Northern Arizona University (NAU) claims ownership of some Intellectual Property (IP) developed by Davis and Reiboldt. Although we had done work with fluidized-beds at NAU to recover pine-oil, our dryer work was quite different (see our story) . We found the university using a claim this was a continuation, or improvement, of the work done there. Davis sought council, and this confirmed that the NAU claims were almost certainly without merit. However, universities can almost always “win” in these cases because few can match the deep pockets or extended time-horizon of a university. And it gets worse from there, as we went through the appeals process, negotiations for co-ownership, and the final decision.
The original project was initiated in 2006 to improve the economics of forest thinning through the recovery of Pine-Oil. The project had succeeded in recovering some of the oil, but the process was not suitable for commercial use. In 2008 the project was redirected to investigate fluidized-beds to recover the oil. As a retired Chemical Engineer I volunteered my time and made most of the test equipment. We learned a lot about handling the wood chips, and some interesting things about recovering the oil.
The fluidized-bed work at NAU used a special form of pulse-fluidization. Some additional work was done at a forest products company to further develop the technique. It was found to require more development work, and was difficult and awkward to integrate with the blowers and cyclones associated with the overall process, and that effort was abandoned.
Over a year later we wondered if we could improve the drying technology and built a bench scale unit to investigate the possibilities. Although we started with the specialized pulse-fluidization that we had used at NAU, we discovered that by changing the design we did not need the pulse-fluidization. See the complete history here.
NAU claimed ownership of our new “pneumatic conveyance” invention when we disclosed it to them to clarify ownership in case investors were needed in the project. The claimed it as an “improvement” on the work that was done at NAU in 2008. At that time we had refused to sign assignment documents that included a special clause claiming future improvements (in addition to the standard clause regarding help with the patent application), apparently added just for us. The assignment document we finally signed for the original work had that clause removed. They make two incorrect conclusions: 1) They own improvements on the invention, and 2) The new invention is in any way an improvement. We believe it is clear to someone knowledgeable that the invention is new and not related to the original work.
Davis had prepared and submitted a detailed provisional patent application on the invention, but NAU had quietly submitted their own provisional in the meantime. A full application was later made. It is a horrible mash-up of the original pine-oil findings and our rather meager disclosure to NAU. Davis later turned his more complete version over to the university so that a more useful patent would result if the application was successful. The university prepared a much improved application incorporating the Davis provisional data, but in the process they had to leave out all the pine-oil claims that were the basis for any claims at all. At that time they asked us to sign additional assignment documents. We declined. The better application was not filed (as of March 2013), and the original has now been published as part of the patent application process (Google Patents US 20130047458 A1).
We are left with an open-ended claim on “improvements” that could mean anything in “university speak”. Since they have already made over-reaching use of this claim, we are reluctant to work in this field (and we have other projects to pursue). It leaves a much needed technology incomplete and unusable unless someone else picks it up (see the technical story of the wood-chip dryer). It could make forest thinning to reduce the risk of forest fires more economical and practical.
The university CAN claim ownership of work done under some circumstances using its facilities, but that is not the case here. NAU, while claiming to be a “Research University” is far behind its peers in developing IP and has taken the approach that “something must have been slipping through its fingers”, when the real problem is an atmosphere where research is rarely translated into “inventions”.
The NAU claim is the result of over-reach and managerial incompetence. It is a story of stifling innovation, and not adhering to the principles that the university claims are its core values. It comes from a combination of attorney over-reach and a bureaucracy that is unable to control it. The over-reach by attorneys is almost natural in the university setting, but the bureaucracy that manages IP can’t seem to correct this. The result is a stain on NAU’s reputation and a warning to all entrepreneurs.
Contact this site for details on this story. We were careful to document everything.