OK, it’s time to poll the thundering masses. If you had to make a choice between subscribing to Beilstein or SciFinder for general access to the chemical literature, which would you take?? Let’s say that you needed to find compounds, articles, procedures, or see what the IP picture looked like. Forget TSCA registry and nomenclature services for purposes of this query.
Obviously, each has strengths. But if you had to take a side, what service would you take and why??
The authors at Anticipate This! provide a good resource for those of us interested in IP and patents. They have posted a summary of the recent KSR decision by the US Supreme Court. If you’ve never read oral argument transcripts from the Supreme court, I would urge the reader to do so. It’s fascinating. No matter what you may think of the Supreme Court Justices politically, as a rule they are exceptionally sharp characters.
We scientists spend very little time with lawyers and judges, other than for the usual public drunkenness or bitter divorce proceedings, so we may not have a calibration point for gauging their scholarly expertise. Certainly reading transcripts or an actual decision will give the reader insights into who turns the big boat and what the rationale was.
I’m not a legal scholar- I’m more like a NASCAR fan. I like to watch the legal wreckage go flying through the air and the pit crews scrambling for cover. In this case, it looks like the USPTO may have to scramble to recalibrate the measure of obviousness. Hey, pass me a beer …
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.
After a deep but unrestful slumber, I awoke to find myself in a dark wood. I cannot account for exactly how I came to be in this gloomy place. It is a hard thing to grasp even now. As I look back to that dark encampment, my heart quickens at the knowledge of what is to follow.
After many hours of climbing through the dense thicket, I chanced upon a path that lead through the gloom to a valley whose hilltops glistened in the morning sunlight. As I trod over a small hillock to the opening of the valley, I spotted a jackal some distance ahead in the path before me. I stopped to rest for a while and ponder the situation. As I rested, the fearful animal disappeared into the tall grass of the glade. Having lost some of my weariness, I again took to the sinuous path in the direction of the now rising sun.
The day wore on and the shadows retreated to their origin under the noonday sun. I began to notice large, flat field stones along the path. As I continued my journey, they became greater in number and were festooned with a great many lichen encrusted runes. The stones were partially buried and had evidently been organized at some time in the distant past. I am familiar with many styles of writing and symbols, but these marks were decidedly odd. Not only were they unfamiliar, but they were chisled by a hand accustomed to a wholly different way of using language. I found one particularly large stone with a great many markings on it. As I looked at the marks, I stepped around it to view the runes from different directions, trying to ascertain some form of structure and syntax.
What could these stones represent? After some time, I began to note that certain markings were found elsewhere, though in different combinations. Perhaps through inattention I wandered from the path for some distance into the glade. Finally, shaken from the enchantment of these stones I tried to regain my bearings. I struck off in the direction of a nearby col in the mountains, hoping to intercept the path by sundown.
As I broke a trail through the high grass a moving shape caught my attention. It was on the left side of my view and may have only been a bird taking flight from a shrub. I had nearly forgotten about the curious animal I spotted earlier in the day, so the movement startled me. Was it a shy visitor or a predator? Trying to take my mind off this unpleasant topic, my mind returned to the runes. What could they be saying?
[With apologies to Dante Alighieri- Th’ Gaussling]
To patent or not to patent, that is the question. An innovation comes along and you’re left with this question. Ask (n) colleagues and you’ll get (n+1) opinions. Ask a patent attorney and they will thrust a disclosure form in your face and firmly request documentation for an application. When you’re a hammer, everything looks like a nail. You can’t blame attorneys for prosecuting things- it’s what they do.
A comment on attorneys. Working with attorneys can be a very emotional experience. The fact that you need one says that you are probably involved in something that is too big for you to handle alone. In the case of patent work, you don’t have to be an attorney to file for and receive a patent. But in order to take the USPTO to an appeals court, you do have to be a member of the patent bar.
Back to the emotional bit. It is a thrill to see a good attorney working their heart out on your behalf. Watching them navigate the procedures during the discovery phase and on into litigation is an amazing thing to see. To read the transcripts of your opponents deposition is to understand what power is about. Conversely, watching the other sides attorney lunging for your throat (metaphorically, at least) with a procedural garrote, trying to lop off your reputation down to the bloody stump is terrifying indeed. The legal profession is a brutal and bloody business when it is aimed at you. But when they are working for you, they are jolly good chaps.
It has been my experience that the decision to patent is fundamentally a business decision. Once you pull the trigger on this, you set yourself up for a lengthy series of legal expenses. And, you leave an indelible and credible paper trail in the public domain. In some cases the expense and the sturm und drang is well worth the trouble. If you are a large company, you might have actual attorneys on staff to do the deed. If you are less than a large company, you will have to retain a law firm to do the prosecution.
When it comes to filing for a patent, is not uncommon for the client to heap everything onto the attorneys desk with a yellow sticky note saying “call me when it’s over”. This certainly one way to do it. But to do it this way is to neglect whay we even have attorneys at all. An attorney is a hired gun. They are your mechanical arm in the bewildering world of law. The attorney is working on the client’s behalf and the client really should be in the lead, backed up by an attorney, not the reverse. Easy to say but hard to do in practice.
In principle, the inventor and assignee should write the patent application, or at least the first draft. To do this forces the inventor/assignee to think through what the invention really means for them. After all, no one should know the art better than the inventor. And the inventor has some obligation to the assignee to assure that the art is fully captured in the appln.
The attorney is best used in wordsmithing the application to it’s final form. The attorney can anticipate the consequences of the language that goes into the appln. This is a huge contribution and is one of the main reasons you pay patent attorneys the big dough. Having an attorney slog through the basics of the art, patch together the concepts from notebook pages, and synthesize the claims is an expensive indulgence the assignee probably can’t afford. In short, the better researched and the tighter the copy you give the attorney, the more resources you”ll have for your next patent appln.
One of the chores that must be done when developing a new technology is “Due Diligence” as applied to intellectual property. In the fabulous world of industrial chemistry, there is an overlapping of the three great magisteria- Business, Chemical Science, and Law. In order to get a new product or process on stream, we must find a line of sight through the many hoops and past the many gatekeepers of those magisteria that can obstruct our path the fame and fortune.
First, allow me to pay homage to two great and wondrous database services- the United States Patent and Trademark Office (USPTO) and Chemical Abstracts Service (CAS). They are the custodians of data generated by some of the most cantankerous and unruly people on earth- lawyers and chemists. Their task is complex and effectively endless.
In actually trying to do a reliable due diligence analysis, a searcher must ascertain that a proposed bit of IP does not conflict with claims in valid patents owned by others. In a chemical IP search, one can divide the claim universe into 2 domains- composition of matter claims and process claims. In the patent, the first sentence will state whether a composition is being claimed or that a process is being claimed. Some patents have both composition claims and process claims.
So here is the problem. Let’s say that you are trying to determine whether or not you have the right to manufacture a particular molecule. This apparently simple question actually deconvolutes to two fundamental questions: 1) Is the composition of matter in the public domain? And, 2) are there claimed processes for it’s manufacture?
There is a third domain and that relates to the use of the composition. However, this does not impinge on the right to manufacture the material, just it’s use.
If the material is claimed as a 1) composition of matter in a valid patent, then you cannot lawfully make it or possess it (for commercial use, though precendence is being set for a bar on R&D use as well) without the permission of the assignee of the patent. Note that the owner of the patent is the assignee, not the inventor(s). If the composition of matter is not claimed, then it is in the public domain, assuming that you did not learn of it under trade secrecy.
So, let’s say then that your target material is in the public domain. Now the question is 2); does your proposed method for its manufacture infringe on claimed methods? This may be a hard or expensive question to answer, and the reason is plain. When you execute a search for IP issues related to a substance, you search path is limited to fields, key words, structures, CASRN’s, etc. that are flagged in the major databases.
A CAS search on a given compound will lead to patent families that mention the compound, its preparation, or its use. But you have no way of knowing whether the patent reference claims the composition, its preparation, or its use. It could very well be that there are no claims pertaining to the compound of interest- it was just cited as an example of some sort.
A CAS search is highly accurate in terms of the focus on a particular compound. However, a USPTO search is not. A chemical search of the USPTO public database (USPTO.gov) is pretty much limited to a search for specific character strings. It is possible to narrow down the scope of a search by concentrating on classification numbers, but I have never been convinced of its thoroughness.
After all of this set up, here is my point. The problem we all face in doing our IP due diligence is that there is no direct means for determining from an indication in a database search report whether or not a composition is in the public domain. A CAS search will not yield a clear yes or no, and the USPTO database search only retrieves hits that have the requested strings. Despite the advances in database technology, the user still has to collect all of the patent citations pertaining to the material and sift through them and interpret the claim language.
Wouldn’t it be useful to the public if an applicant for a US patent were required to collate the claimed compositions for uplink into a database? With such a “field” in a CAS or Beilstein search, you could tell in an instant if the composition was claimed. The same argument holds true for processes. At present, the “retrievability” of claimed art is poor.
Patent attorneys are likely to object along the following arguments: not all patents that you retrieve from a search on CAS or USPTO will be valid. Some patents will have expired naturally, others will have expired for non-payment of fees, and still others will have serious weaknesses that will only be apparent from an examination of the prosecution history as revealed in the file wrapper. Abandonment may be difficult to detect for abstracting services, as would flaws in the prosecution as documented by the wrapper.
Another objection that is unlikely to be openly identified is the matter of clarity. There is may be advantage conferred to assignees when a claim is a bit fuzzy. This may afford some manuevering room during an infringement action, though it might be hard to say who the beneficiary would really be. I would estimate that whomever had the most persuasive attorneys would prevail.
It would be interesting to hear from others about this matter.
The chemical business is, after all, a business. You have to make something that somebody wants. Brilliant ideas are a dime a dozen. Getting a new product to market is harder than you might expect, even if you have a purchase order in hand. The transition from bench to 1000 gallon reactor is often full of unanticipated problems. The process of forcing a new product or technology on a market that didn’t exactly ask for might be called “Technology Push”. The process of responding directly to a clear market demand is called “Market Pull”.
Market pull is a force that business types, especially the MBA’s, feel best about. It is easy to justify the allocation of resources to launch into a product development cycle that addresses a clear and quantifiable demand. Duh. It’s a no-brainer. That is, if there are no bottlenecks to get through. The merits of market pull are only valid if the proposed technology has been shown to work to specifications. Beware of the inventor who cannot produce a prototype to back his/her patent.
Technology push is a circumstance wherein a company has a product or technology that might stimulate demand if it were marketed properly. Now, an economist might say that there is no such thing as stimulating demand. They’ll patiently explain that this only stimulates an underlying demand that may not have been articulated. Whatever formalism you prefer, it is possible to dazzle potential customers with a new capability. Clever people can dream up applications that the original inventors could have never anticipated. Look at Symyx with their fantastic technology package for high throughput experimentation.
It is a bit easier to write a business plan based on market pull because the job of forecasting revenue flows should be based on measurable market conditions. Again, the assumption is that the proposed response to the market pull is a technology that works.
A business plan based on technology push has to incorporate estimates of acceptance of change. You see, technology push is the realm of the paradigm shift. Predicting outcomes from the early side of the timeline is very tricky. Customers for paradigm shift technologies may be scarce. Not all companies are interested in being an early adopter or a buyer of first generation technology.
Market pull is the domain of orthodoxy, of the rightous and proper company president who is also a CPA and who worked his way up the ladder from the accounts receivable department. Technology push is the domain of the engineers and scientists. These are the dreamers who know in their hearts that if you build it, they will come.
Successful technology companies are somehow able to give a voice to the technology people in the allocation of resources. Very often, these companies are managed by chemical engineers. While ChemE’s may not be trained in advanced synthesis R&D, they are involved in the scale up and economics of new processes. Chemists live in a 2-dimensional world of space and time. Chemical engineers live in the 3-dimensional world of space, time, and money. Their knowledge of economics is what causes them to rise to the top of the corporate ladder more frequently than chemists.
It seems to me that companies that thrive today are those who do both market pull and technology push. Market pull is the cash cow. Technology push is the seed corn for next years crop.
A few more blogs have been added to honored positions on the Illustrious Blogroll. Check them out. Lots of good bloggers (Bloggists?) with penetrating commentary on the current literature.
Blogging is a bit harder for industrial folk. Or should I say riskier? One of the unfortunate realities of working in Fabulous Industry is the matter of secrecy. You can’t discuss any of the fascinating stuff you work on with your buddies in academia. You know, chalk-talk stuff. The pay is good in industry (they fit you with golden handcuffs early) and the chemistry is fascinating, but the sad part is that it is nearly all confidential. When the conversation turns to sensitive material, people become noticeably uncomfortable. And they should.
Meetings with site visitors begin with the standard preamble- “You’ll recall that we are speaking under the conditions of our Non-Disclosure Agreement. We at MegaLithium Company are in the XYZ business and have no need for any information from you beyond what is required to evaluate the project. We really don’t want to know your secrets.” Usually a well manicured and coiffed senior honcho says this. If the sleeves of his white shirt are not rolled up and his head shines with a high gloss, he is probably one serious SOB. This would be the alpha male and his underlings will studiously follow his lead. Often, there is a tour following the meeting.
As you take the tour you’ll find that the guides are not appreciative of breaching the decorum of secrecy, so blatantly nosey questions can cause them to throttle back the gee-whiz stuff. It’s always best just to nod appreciatively, pay attention, and be grateful for what you get to see.
I’ve been on both buy and sell sides of the secrecy matter. I have hosted plant tours for visitors who were less than upfront with their intentions. You see, in the custom chemical Business to Business (B2B) world when someone requests a price and availability, there is some chance that they have no intent on buying anything. Their real intent may be to get scaled pricing and an estimate of the annual sales turnover for a product. It’s called competitive intelligence. And pricing intelligence is the most coveted of all. Typically, this is only true for customers who may be competitiors.
Here is some good advice. If you’re about to sign a secrecy agreement, look for a clause providing for the reduction to writing for all Information to be considered Confidential. These words are in bold because they are key words in a secrecy agreement. A good secrecy agreement will go to great pains to define what is meant by Information. If the other side is going to take you to task for a breach in confidentiality, then exact information that they consider sensitive had better be reduced to writing so you have a fair chance of avoiding a breach.
There was intellectual property-related death and mayhem in Chicago recently. A couple of patent attorneys and an office assistant were blown away by a disgruntled client. The 59 year old inventorhad evidently invested a considerable sum in lawyers fees trying to get a patent on his improved toilet for truck drivers. At some point the inventor learned that he had been pooper scooped by others who had been issued a patent.
The client crossed the tipping point somewhere and went non-linear. The enraged inventor entered the law offices and murdered 3 people. He was taken out by a SWAT shooter.
There is some interesting buzz over at the Volokh Conspiracy related to this matter.
Some posts back I made the plea for inventors to be more knowledgeable about the patenting process. The attorney should be asking the question- “What’s next?”, not the client. That is to say, the client really needs to take a more hands-on approach to patent research and prosecution. When it becomes a black box for the client, and the only part of it you can understand is the law firms invoice, it is a set up for misunderstanding. Every inventor seeking a patent should spend time at the USPTO website doing a prior art search themselves.
The attorney has ethical obligations in representing the client and they are institutionalized. On the other hand, an inventor has some obligation to be informed about the basics of patenting and what constitutes realistic expectations.
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.
Lamentations on Chemistry 