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Opinion / Analysis / Essays

The Rights Stuff: MHC's Patent Policy

The well-known axiom in academia is "publish or perish." There is a caveat when it comes to discoveries with potential commercial value. Publishing those can preclude patent protection down the line. But that's not something most small liberal arts colleges worry about. Until recently, that included Mount Holyoke.

Until 2002, the College didn't even have a patent policy. That changed after the vice president for research at Daikin Industries, a multinational firm with headquarters in Japan, approached associate professor of chemistry Wei Chen at a conference in 2000. He was so taken by a new process for modifying the surface properties of polymers that she had presented a paper on that he promptly flew to South Hadley to visit her lab. "I was very flattered," recalled Chen, but she declined an offer to let Daikin help her patent the discovery.

Instead, she spoke to dean of faculty Donal O'Shea. He realized some quick decisions needed making when, in his words, "I got a call from the lawyers asking if it is true that you waive all rights to Wei's stuff." He, in turn, went to Mount Holyoke's vice president for finance and administration Mary Jo Maydew. The question was answered when the College stepped in to help Chen file for a patent.

Seeking a patent is no trivial matter. It is expensive and time consuming, and the payoff is far from certain. Although Chen had forfeited some of her proprietary claims on her process by going public with it before applying for protection, Maydew saw value to Mount Holyoke in moving ahead anyway. The United States Patent and Trademark office formally issued Chen's patent in February 2007. The title is, "Surface Modification of Solid Phase Objects by Poly(Vinyl Alcohol)."

A fringe benefit was that a standard for how Mount Holyoke would handle future patentable work was set. According to Maydew, "With Wei's permission we used her as the guinea pig and developed the policy as she was applying for the patent."

It wasn't long until physicist Janice Hudgings, returning from a yearlong sabbatical at the Massachusetts Institute for Technology, heard rumblings that there might be commercial interest in her work on thermoreflectance imaging. She and a colleague at MIT found a way to use measurable variations in reflectivity to arrive at very high resolution surface temperature readings. The apparatus Hudgings built in her lab on the Mount Holyoke campus can be applied to extremely small, nanometer scale, objects, making it of potential use for debugging electronic circuitry and lightwave devices such as lasers, advances the telecommunications industry, for one, might find very useful.

The policy Maydew helped craft is designed to encourage faculty patents. It establishes a review process to determine if the College feels a particular idea is worth protecting. If the answer is "no," the faculty member is free to go elsewhere or to go it alone. In Hudgings's case there were two potentially patentable ideas and the answers from the review process were "yes" and "yes." This means that Mount Holyoke is taking on the entire cost of its share of the patenting process, which is mostly legal. According to Maydew, the typical cost for the initial stages of a patent is $15,000, but it can vary widely depending on the field and the complexity. If money eventually flows back, Hudgings will get the lion's share after the College recoups its outlay. The Mount Holyoke policy is "quite generous," she said.

In Hudgings's case it was quickly established that the intellectual contribution of her MIT collaborator, Rajeev Ram, was 50 percent. The benefits of this partnership turned out to go beyond the scientific realm. Mount Holyoke administrators and lawyers got to see up close how an institution that depends on faculty patents for a big part of its revenue stream approaches the process. This will come in handy during the life of the patents Hudgings hopes to get (one is in its final stages) because guarding against infringement takes a long-term commitment of resources, something MIT does as a matter of course.

Chen, who grew up in Shanghai, China, as the daughter of physicist parents, said she is not motivated to keep her discoveries under wraps. She worked in industry for two years (at W. L. Gore & Associates in Delaware) after finishing an undergraduate degree at Smith and a Ph.D. at UMass Amherst, but decided to take a significant pay cut to come to Mount Holyoke. "I'm not so into financial gain, that's why I'm here," Chen said. "I believe in independence and education."

Even though Chen's U.S. patent doesn't give her worldwide protection for the process she discovered to alter the surface properties of certain polymers to make them more hydrophilic (so that water tends to spread on them rather than bead up), she doesn't regret having gone public with her findings when she did. "I'm a scientist, I believe in communication with the rest of the field," she said. Her work could be very significant for a wide variety of applications, including medical implants.

Chen noted that having students work on projects with real-world applications has additional pedagogic value. "I think it helps students to appreciate what they are doing if they know why they are doing it," she said.

Maydew said the administration is committed to allowing individual faculty members to decide when to publish new work right away, or when to keep it secret in the hope of getting a valuable patent.

All agree that the benefits to the College's mission of high-quality undergraduate education are served by the policy that encourages professors to do patentable research. "Part of the appeal of going to a small college as a science major is that you get to work on cutting-edge science and engineering," Hudgings said. "At a big university the sorts of projects our students work on would be mostly done by grad students."

The prestige boost to a college the size of Mount Holyoke is valuable gravy. O'Shea seemed serious when he said, "I will have a lot of fun bragging about it."

All articles © Eric Goldscheider

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