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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.
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.
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 modern mythos of 20th century American industry includes many stories of businesses being founded in a garage. As the stories go, a few plucky founders will construct a widget in their garage and, with prototype in hand, look for a way to get the product to customers. Famously, Apple computer and Hewlett Packard were founded in this manner.
What you don’t often hear about is the extent to which the founders might have performed a market study to ascertain the potential demand in the market. Possibly because the frequency of this ground work is near zero. Certainly the founders had some sense that like-minded folk would want copies of their products. In other words, if you build it, at least a few will come.
Similarly, one doesn’t hear so much about the rate of failure either. How many storage lockers are crammed with the remains of a failed business plan? Probably more than a few.
What every technological entrepreneur eventually has to come to grips with is this- who are the customers and how can you get the message of new capability to them? Seth Godin has some interesting ideas about this. Godin suggests that in todays information saturated market place, the critical customers are the innovators and the early adopters.
So here is the big question- Why don’t we hear more about chemists launching businesses out of a garage? Better yet, how might the chemical industry be different if more chemists did start a chemical business in this celebrated manner? Most might agree that the culture of entrepreurialism that Wozniak, Jobs, Packard, Hewlett, and Gates picked up and ran with dramatically accelerated the growth of the electronics industry. But fewer might agree on what clues these founders took as their cue to risk everything. How does a fledgeling chemical entrepreneur know if the idea, process, or material of interest is worthy of risking the family nest egg?
On the next posting, we’ll talk about some of the factors that a chemical entrepreneur might face in getting started.
Eurogiant BASF recently announced the launch of their new organozinc halide capability. BASF is offering a portfolio of organozinc halide reagents on the strength of a licensing agreement with Rieke Metals of Lincoln, Nebraska. The value proposition that BASF is pushing is the compatibility of organozinc species with functional groups that are normally incompatible with organolithium or organomagnesium reagents. Likewise, the zinc reagents will undergo a variety of coupling and Michael-type reactions, though apparently with additives.
It is interesting to speculate as to the basis of the license. Does Rieke have a proprietary process to license? Is it based upon trade secrecy or a patent? Certainly Rieke Metals has considerable expertise with organozinc chemistry plus a grip on its trademarked Rieke ®Zinc.
A perusal of the patent literature comes up with only one patent application by Rieke Metals as the assignee. However, Prof Rieke has been patenting for the University of Nebraska and obtained fifteen patents as of this date. The most recent patent is US 5,964,919 issued Oct. 12, 1999. A number of them could contain the value that BASF would require to step into this venture.
Of interest is US patent 6,603,034 issued to “Consortium fr Elektrochemische Industrie GmbH” for “A process for preparing organozinc halides in a solvent, comprising reacting a reactive halogen compound with zinc in at least one carboxylic ester, to produce a solution.” Hmmm.
I’m a distant admirer of Rieke Metals. I respect how they have grown into their niche and have remained focused on the prize. I hope the venture goes well for all concerned.
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.