Without the inventive mind, we might still be dawdling in the Stone Age. But, thankfully, once our brains are sparked by imaginative ideas and motivation, there's no telling what territory we'll traverse. Ideas aboundsometimes as the result of intricate labored thinking; other times, seemingly falling from the sky unannounced. And, of course, ideas also stall. "You can have a good idea and know it's neededthat's the research and design side of an invention," says inventor Norm Faiola G'94, chair of the Department of Restaurant and Foodservice Management in the College for Human Development. "But then there's the realitya great idea can sit in a drawer, and I'm sure there are thousands of great ideas lingering in drawers."|
Joseph Chaiken, professor of chemistry in The College of Arts and Sciences, knows both sides of that story. While trying to develop optical switches using tungsten-oxide, a unique thin-film material, time and again he found himself frustrated. However, just before he threw up his hands, serendipity stepped in and tugged him down a different path, one employing the material for computer memory storage. And banghe was off and running in a whole new realm. "It was like walking across an empty pasture with a golf club in my hand and coming upon a teed-up ball," he says. "Nobody's looking, so do you hit it? Sure, especially since no one is around and I don't know who teed it up, but it's mine now."
Welcome to Patent Place, a world where ideas can evolve into astounding inventions that advance civilization or slump back into the obscurity of desk-drawer disarray. Researchers often launch explorations in directions dictated by funding. No grants, no gain, no glory. And when breakthroughs produce inventions and patents, researchers sometimes pair scholarly endeavor with entrepreneurship, creating start-up companies based on their creations. "I would just as soon avoid patents," Chaiken says, echoing the sentiments of others familiar with the complicated and time-consuming process of obtaining them. "But this one here...."
When potentially patentable ideas pop up at Syracuse University, they ignite a process of examination and information exchange that can lead to the U.S. Patent and Trademark Office and, ultimately, a place in the commercial market. True, this may not be what the researcher has in mind initially when developing a new piece of knowledge, but it's usually the result if the creation is novel, useful, has the potential for market appeal, and needs to be protected as intellectual property. "It's a gamble for the University when we make the decision to go ahead and try to patent a technology," says Lorrie Anthony, assistant to the director of the Office of Sponsored Programs (OSP), which oversees SU's Technology Transfer Program. "We try to make decisions based on the knowledge we have of what the market will bear and the way the technology is going."
Under the Bayh-Dole Act of 1980, universities hold the title to all patentable inventions developed through federally funded research projects. In addition, the sponsoring university decides whether to protect the invention and license it for commercial development. The federal government, in turn, receives a royalty-free license to use the invention if it chooses. At SU, any invention derived through the support of a grant, federal or otherwise, must be disclosed to OSP, which then works with the inventor to determine the best way to protect and develop the technology.|
If a patent is pursued, the creator is in for a hefty amount of paperwork. Before a patent application is submitted, patent attorneys must be consulted and a search conducted to ensure that the new technology has not been previously patented or suggested in prior patents and such literature as professional journals. Almost without fail, a patent application is rejected on its first submission to the federal patent office, experts say. "You have to look at the domain that's staked out in that areareference all these other patents, citing similarities and differences," says Professor Don Carr, who has received several design patents and guided a team of students seeking a patent (see "Flying Hands," page 45). "From a territorial standpoint, you try to construct a fencein wordsthat comes right up to the next fence."
Engineering professor James A. Schwarz holds 14 patents, and likens the energy required in obtaining one to writing five research papers. "A lot of work goes into explaining the invention in legalese, so the patent examiner can shoot it down the first time, second time, and third time," Schwarz says. "Then he says, 'Aha, I see! We'll award you this patent.'"
The process can take anywhere from 18 months to 3 years, and costs about $10,000, Anthony says. If the patent is scooped up by a company and pays off, the University splits royalties 50-50 with the inventor after recovering such expenses as legal fees and marketing costs, and also deducting 15 percent to support the Technology Transfer Program. "There are wonderful inventions that add to the knowledge base," Anthony says. "But we have to ask if there's a value to having them patentedare they commercially viable? There are also times when we've patented something in its early stages because we wanted to protect the technology, since we knew that somewhere down the line it would be commercially viable."
The University's intellectual property portfolio includes 36 active U.S. patents. Of those, 14 are licensed and generating royalties for SU. Recent patents have contributed to fields ranging from food safety, information technology, and industrial production monitoring to creating materials to store alternative fuels and remove pollutants from waste streams. "A big plus of working at a research university is having all these resources," Faiola says. "It's unbelievable when you think about what's happening around this campus."