While doing some IP due diligence I ran into a patent that claimed some art of interest to me. The art was very useful, but it was claimed by a Prominent Professor of chemistry at Well Known University (WKU). Digging a bit deeper I found that the patent had expired well into it’s lifetime due to non-payment of maintenance fees. So, let’s look at this a bit deeper.

Prominent Professor files a patent application in 1998 on said art and then shoots off a paper to Well Known Publication. Then in 2003, the USPTO grants a patent to Prominent Professor and is assigned to WKU. Fine.

If the patent had been generating royalties, it seems unlikely that WKU would have allowed the patent to expire. There is no record of transfer of ownership to another assignee either. My guess is that by the time of the final maintenance fee, interest in the patent was slim to none. Seeing no royalty income likely, WKU elects to allow the patent to expire. Not uncommon.

The work produced by Prominent Professor was funded by DoE. In short, Prominent Professor received public funding and then by virtue of filing for a patent, the technology produced by said public funding is denied use by the public unless they pay again for it in a royalty agreement, unless it was under exclusive agreement with another entity. Evidently the art sat fallow for a good dozen years until it expired. Prominent Professor and WKU got a feather in their caps, and industry and the public had to sit on their thumbs during the period of unproductive time.

This is but one example of a sham allowed under public law.