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Publish or patent -- or both

Thursday, October 18, 2007
By Lynn Stevens

It's almost a chicken-and-egg quandary -- should a researcher look to publishing scholarly articles or to patenting discoveries, to gain recognition and funding?

Most academic promotions are tied to the volume of scholarly publication an individual produces. But if an idea is published without any patent filing, the discoverer can lose the right to patent it -- and the current statewide emphasis on innovation makes having a string of patents very desirable.

For the moment, publishing still trumps patenting in the university world. Technology-transfer offices at universities and research institutes and patent law specialties have arisen to overcome the dilemma.

"People say there's sort of a tension between publishing and patenting, and I would say that's not really true," said Michael Sharer, director of Western Michigan University's Technology Transfer and Licensing/Commercialization department.

"When people submit a journal article, it's going to go through peer review," he explained. "At the same time it's being reviewed, we can be preparing a patent application, and the application can be filed just before the journal item is published.

"If you understand the constraints, you can work within the timelines."

Technology transfer offices rarely hold up publication for patent reasons, said Amy Rinaldo, a patent lawyer with Warner, Norcross & Judd.

"They will turn to the patent attorney and say, 'How fast can you do this because this person has to present next week,'" Rinaldo said.

At some universities, filed patents or issued patents are part of the tenure review process, Sharer said. That's a good thing because they really are equivalent to published articles, he said.

"I think the bottom line is, if universities are going to get better at technology transfer and economic development activities, there have to be rewards for these things," Sharer said. "For any university that wants to do this stuff well, they've got to ensure these things are figured into tenure. Without rewards, the results are going to be suboptimal. If faculty don't get rewards, they aren't going to do them."

Linda Chamberlain, executive director for the West Michigan Science & Technology Initiative in Grand Rapids, deals with scientists at the Van Andel Institute, and with small inventors and university researchers.

"Scientists don't gain international reputations by not talking about their work," Chamberlain pointed out.

"I think it's going to take a change in the tenure system so that at universities there is a system for scientists who forgo the accolades for reason of the proprietary positions. It needs to be a mutual decision between the universities and the scientists," she said.

For people interested in commercializing their discoveries, publicly disclosing content is the last thing they want to do, she said. Instead, they want to keep it confidential for the five to seven years the patent process takes.

"If you're a professor in your first year when you make a significant discovery, you'd write about it and be tenured in five years," Chamberlain said.

"If you're commercializing it, you could be scooped in that time."

That's where technologytransfer offices can help with such tools as provisional filings, she said. A provisional patent -- filed before publishing an article -- reserves the priority date for one year with the patent office.

For many scientists, their life goal is to better human society, Rinaldo said. They do not see patenting and commercialization as essential for getting their discoveries to market.

"If you don't patent for the concept or the actual drug, people aren't going to invest in further tests," Rinaldo countered.

To get financing for further tests, commercial partners demand some benefit, and the benefit is patents, she said. Hospitals and universities she works with -- and Rinaldo splits her time between Grand Rapids and Southfield -- are starting to push that idea.

Sharer took the message almost door to door at WMU, setting up department-by-department meetings. It's working. In his two years on the job, WMU's activity increased from two invention disclosures and one patent application per year to 20 disclosures, eight patent applications and three technologies commercialized in 2006.

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