Lisa Bergson: Why Academia and Business Don't Always Mix

Lisa Bergson: Why Academia and Business Don't Always Mix
The publish-or-perish credo can clash with a company's need for confidentiality

Going to Princeton University makes me happy. I love the big old stone buildings, the musty, maze-like corridors where it's easy to get lost in books, experiments, daydreaming, debates, and theorems. It's my dream of college education fulfilled, a sanctuary far removed from the concerns of crass commercialism.

That's just the problem. I'm not a student at Princeton -- I'm a business partner with a Princeton professor. And in my experience, there's still a whiff of the attitude prevalent 20 years ago among serious academics that faculty engaged in commercial work are somehow "tainted." Indeed, until recently, Princeton made little effort to protect the school's intellectual property (IP) or to prepare its professors for the competitive arena.

I knew none of this in 1994, when I first contacted Professor Kevin Lehmann, a brilliant teacher and inventor, about a promising new technology he had developed.

NEXT NEW THING

Founded in 1948, my industrial-instruments company is a well-established leader in a small analytical niche. Our core technology dates back to the early '50s. We needed something new, and Kevin's work with a new technology called cavity ring-down spectroscopy (CRDS) -- which uses lasers, or continuous light, to detect moisture or contaminants in manufacturing processes -- posed a viable alternative. We garnered exclusive worldwide licenses to his technology, and since then, CRDS has emerged as a powerful technique for a much wider market, including medical, petrochemical, and environmental applications. We definitely got lucky on this one. But it has been a mixed blessing.

To those small-business owners considering a liaison with academia, let me just say: Be prepared for culture shock. Many academics, including my own dear Professor Lehmann, operate by very different values than we business folk. To publish, to present, to collaborate -- these activities dominate an academic's life, determining his stature and contribution to scientific advancement. To the owner of a small, privately held business reliant on proprietary technology and the element of surprise, those activities can be anathema. "When academics come upon a new concept, they tell everybody," bemoans Allen Ratner, our patent attorney. Under my influence, Kevin now knows when to be quiet.

He learned this lesson early on. When Kevin applied to Sematech, a consortium sponsored by the semiconductor industry, to help fund his research in CRDS, he was told that since he stamped "confidential" on his proposal, it barred him from consideration. "I thought that since I was submitting a proposal, it would be held confidential [anyway]," he recalls. "So I took it off." There went his right to patent his commercially significant invention outside the U.S. It seems international law prohibits even the slightest hint of disclosure before the initial patent is filed. Damn.

CODE OF SILENCE

I passed on my father's sentiments: "Don't tip your hand." That was one of his few injunctions (right up there with "Don't marry an actor," and "Squeeze the melon"). Poor Kevin. "My position in the academic community has been hurt by not publishing," he says. Now that we're close to introducing our first product, it's O.K. to go public. But for several years, my father's words and the knowledge that Kevin had already lost his ability to patent outside the U.S. prompted my code of silence.

Publishing isn't the only problem. For the academic, there's joy in educating bright students and serving as their mentor and collaborator for years thereafter. For the academic who's also a business partner, there's anxiety in the fact that these graduates are not employees or consultants. They aren't bound to maintain confidentiality. They can wind up working anywhere, possibly with the competition.

One exceptional student, among the first to work with Kevin on CRDS, did exactly that. "He's almost like family," laments Kevin. "In academia, we trace our family trees. As his PhD supervisor, I am his academic father. You have cousins and uncles. If you go back over generations, almost all chemists stem from the same four or five people."

CUTTHROAT COMPETITION

The most heated disagreement I ever had with our young, red-haired professor was over this very student, who contacted Kevin repeatedly for updates on our progress with CRDS. I said, "Uh-uh, not without a confidentiality agreement." Turned out the student was in negotiations with our competitor all the while. "I almost cried," Kevin says, recalling how he and the student dramatically likened their plight to that of Niels Bohr and Werner Heisenberg, two formerly intimate colleagues on opposite sides of atom-bomb development during World War II.

I feel bad about opening Kevin's eyes to the cutthroat nature of competition. He's so happy pacing before the chalkboard, flailing his arms as he scrawls cryptic diagrams and mutters strange arithmetic incantations, like a shaman possessed. Outstanding in high school, he received a fine education from Rutgers and Harvard before his tenure at Princeton. Still, he recalls, "it's not like they trained me in any way about interacting with industry." Today, however, scientists seeking funding from government or private sources are increasingly required to justify the commercial merit of their endeavors.

In 1997, mindful of the need to better protect its IP, Princeton made John F. Ritter, a patent attorney experienced in university licensing, its director of the Office of Technology Licensing & Intellectual Property. His mission is to support intellectual property and licensing "in a manner consistent with the academic purpose of publication and the rapid dissemination of information."

BEYOND MONEY

You can now download disclosure forms, confidentiality agreements, and helpful guidelines from the office's Web site. Ritter's office also spells out the royalties professors may receive based on the commercial success of their licenses.

When I ask Kevin what he would do with a windfall from commercial use of his work, he replies: "Endow my research." It really isn't about the money. "Absolutely not. I like solving interesting problems," he explains in his pleasant, raspy voice. "Having some practical benefit for people would be nice, solving some real-world problems." Together, I'm sure we can bridge the ivory tower to do just that.

Business Week, 30/06/00