There has been a lot of debate about whether Manchester should have patented graphene in some form, and most of it with the 2020 clarity only available in hindsight. So before a lynch mob arrives and drags people from the National Graphene Institute to Strangeways it is probably worth taking closer look.
Clive Rowland of UMI3 the commercialisation arm of the University, was asked why the University did not patent graphene or any of its potential applications:
In the tech transfer office too, we had come to the view that the work was both too early to know what to do with it and too much of a rudimentary approach to be a useful manufacturing technique. We couldn’t see the commercial logic in either pitching for venture funding or offering technology licences based upon having a proprietary position on an “arts and crafts” method. No-one had shown any interest. There were no early adopters. So that told us something too. Thus we agreed with the academics that there was nothing worthy in trying to file for a patent for graphene by that route. That proved to be the right analysis.
This approach appears, on the surface, to be at best naive, at worst grossly negligent, but was it?
Everyone working on carbon nanomaterials such as Rice University, NEC, IBM, and Caltech all filed initial patents on carbon nanotubes to protect their early work. Some, such as the Rice patents were licenced to commercial entities while others such as CalTech/IBM’s basic composition of matter patent were never enforced so as not to hold back the entire field. There is some debate over whether some entities needed to file as many patents as they did on a technology with no commercial applications, and indeed it is often argued that the patent thicket held back the development of nanotubes, but there were filings. While UMI3 have a good track record in other areas, graphene patenting seems to have been given a low priority at Manchester until the Nobel Prizes were awarded and then they woke up.
Manchester vs The World?
The University of Manchester did not file any patents with a priority date before 2010 when interest in graphene exploded following the Nobel Prize. By this time significant patents had been filed worldwide including 14 in 2005, 22 in 2006, 28 in 2007, 57 in 2008, 202 in 2009 and 455 in 2010.
A search on the World Intellectual Property Database, Patentscope, reveals that as of last week there were 35,139 patents worldwide covering the production and application of graphene. Of these the University of Manchester held just 22. Some of these include some very broad claims over the application of graphene in composite materials, photovoltaic cells and the production of graphene and graphene oxide. The filing of broad patents is usually done in an attempt to ‘own’ or block an particular application, which indicates a 180 degree shift from the University’s previous position.
To be fair to Manchester, it should be noted that other UK universities did not apply for graphene related patents before 2010 either. By contrast a single US University, Rice, had 11 patents and Samsung had 24 before by Manchester had filed one. It certainly looks as if the entire country was caught napping.
A Missed Opportunity?
Andre Geim was quoted on 21st March 2016 as saying
“I only wish someone would use our IP or patents, but it is still too early at this stage of graphene development.”
The majority of of graphene in mass production around the world relies on the exfoliation of graphene, i.e. the separation of graphene which contains multiple layers of carbon atoms into platelets containing a few layers of atoms. This is a variant on Geim and Novosolev’s original method which the University claims was not scalable. Had a patent been secured on the production of graphene by the exfoliation of graphite this would have been a seminal building block patent, referenced by almost everyone commercially applying graphene.
While this kind off filing appears blindingly obvious in hindsight it may not have been so clear cut a decade ago. But if you want someone to make use of your IP you have to file some in the first place.
In mitigation it should be emphasised that it is not the job of academics to envisage applications that may be a decade away and they are not incentivised to do so. In the UK and the EU academics are evaluated on the number and quality of publications whereas patents are also considered in Asia. In Asia policies such as the Chinese Employee Inventions Act incentivises disclosure and the creation of large numbers of patents (which may never be followed up by more expensive international protection). However, this strategy does help raise barriers to entry for foreign competitors in China and Korea.
Furthermore, there is wide variation of the performance of Technology Transfer Offices (TTO’s) around the world. The oft cited case of Stanford University and Silicon Valley is obviously an outlier as demonstrated by multiple unsuccessful attempts to replicate the “Silicon Valley Model” elsewhere. The reality is that many TTOs struggle to cover the costs of evaluating, protecting and licencing intellectual property and academics face a tough battle to persuade TTOs to allocate scarce resources to their particulate filed of research.
A Permanent Blind Spot
It does seem remarkable that although the UK is home to four of the top 10 universities in the world, and 29 of the top 100, successive governments have done nothing to capitalise on the UKs research base. Chucking up expensive buildings and assuming that commercialisation will naturally follow seems to be as far as the thinking has got, leaving academic institutions to fill in the gaps as best they can.
A UK technology transfer policy that encourages uptake of academic research by SME’s and ensures that Technology Transfer Offices have adequate resources to do so would have a positive impact on both innovation and industrial competitiveness of the UK. While that may go against free market principles, it clear that somebody needs to do something. The brouhaha over graphene might just provide the impetus for change.