they need protection from?? The public who paid for the research leading to the invention?
What kind of public policy is this? Public monies are disbursed competitively in the form of research grants which funds the research. The public pays for the bricks and mortar to keep the wind and rain off that new 600 MHz NMR in the new wing and for the journal subscriptions in the library. The public has to pay for the patent prosecution and the trips to ACS meetings to give a talk about the work (though rarely is there a mention that a patent is pending).
The public has to pay Chemical Abstracts Service for access to bibliographic information and copy fees or journal subscriptions or download fees to access the information. For a business to use the invention, a license agreement has to be negotiated and in all likelihood, will have to pay a fee upfront, well in advance of the first dollar of sales, and submit to annual audits. With any given patent, the University Tech Transfer Office may have already issued an exclusive license to someone else. In that case, tough luck.
Granted, some of the more IP savvy schools reap decent royalties from some fraction of their patents, i.e., MIT & CalTech. But I would say that they are in the minority. Most patents just consume money, not generate it. These unexploited patents merely serve as a barrier to the public who are trying to get product to market. It is quite easy for a chemist to reinvent a compound or process that has been claimed by someone else already. It is bad enough when it is your competition. It really stings when you are barred from practicing art that you unwittingly helped to pay for.
Let me sponge up the bile and make room for others to comment. What do you think about this issue? I’m probably just full of hot air.
Note: This is a revised post, with minor content editing.
Lamentations on Chemistry 
I agree with a lot of this. What started as a reasonably good and innocent idea (Bayh-Dole) has snowballed into something that is destroying the academic experience in quite a few places. Some professors are more worried about getting rich than doing good science, and that is unacceptable in my book.
The way any prof would get rich with those patents is probably by selling the patent to a company., which is where the technology transfer from academia to industry comes into the game.
But for patents that remain with the prof things are different: in principle they are not worth anything, even ifr someone else would be selling stuff covered by the patent. Have you ever seen a prof actively checking his patent portfolio for infringements?
At the end of the day, patents only have value if they allow you to make money from stuff others cannot do — or if you can keep others from making money. Both cases will never be found for a patent that is solely kept in academia.
Anything funded by public money belongs to the public and should be accessible to the public. This means that profs or universities don’t get to patent their research, but ought to publish it.
Many activities at the Boston school with a dome by the river have been funded by licensing fees for a certain medical imaging material.
Gaussling, can you send me an e-mail?
Two thoughts:
1) In my experience in tecnology transfer from Univeristies, I have found them to GREATLY over value the inventive step and GREATLY downplay the development, marketing and sales efforts. It only takes you a few years in industry to realize that not all ideas make it make it through technical development, and even then they can still be financial flops because of poor marketing and sales, all of which can be costly, and these costs are not shared by the universities.
2) While the “we paid for this with our tax money…” arguement is used a lot (not only with patents, but as justification for free access to research articles), it only makes sense on a national basis. Nobody in England, Germany, (insert ~ 170 additional countires here) paid US taxes, so it should be totally fair to make as much money as you can off of them, but how do you isolate them from us? (Regarding research publications, it would be impossible to make them available only in the country of their funding. Pirated copies would be rampant.)