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Recently I had the good fortune to get to meet for a consultation with a young and talented chemistry professor (Prof X) from a state university elsewhere in the US. Prof X has an outstanding pedigree and reached tenure rather rapidly at a young age. This young prof has won a very large number of awards already and I think could well rise to the level of a Trost or a Bergman in time.

Not long ago this prof was approached by one of the top chemical companies in the world to collaborate on some applied research. What is interesting about this is that the company has begun to explore outsourcing basic research in the labs of promising academic researchers. I am not aware that this company has done this to such an extent previously.  They do have an impressive corporate research center of their own and the gigabucks to set up shop wherever they want. Why would they want to collaborate like this?

R&D has a component of risk to it. Goals may not be met or may be much more expensive that anticipated.  Over the long term there may be a tangible payoff, but over the short term, it is just overhead.

The boards and officers of public corporations have a fiduciary obligation to maximize the return on investment of their shareholders. They are not chartered to spread their wealth to public institutions. They have a responsibility to minimize their tax liability while maximizing their profitability. Maximizing profit means increasing volume and margins. Increasing margins means getting the best prices at the lowest operating expense possible.

Corporate research is a form of overhead expense. Yes, you can look at it as an investment of resources for the production of profitable goods and services of the future. This is what organic growth is about. But that is not the only way to plan for future growth. Very often it is faster and easier to buy patent portfolios or whole corporations in order to achieve a more prompt growth and increase in market share.

The thing to realize is that this is not a pollenization exercise. The company is not looking to just fertilize research here and there and hope for advances in the field. They are a sort of research squatter that is setting up camp in existing national R&D infrastructure in order to produce return on investment. Academic faculty, students, post-docs, and university infractructure become contract workers who perform R&D for hire.

In this scheme, research groups become isolated in the intellectual environment of the university by the demands of secrecy agreements. Even within groups, there is a silo effect in that a student working on a commercial product or process must be isolated from the group to contain IP from inadvertant disclosure. The matter of inventorship is a serious matter that can get very sticky in a group situation. Confidential notebooks, reports, and theses will be required.  Surrender of IP ownership, long term silence on ones thesis work, and probably secret defense of their thesis will have to occur as well.

While a big cash infusion to Prof X may seem to be a good thing for the professor’s group, let’s consider other practical problems that will develop. The professor will have to allocate labor and time to the needs of the benefactor. The professor will not be able to publish the results of this work, nor will the university website be a place to display such research. In academia, ones progress is measured by the volume and quality of publications. In a real sense, the collaboration will result in work that will be invisible on the professors vitae.

Then there is the matter of IP contamination. If Prof X inadvertantly uses proprietary chemistry for the professor’s own publishable scholarly work, the professor may be subject to civil liability. Indeed, the prof may have to avoid a large swath of chemistry that was previously their own area.

This privatization of the academic research environment is a model contrary to what has been a very successful national R&D complex for generations. Just have a look in Chemical Abstracts. It is full of patent information, to be sure, but it is full of technology and knowledge that is in the public domain. Chemical Abstracts is a catalog and bibliography that organizes our national treasure. Our existing government-university R&D complex has been a very productive system overall and every one of us benefits from it in ways most do not perceive. We should be careful with it.

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It turns out that I like Russian fiction. On a lark I picked up a collection of short stories by Nikolai Gogol on Amazon (ISBN 978-0-14-044907-5). It was worthwhile. 

Actually, it wasn’t such a lark. I was looking for a copy of Diary of a Madman.  The idea was to find a cutting for an audition, in case such an opportunity arose.  Gogol’s Diary of a Madman and The Government Inspector have been performed for generations and, as usual, I’m the last of my age cohort to read it.

I spend my days supervising chemical research, doing reactive hazard studies and IP analysis. From the job description point of view, I’m a walking, jabbering freak. How the hell am I going to get a job elsewhere with a resume like that? HR will look at it and, failing to find an exact match in their organization, toss it into the discard folder.  I don’t fear chemicals, but I do fear HR.  HR is the bane of our profession.

Back to the day job, these areas are basically writing activities and occur at a desk. It has occured to me that working at a desk is more dangerous than working with chemicals.  You soon get fat(ter) and stressed. It’s not good. 

It is funny how job descriptions differ. Many colleagues have jobs where they execute some task by bringing something into a predetermined structure. By that I mean, an analyst performs a standard procedure or the QA manager documents data for a product cert. An accountant performs procedures in the general ledger according to rules. Their work is reasonably well defined and they know when they are done.

Not a single thing I do is amenable to this kind of structured performance.  The chemistry stuff is experimental and involves sorting out what the hell happened. That’s just the nature of applied scientific investigation.

The IP work involves searching for information. If you find a relevant patent, well, you might be near the endpoint. Lucky day. But if you don’t find claims on a composition or a process, it’s a negative result. You have to ask if your search strategy was adequate. Anyone who has used a search engine knows what I mean. Sometimes, you don’t pick the best search terms and you come up with junk. Eventually you blunder into the right term and find the mother lode.

Sometimes an information search becomes dendritic. You find yourself bobbing along in the brackish waters of the “merely interesting”. So, you back up and revise the search terms.  Doing an IP search for an exact composition in CAS is very straightforward. A structure search or a CASRN search is very reliable and fast.

Much time can be wasted with patents that use compositions or processes but do not claim them. In particular I mean patents that mention compounds in the description (or specification) but do not claim them in the claim section.  A great many patents may be served up in the list of hits in this way. How you deal with this depends on what you want and what kind of search tool you’re using.

If you are interested in a class of compositions or the range of technology that might be out there, this is a kind of search that is more dendritic and subject to stranding in cul de sacs. If you do not use Chemical Abstracts Service in some way, your options become restricted.  There are many IP services that tap the various patent offices around the world. Some seem to have their own databases. Many seem to focus solely on searching the patent data through clever use of search terms or the patent classification system. For prior art searching, this is inadequate. For the most part, only CAS can provide reliable hits if a compound was reported in Acta Retracta by Professor van Wingenheuk in 1907.

After a day of reading abstracts and patents, it’s nice to read something well written and get lost in it for a little while. Patents are not written to be easily understood. They are often masterful in their obfuscation. I often admire the conciseness with which many are written. But in the end, they are all disclosures written grudgingly and with the intent to obscure.

It’s been days since I’ve shaved. I’ve spent 3 solid days over the Thanksgiving holiday hunkered down in my office studying patents and following threads through the IP swamps of Mordor.  A friend has engaged me to do some consulting and needs an IP map of a particular realm of industrial chemistry. I have no confidentiality overlap with this area of technology so I agreed. It sounded so easy when I said yes and estimated my fee. Now that I have blown well past anything I could ever hope to recover in terms of billable hours, I’m still blasting and hand shoveling muck from the pit of my own making.

His company is currently putting a plant in the ground to produce a well known commodity and the question foremost in their minds is- what added value beyond [—] does the product have?

I’m reasonably good at diving down the rabbit hole in the patent world and finding what I need to know. But the current project has forced me to press into use more USPTO resources since I don’t have a personal SciFinder account for this work. Especially useful has been the classification system.  Patent lawyers will scoff at my swoon over this and flash their Esquire stinkeye since they are all too familiar with it. But chances are they don’t use SciFinder like chemists do.

SciFinder’s ability to find patent families from a structure or CASRN input is phenomenal. Even from within Markush claims.   I’ve had one search with combined SciFinder/USPTO resources compared with legal specialists using their own search tools. My search was just as exhaustive as theirs. Yes, SciFinder has flaws. And not finding claims is like a negative experiment.  But it is a very good tool for combing the ground.

Part of my approach stems from my natural inclination to browse. I drive people nuts when I go to a store with them because I will thoroughly examine the contents of the store for interesting items.  I drive the merchants nuts because my browsing rarely results in a sale.  (Notice that the theme is that I drive people nuts.)

Once you find a lead patent it is important to search the classification as well as cited patents. It is a simple matter to do a search by classification and dredge up hits. Once the fish are on board, it is about sorting the results and casting the trash fish back in the water. 

Google Patents is an excellent resource and I heartily recommend it. It retrieves pdf’s of the entire patent document as well as providing links to patents cited and those patents citing the patent of interest. It also links to the the classification site at the USPTO. A simple click of the mouse in the USPTO site pulls up a search of all of the patents under that classification.

On occasion, Google patents will not retrieve a particular patent or application. This seems to happen with very newly issued patents and applications in general. For this circumstance I use pat2pdf.org.  You might have to monkey with the formatting of the application number string, but it almost always returns the document eventually.

OK. It’s fine to be able to retrieve a bunch of patent numbers and pdf’s. But soon one becomes overwhelmed by the large amount of highly dense data that has been recovered.  In my surveys, I use a form meant to collect key information, but sized in a manner so as to limit the amount of detail I can write down. Feel free to use this form or modify it as you please.

Patent Summary Blank Form

At some point it becomes useful to use Excel to develop a matrix of patent information. In particular, one can retrieve a list of patents from the PTO and cut and paste them into Excel. They’ll paste as hotlinks, so all you have to do is to right click on the cell and select the unlink option. Tedious but effective.

I have developed an Access database to store patent information and other IP office actions and produce reports for due diligence studies. This is very handy, but eventually you become enslaved by upkeep as is true with all database tools.

Am I suggesting that one does his own lawyering? Not at all.  But if you’re in high tech manufacturing, one must be very careful to avoid infringement. It it crucial that a few technical people in the organization be familiar with the patent picture.  It is far better to avoid infringement in the first place than to have to find a way out of it.

The best way to use a patent attorney is to be informed in all interactions with them.  While they can often noodle through a problem presented to them by napkin scribblings and hand waving, it is best for the client to be knowledgeable about the patent landscape and to help the attorney to focus on the key legal issues. Good lawyering happens when the attorney clearly understands the nuances of the problem and can act accordingly. Having a list of prior art or other IP facts will save you billable hours in the form of research and needless office actions.

Your attorney is an officer of the court and has a legal obligation to honesty and fidelity to the system.  Being well informed in advance and working cooperatively with a patent attorney will go a long way to staying out of litigation.

The other good reason for closely studying the patent literature is to find what some call the “white space”.  This is the negative space around the claimed art that is not claimed and is likely to be free to practice or fertile enough to file a application on. If you Google “patent white space” you’ll find that this is a cottage industry.  A study of white space may provide insight into maneuvering room around a patent.

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.

Odd descriptions of matter and the peculiar turn of phrase abound in the chemical patent literature. Here are just a few of my favorites (italics mine)-

  • “… wherein the substituents have the following significations:”
  • ionic layered compositions  (translation- clay)
  • Donor solvents (translation- certainly an ether, perhaps an ester)
  • A non-coordinating dispersant (translation- a hydrocarbon solvent)

The deal with the devil that you make in getting a patent is this- in exchange for a 20 year monopoly, you must disclose to the public enough enabling information that a confused citizen could determine if he/she is infringing on the patent and reasonably avoid infringement. But this does not stop the use of opaque vocabulary and unusual juxtapositions because, after all, one skilled in the art should be able to decode the many obfuscations applied to their area of specialty. Shouldn’t they…? Or, perhaps the obtuse vocabulary is meant to daze and confuse the judge and jury. Hmmm.

For the last few years I have been attempting to work with a full professor of chemistry who holds a named chair. He is fast approaching emeritus status and in addition to the other maladies of aging, he tends toward spontaneously bureaucratic demands and is rather hard of listening. His secretary types his correspondence which is written in the officious, pseudo-legalese tone remniscent of a 19th century divorce decree.

Recently, while discussing chemistry with the “judge” by email, I suggested that he look at the patent literature for clues to synthetic procedure. Procedures found in patents may have a general utility and are not automatically claimed. Minimally, a dip in the patent literature broadens ones knowledge of the prior art. Certainly, art found in expired patents has a high likelihood of being up for grabs.

My clumsy and sophomoric attempt at helpfulness sparked a multiparagraph recitation in reply on the anticipatory nature of content in patents and how “such material” is unacceptable for “we in academe”.

Suit yourself, says I. But like any prospector knows, gold is where you find it. And this brings me to a point.

Every week some number of US patents expire or lapse. This continuous stream of expiration represents a situation much like the periodic deposit of placer gold after the spring runoff.  Gold veins in the walls of the canyon spall and fracture allowing gold nuggets and dust to tumble into the creek.  Prospectors who know what to look for can pick up the occasional nugget of art that has fallen into the public domain.

Granted, expired art may be 17 years out of date, but many kinds of compositions and transformations in chemistry are not subject to the expiration of utility. Many kinds of oxidations, reductions, alkylations, halogenations, functional group transformations, etc., remain quite useful over time. What changes over time are the economic and regulatory compliance issues. It is possible to make C-C bonds without a platinum group metal, triflate, and boron.

The value of expired patent art is well known by the pharmaceutical industry. Pharma companies will fight like wounded bears to get extra days added to their patents or otherwise attempt to extend claimed art as far into the future as possible with formulation or other schemes. They know that the day after a cash cow drug goes off patent, there will be generic versions on sale by opportunistic producers.

Prior to June 8, 1995, utility and plant patents were allowed for a period of 17 years with the 17 year clock starting from the application date and the period of enforceability beginning on the issuance date. From June 8, 1995 onward, utility and plant patents are valid for 20 years.

It is in the nature of scientifically minded folk to be forward looking and lavish extra attention on the latest techniques.  In our enthusiasm for the new and exciting, we may forget the vast storehouse of knowledge accumulated over the last 100 years of chemical research.

There is an ever increasing store of public domain art at the patent office waiting to be extracted by those who have the interest to do so. If you do decide to adopt some expired art, it is worth paying attorneys fees to make sure your judgement is sound and to look for related patents that may be problematic. Due diligence is money well spent.

It is true that patents are written by lawyers with little interest in providing too much enablement to the public. But these lawyers also know that playing games with enablement is contrary to the intent of the sworn statements in the application and may ultimately weaken a patent during litigation. A patent isn’t a peer reviewed paper. But, to Phosita, it can be a rich source of clues on how to perform some particular expired art that may serve as the basis of a product or process.

The United States Patent & Trademark Office collates and makes available online statistics relating to patent office activity. The data provided by the patent office could be thought of as a mine of information. A few companies make a business of collecting USPTO data and subjecting it to analysis.

One of the more interesting things to be found is the % fraction of patents granted to foreign entities. As of 2007, the fraction of allowances to foreign entities is 49 %. The above graph shows the tend over time. The gap in the curve is due to the absence of data for 1975-1976 in the published data set.

The fraction of foreign patent allowances has remained approximately constant since ca 1985.  There was a dip in the 1990’s that may correspond to some sort of pullback in R&D activity. This drop off in issued patents lags by several years due to pendency.

The above graph uses data published by the USPTO. Here we see the accumulated patent allowances to various nations over the period from 1963 through 2007. The data set is limited to Organic Compound classes 532 through 570 under the US classification system. For brevity, only the top 8 foreign applicants are shown in comparison to the US.

Very obviously Germany and Japan have the leading foreign awardees of US patents in this segment of R&D. I have not looked at how the reciprocal situation compares under PCT filings abroad by US applicants. 

What is of greatest interest is seen in the top graph: 50 % of the patent real estate being staked out at the USPTO is going to foreign interests.

A unique feature of chemical patents is the Markush claim. Markush claims allow the claiming of a  potentially large huge number of analogs defined by compact symbolism and covering vast swaths of the periodic table. 

It is thus possible for a professor in Osaka to own the composition of matter of a Markush set of hundreds or thousands compounds that would then bar a company in New Jersey from making even an obscure member. Under the PCT, the same is true in the other direction.

The reach of property rights in the world of invention has become so extensive, and the data provided by the various patent agencies and abstracting services is so inadequate, that the act of performing a due diligence search is nearly comical. In truth, you look for low to middle hanging fruit and hope that an obscure sentence somewhere doesn’t blow a hole below your waterline one day.

Chemical patents are in dire need of reform in terms of the nature of the disclosure. Patent offices must find a way to facilitate the extraction of crucial information so the public has a fair chance of understanding what is off limits.

We need a more lucid recitation of claimed compositions and better use of language in the detailing of processes. Patents should be written with abstracting in mind. It should be made possible to extract processes and compositions into a form that can be accumulated in databases for rapid review. This has to begin in the drafting phase of the application.

[For some great feedback, check out the comments- Th’ Gaussling]

So, I’m blundering through the literature on a snipe hunt when I run into this ICI patent- US 5,456,729. In the description, they teach a method of preparing an explosive composition using “lactic casein”. Having been in the dairy business long ago, and specifically having worked in a cottage cheese plant, I recognized this component as … cheese. Well, mostly. Example 5 discloses a composition comprising 25 % ammonium nitrate and 3 % lactic casein.

Unless you have lactose intolerance, cheese is not ordinarily an explosive. In the patent, the lactic casein is one of many examples of a foam stabilizer. Other stabilizers include animal and fish proteins as well as collagens. A collection of other chemical additives rounds off the list.

If they had specified gluten, they could have claimed the use of a pastrami and cheese on rye sandwich as stabilizer feedstock for their explosive composition.

The summer 2008 issue of the Lewis & Clark (Vol 12, No. 2) Law Review is dedicated to the matter of nonobviousness in patent law- Business Law Forum: Nonobviousness — The Shape of Things to Come.

The papers are scholarly articles and are very densely written (sorta like some posts in this blog!!). But if you can tolerate that style or are an insomniac, some of the work seems to be worth plowing through.

Nonobviousness is one of the most vexing aspects of patent law. I find that my natural inclinations about what constitutes obviousness are completely inapplicable to patents. Perhaps one day I’ll get it.

In the chemical technology world, it often happens that one company will engage another in the manufacture of some particular substance. Company A needs a particular material made according to certain specifications. Company A goes to Company B to ask for price and availability.  But first, Company A must disclose the identity and certain particulars of the material to Company B.

For Company A to disclose the identity of its material, it must work out a secrecy agreement with Company B. Company A’s business depends on the material and it does not want Company B to disclose the details of the material, the process, or any other aspect of the business. So, they execute a secrecy agreement.

What is interesting about such arrangements is the great diversity of “language” in the terms among companies. Some companies are very concerned about the faintest smidgeon of errant information and write detailed terms accordingly. Others are much more concerned about the broad strokes and are apparently willing to let the courts work out the details in a conflict.

Some companies are willing to yield on unreasonable terms and conditions while others will fight to the death on even the slightest change.  There is a strong correlation to the corporate culture and the extent to which a company is under a market pull influence (tolling operators) or is engaged in technology push (inventors).

In some companies, issues relating to intellectual property (IP) are strongly influenced by the lawyers.  In such an organization, it sometimes happens that management is completely immobilized by indecision in IP matters. Managers may not understand the IP, are unable to engage their own lawyers in detailed discussion about the issue, or may simply be terrified of making a mistake. Doing business with organizations that are highly rigid in deference to their lawyers tends to be a more difficult activity. The thinking is that if the lawyer makes the decision, then they can take the heat if it goes south. Of course, the lawyer won’t take the heat- they’ll just bill you to get you out of the mess.

In other companies, upper management will take legal advice, but will not leave the decisions to the lawyers. These managers understand that IP is company treasure that must be put to good use in order to bring in revenues. Lawyers get paid irrespective of the outcome in the advice dispensing trade. A good manager knowns how to ride a lawyer like a cutting horse, digging in the spurs now and then to show who’s boss.

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