Publish or Patent?

The mantra of the Academy has long been "publish or perish". The April 14th edition of The Economist presents an op-ed entitled Academic Publishing: Open Sesame in which they argue:

Government bodies that fund academic research should require that the results be made available free to the public. So should charities that fund research.

This is a significant issue for those of us who receive government funding to support for-profit R&D (such as the U.S. Small Business Innovation Research awards). A major dilemma for unaffiliated researchers is whether to publish or patent, or in some cases simply stay mum (trade secret, anyone?).

Academic-minded government agencies, like the NIH, NSF, and Department of Education may likely view the lack of peer-reviewed publications by the principal investigator on the subject of their proposed research as a sign that their ideas have low value in that domain, and may thus not fund the research. But publications may foreclose the possibility of patenting an invention or innovation, a death warrant for self-supporting R&D-driven companies. It's a Catch-22 of sorts. But if the end game is to commercialize the innovation, jockeying for the first influx of early-stage funding needs take second seat.

For researchers supported by an academic institution, especially those with tenure, the choice to give freely of their knowledge is an easy decision to make. Their jobs and careers are secure. Yet university technology transfer offices must keep the balance between enlightening publications and enabling ones, to preserve the potential for patents. But the ranks of unaffiliated, world-class researchers is growing as opportunities in the Academy diminish or become less appealing. We simply don't have the luxury of a fully-staffed and accommodating tech transfer team.

While I've asked the question before whether defensive publishing may not at times be worthwhile, it seems the best long-term tack for small businesses and independent researchers is simply to keep quiet, even at the risk of being marginalized by the broader field.

Patents: good for innovation or stifling?

The August 20 issue of The Economist includes an article entitled "Intellectual Property: Patent Medicine" which discusses many of the problems with the American patent system, most of which were not addressed or redressed by the latest "patent reform" legislation. Here's the alarming statistic:

In recent years, however, the patent system has been stifling innovation rather than encouraging it. A study in 2008 found that American public companies’ total profits from patents (excluding pharmaceuticals) in 1999 were about $4 billion—but that the associated litigation costs were $14 billion.

At times it seems for a small innovative business that the effort and costs involved with preparing and filing patents may not be supported by the benefits that accrue. Retaining ideas as trade secrets, or protected in other ways like via SBIR data rights, may be a better means to protecting a company's intellectual property.

Is Defensive Publishing Appropriate for Small Businesses?

IBM has announced its plans to expand "defensive publishing" rather than patenting as a means to protect its intellectual property. A patent prevents others from practicing the specifics that are covered by the patent, but opens up a Pandora's box of potential work-arounds and litigation. Defensive Publishing is in essence placing IP into the public domain, rendering it thereby unpatentable by anyone, even the inventor.

Since public domain knowledge can be cited as prior art against patent applications, the onus would rest on any subsequent inventor to prove novelty beyond whatever is covered by the defensive publishing. Such an approach would allow IBM or anyone else to practice their art, to use the IP that has been published, making it more difficult for others to restrict that practice by means of a patent.

I have considered this an approach, easier and cheaper than preparing and submitting patent applications, then waiting the 2, 3, 5 years it takes to hear whether it's been approved or denied. The fear for a small business is that while a company like IBM has name recognition and a reputation to rest on, a small little-known quantity like my firm may easily be swallowed up. Were I to engage in defensive publishing, it would protect the ideas in preventing others from restricting my ability to practice them. But it might ring the death knoll of my company.

The fear is that as soon as those ideas become valuable, a large company with a top-notch marketing team, a long-standing reputation and credibility might simply scoop up the ideas, rebrand them, and put me out of business. It's a tough call, a very tough call. Because in the heart of, I'm a researcher. Far worse than going out of business would be for the ideas to never see the light of application.

But am I ready to prepay my company's cemetary plot, in hopes that we won't need to use it any time soon?

SBIR Patent expenses

I had been under the impression that patent expenses were disallowed under SBIR. The spreadsheet my new accountant has asked me to populate for calculating my overhead rate however included a line item for commercial patent expenses. I was curious, so I did a search for "SBIR patent costs". It turned up the following:

As recommended by the DoD SBIR Process Action Team and approved by the Under Secretary of Defense (Acquisition and Technology), patent searches and applications may be included in the statements of work for Phase II contracts. (Patent searches and applications may be included in the proposed statement of work or as part of indirect cost.) It should be noted that obtaining a patent will probably take a number of years. In the case where a cost reimbursable contract has been awarded for the effort, the contract may need to remain open until the patent is granted in order for the associated cost be recovered. If the statement of work does not contain authorization for the direct charging of patent effort, the Contracting Officer may want to add a clause that the patent cost is an allowable indirect cost. The Government obtains rights to the patent in accordance with 52.227-11, Patent Rights--Retention by the Contractor (Short Form). This clause will assure that the contractor will at least receive partial compensation for the incurred patent cost.

That's a good thing to know. I'll be sure to follow up on it, and ask to include the relevant clause in my contract.