My blogging output volume has dropped to a trickle, and what little of what is posted is just blather.  Despite the relative quiescence of this blog, the blogger himself is busier than a one-legged cat trying to scoot across a frozen pond. Unfortunately, the one-legged cat has to keep mum about the missing legs or why he is on the lake in the first place.  If I don’t stroke out from the chronic cortisol exposure, I’ll write about it all one day.

After some years in the industrial setting I am able to see why there is such a disconnect between academia and industry. The imperatives of the industrial chemist are dramatically different than that for a brother or sister chemist in academia. It is the job of the academic chemist to uncover new phenomena and tell the world about it. Oh yes, and teach a few students along the way. 

The industrial chemist’s job is to apply known processes or to uncover them himself for greater profit for the stock holders. The main difference is that the industrial chemist must keep the work secret, or more accurately, out of the public domain.

Why did I use the word ‘disconnect’?  Well, if an industrial chemist wants to collaborate with an academic partner, the matter of secrecy comes up.  If the academic cannot transmute the work into a scholarly publication for inspection by the promotion and tenure committee, then he has effectively been unproductive.  Academics turn funding into publications. Well, except for the 50 % of the money that goes into overhead support.  If an academic does collaborate with an industrial group, there is the very real problem for the academic of how to use the work for career advancement, i.e., publication. Just covering academic labor and materials isn’t really enough (or shouldn’t be) for the university workers.

Another issue arises in regard to intellectual property. That is the matter of secrecy withing an academic research group.  Say professor Smith has taken advantage of the Dole-Bayh Act and is performing research with the goal of applying for a patent. This very fact sets the group down a path that requires non-disclosure of results.   Several things have to be in place in an academic lab that are unusual for the academic setting, but normal for the industrial setting.

First, patent-seeking academics must be very quiet about their work during the critical concept development phases. One of the most disastrous things that can happen to a patent application is confusion relating to the matter of inventorship.  And one way to muddy the inventorship is to be careless about who is involved in technical discussions while the invention is in the formulative phase. In the university setting, group meetings with outsiders or uninvolved group members can lead to unexpected and poorly documented inventive contributions.

Word to the wise: You don’t have to wait for someone to complain about inventorship after the patent is allowed. If your own patent attorney, who is an officer of the court I might add, gets wind that someone was left off the inventors list during prosecution, he/she is duty bound to amend the application, possibly casting doubt in the mind of the examiner on the veracity of earlier signed documents. 

Playing games with the list of inventors is the fast track to rejection of the application. All inventors and assignees should clearly understand that your own patent attorney, the one whose boat payment you’re funding, answers to a higher calling, so to speak.  They have obligations and liabilities that you can’t  imagine. Help them get you a patent with the cleanest possible file wrapper.

An academic research group with more members than inventors probably needs to split the invention away from the rest of the group. This is a good opportunity for the patent attorney to school the group members on the patenting process and outline best practices. The research prof should outline a plant to partition the group in a way that disclosure is minimized. Notebooks and meetings should be carefully monitored in any event, but some kind of isolation is always best. 

Then the question arises of what to do with thesis work that arose from an incomplete patent project. What does the student get out of it? This is magnified even more if the professor is part of a startup company who indends to use the technology the grad student developed. Again, what does the grad student get of it?  A degree? For development services ingetting a startup off the ground?  Good question. Certainly there examples out there where these matetrs have been worked out.

My views on academic patenting have been expressed previously and I still believe it is terrible public policy.

It is plain that patenting in the academic environment poses special challenges and cultural changes for those hoping to get a patent.  In the industrial setting, such matters are normal and institutionalized.

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