By Tom Henderson
Small Times Senior Writer
June 15, 2001 — There is a new motto in academia these days: Patent, then publish. And it’s creating controversy at the nation’s research institutions.
 |
| “You can’t serve two masters. We’re here to educate students and do basic research. If you want to form companies, get the hell out.” Robert Austin, Princeton University physics professor |
But as schools increasingly try to partner with the private sector, academic researchers are being advised by school officials to hold off on publishing in peer-review journals until they have begun the patenting process. There are several reasons for this:
- Private-sector investors won’t invest without proof that what they are investing in has intellectual-property protection, say university technology-management officers.
- If researchers write about their discoveries or make presentations about them at conferences before filing a patent application, they violate what’s known as the “absolute novelty rule” and can lose some or all patent rights in lucrative foreign markets.
- And practically, licensing revenues from interested investors help universities fund the high costs of patenting, and research and development of new technologies.
“At the University of California, we never instruct our professors that they can’t publish. That’s an academic freedom that can’t be taken away. We do let them know what will happen if they do publish,” says William Hoskins, director of the office of technology licensing at the University of California, Berkeley.
That includes jeopardizing possible licensing agreements with investors and losing foreign patent rights in an increasingly global marketplace.
Josh Wolfe, a co-founder of Lux Capital, a venture-capital firm in New York that focuses on emerging nanotechnologies, says it is very simple: If companies he looks at don’t have patent protection, they won’t get his money.
“Patenting creates a clear barrier to entry for competing companies,” he says.
There is, he says, a basic clash in cultures. “University researchers love peer reviews and getting as many papers published as possible. But the corporate agenda is: `Let’s keep this as quiet as possible,’ ” says Wolfe, who enjoys a unique perspective as a former AIDS researcher at the State University of New York Health Science Center in Brooklyn.
Supporters of publish-or-perish still wield power, though, even at schools that have placed a premium on forging strong ties to the private sector. Kenneth Farmer, director of microelectronics research at the New Jersey Institute of Technology, who tells his students to hold off on publishing in favor of seeking patents, was denied promotion to full professorship recently.
Farmer says he was told after the vote that he must publish more often, even if it means losing patent rights.
A ‘DISASTER FOR ACADEMICS’
Robert Austin, a professor of physics for 21 years at Princeton University, has strong feelings about the trend to delay publication, “This is a disaster for academics.
“We’re crossing a funny line between academics and industry,” says Austin, who is involved in several nanobiotechnology projects. “Academia is starting to look more and more like business and that’s very dangerous. We’re losing something very important here, and it’s happening more and more. I don’t like it.”
What Austin believes is being lost is the open and free circulation of ideas. “That’s why I came to academia in the first place.”
Austin says he refuses when co-researchers ask him to hold off on publishing until they get their patent.
“It’s very clear what the decision has to be if you want to stay in academia. You can’t serve two masters. We’re here to educate students and do basic research. If you want to form companies, get the hell out. They want to have it both ways. They want the freedom of academia and the money of private enterprise.”
This trend of faculty members becoming for-profit entrepreneurs is increasing, Austin says.
“The taxpayer pays for this research and now [researchers] are going to make all the money? That’s kind of weird, isn’t it?”
As for Austin, himself, he licensed one of his patents in 1995 and, he says, made a modest amount of money. “But I deliberately stood away from the company.”
FINDING A BALANCE
“This is an issue which is going to haunt us for a while,” says Arun Majumdar, a professor of mechanical engineering at Berkeley who designs nanoscale devices for cancer detection.
Majumdar assesses blame at both ends of the publish-or-patent controversy. At one end is the overinsistence in some academic circles on publishing frequently. “Unfortunately, the bean counters over the years have started counting the numbers of papers instead of the quality of what’s being published.”
He suggests a happy medium. “If you’re at a university and you’re not publishing, that’s a mistake. You shouldn’t be at a university, then. But I have no problem with someone publishing just a couple of months later and applying for the patent earlier. Patenting and publishing can coexist.”
But, he says, that isn’t as easy as it sounds. He says the universities’ technology-management offices (TMOs) lack the funding to file all the patent work that comes to them. Instead, they may try to get private investors to fund the patent work in exchange for licensing rights.
The search for a private-sector partner may fail, though, or, even if successful, unduly delay both the patent application and publication in academic journals.
“A huge bottleneck is created,” he says. “The university licensing offices are not geared up for this new way of operating, and they often turn out to be the road block keeping the patent process from becoming a streamlined process. My fellow faculty are actually quite upset that the patenting process is not streamlined enough.”
Majumdar holds several patents, one of which has been licensed to Protiveris Inc., a biotechnology company based in Rockville, Md.
BENEFITS OF THE MARKETPLACE
“We don’t underestimate the importance of publishing. We just let them know there are trade-offs,” says Ken Nisbet, director of new business development in the technology management office at the University of Michigan, which will generate about $10 million in licensing fees this year. (Two of those licenses are held by Ardesta LLC, the parent company of Small Times Media.)
Nisbet says he receives about 170 disclosure forms from university researchers each year, files patents on about two-thirds of them and about half of those ultimately are granted.
Nisbet acknowledges that the licensing process can bog down, especially at smaller schools with less money.
“We’re lucky at Michigan. We have more funds and a better operating procedure than a lot of schools. It’s not as bad as it once was. A lot of this is new. We’ve been working out processes.”
Berkeley’s Hoskins says that his office begins marketing inventions to the private sector as soon as they get disclosure agreements from researchers, as a means of funding the expense of patenting. Patenting costs range from $8,000 to $10,000 each in the Bay area, Hoskins says.
“I don’t have an unlimited budget. We do get a lot of pressure [from researchers]. I’ve never met an inventor who didn’t think he had the greatest invention going.”
Hoskins says there are other reasons for going to the private sector before starting the patent process. “You go to the marketplace not just for money, but for input. Does it work? Will it sell? Is it something that’s needed? Is it something that’s ahead of its time? Is it something that’s already been done?
“Most of the inventions we see are very early stage. Significant amounts of time and money have to be invested by somebody to take them to the point where they have a product ready for market.”
As for the brouhaha in academic circles, Hoskins says: “I’m sensitive to the issue. There are a growing number of people who think that universities relating to private industry is bad. That it contaminates academia. That [point of view] is a disservice to the universities. We create jobs. We add to the tax base.”
THE REASON TO PUBLISH
Richard Magin is a professor at the University of Illinois at Chicago and head of its bioengineering department. He has also served as associate editor of the biomedical engineering journal of the Institute of Electrical and Electronic Engineers and of Magnetic Resonance Engineering, a new journal about to publish its first issue.
“Publishing is important because it’s peer reviewed,” he says. “In the case of the journals I work with, there are usually five reviewers for each article, and they’ll often type up two or three pages of comments and criticisms. Almost never does a paper get published the way it comes in. What gets published is the result of a dialog between researchers and reviewers. It ensures that there has been a careful and complete analysis. And it builds on the knowledge base of the field.
“I’ve done some things I thought were neat that I’ve written up, but it wasn’t until I answered the criticisms that I fully understood what I had or where I needed to go with it.”
Yet, Magin acknowledges that supporters of “publish or perish” need to adjust. He supports the push to commercialization and the need to delay publication, if necessary, to protect the intellectual property. “The key is a little bit. To delay publishing a little bit,” says Magin, who has helped two of his graduate students spin their research off into private companies. “We’re creating an entrepreneurial path for our graduate students.
The University of Illinois has named Chester Gardner to the new position of vice president for economic development and corporate relations, overseeing technology transfer at all three campuses, Chicago, Urbana and Springfield.
“We’re working with the College of Business and the Institute for Entrepreneurial Studies to form an integrated program to take technology to market, and part and parcel of that is filing patents and protecting intellectual property,” says Magin, adding that academics need to learn how to balance their traditional roles with the role of commercialization.
“There’s a motto outside my door,” says Magin. “It says `Teach, Serve, Research, Care.’ We need to add another word: Commercialize.”
null
RELATED STORIES:
Professor publishes to save his career
1980 act opened doors for researchers to profit from inventions
CONTACT THE AUTHOR:
Tom Henderson at [email protected] or call 734-994-1106, ext. 233.