Patenting civil engineering innovation

September 2013 » Features » PATENTS
U.S. universities hold untapped potential for testing, research, and invention.
Stephen L. Keefe, P.E., Esq.

Despite generally open patent eligibility for their innovations, civil engineers, whether working in the private sector, universities, or government, take relatively few of their inventions to the patent office. The American founding fathers designed the patent system to spur innovation by rewarding inventors exclusive legal rights to protect their discoveries. Civil engineering subject matter likely ranked highly among patentable innovations envisioned by the founders, particularly for a young Republic struggling to build a new national infrastructure. Today's electrical engineers, though, out-file civil engineers by an estimated ratio of at least 8-to-1, per capita per year.

Probably the most striking examples of overlooked patent potential in civil engineering lay in a leading fountainhead of research and development – American research universities. More than 50 U.S. universities operate major civil engineering research facilities, most having thousands of square feet of testing space. The nation's public research universities operate a conspicuous share of the top testing facilities (see Figure 1 on page 30). Taken collectively, the civil engineering testing facilities of U.S. universities apparently dwarf the research capabilities of their private-sector and federal government counterparts.

Figure 1: Leading Testing Laboratories at U.S. Universities
Image: www.civilengineeringpatentlaw.com

The concentration of testing resources at American universities in civil engineering likely stems from deliberate national strategy. Beginning with the Truman Administration, and using the lessons learned from research and development efforts during World War II (e.g., the Manhattan Project), Congress established the National Science Foundation to promote scientific research. The National Science Foundation provides funds primarily to the nation's research universities and research institutes. This funding scheme reflects a national strategy of funding scientific research through the nation's schools and research institutes, as opposed to trying to fund research directly at government agencies or in the private sector. This general national research strategy has seemingly led to U.S. research universities amassing vast civil engineering testing resources.

But when looking at patenting numbers for civil engineering, the private sector surprisingly outdoes universities, despite the universities apparently having the lion's share of testing resources in the country. One clear possible inference emerges from all of these trends: Relatively little patenting goes on in civil engineering as a whole because the nation's civil engineering departments, which operate most of the testing resources, stay away from the patent office. Although non-patented university research still contributes to the civil engineering industry's development, a rift in technology transfer can, in general, open up when an industry neglects patenting. Viewing these hypotheses in light of the 1980 Bayh-Dole Act (see below) may further illuminate the issue of subdued patenting activity in American civil engineering.

The thousands of professors at civil engineering departments across the United States, then, feasibly could emerge as potential civil engineering inventors, because they have the most civil engineering testing resources in the country at their disposal. The research interests of individual professors across the United States, when taken together, cover about every facet of civil engineering, from pile foundations and seismic protection to geosynthetic-reinforced soil and nanoporous materials. As a mechanical art, this civil engineering subject matter generally qualifies easily for patent eligibility.

Even more importantly, backed by university resources, a wealth of empirical test data often underpins professorial work. As Thomas Edison famously said, "Genius is one percent inspiration, 99 percent perspiration." In the civil engineering context, testing resources help supply the hard work that optimizes novel concepts into practical inventions. For example, using testing facilities to optimize a structural design – a bearing, a connection, a blast-resistant material, or a method of using a new concrete admixture – and proving the superiority of that design with empirical data can produce a valuable patented invention. University professors stand poised to do just this, and engineering students stand ready to help.

Trying to name every U.S. university civil engineering department that could produce valuable patents would generate a list of more than a hundred schools. However, the leading civil engineering schools with the largest testing laboratories deserve mention: University of California (UC) Berkeley, University of Illinois at Urbana-Champaign, University of Texas (UT) Austin, Georgia Tech, Purdue, the University of Michigan, Texas A&M, and University of California, San Diego (UCSD). Some of the largest civil engineering testing facilities in the United States – and the world – operate under the banners of these schools.

For example, at Georgia Tech's Structures and Materials Laboratory, numerous universal testing machines with capacities of hundreds of thousands of pounds, an L-shaped reaction wall, and additional testing resources including infrared thermography as well as other technologies bolster research by Georgia Tech's faculty. UC Berkeley's facilities, the Newmark Structural Engineering Laboratory at Illinois, UT Austin's Ferguson Structural Engineering Laboratory, Purdue's Bowen Laboratory, and UCSD's Charles Lee Powell Laboratories provide additional examples of heavy-hitting testing centers. Large testing laboratories of this stature provide fertile ground for patenting. Slightly smaller facilities, such as the University of Wisconsin's Structures and Materials Testing Laboratory, likewise possess significant patenting potential. But, despite significant potential, many university civil engineering departments decline to transform their civil engineering research into intellectual property.

Bayh-Dole Act
In the landmark 1980 Bayh-Dole Act, Congress addressed this disconnect in university patenting for all research, including civil engineering. Recognizing that patenting helps to bring innovation into the marketplace and promote economic growth, Congress enacted the Bayh-Dole Act to encourage universities to patent their discoveries and to use their patents to partner with private enterprise. Bayh-Dole allows universities to retain title to inventions, even if the university used federal funding in making the discovery (e.g., National Science Foundation grants). Although the act requires the universities to furnish the federal government with certain information about each invention and generally reserves the government's right to practice the invention itself, the university ultimately owns each patented invention, if desired.

Also, Bayh-Dole requires the university to share a portion of revenue gained from a patent with individual inventors. Congress also further encouraged university patenting in the 2011 Leahy-Smith America Invents Act, specifically giving universities a discount in patent filing fees. With Bayh-Dole and Leahy-Smith, Congress apparently intended to encourage all university faculties to patent their inventions, including civil engineering departments. The federal government essentially offers to give universities title to patented inventions made using federal funds, based on the premise that universities will license the invention into the private sector to spur innovation in the marketplace and promote economic growth.

As an exemplary case, work done by the Advanced Civil Engineering Materials Research Laboratory (ACE-MERL) at the University of Michigan demonstrates the spirit of the Bayh-Dole Act. Michigan's ACE-MERL develops advances in materials technology, including notable breakthroughs in engineered cementitious composites such as self-healing concrete. The University of Michigan holds numerous patents based on the ACE-MERL's work, including the work on self-healing concrete, and offers the patented technology to the commercial sector for licensing through the University's Office of Technology Transfer. In describing the technology, ACE-MERL resources suggest that using the patented technology commercially would reduce maintenance problems, which could help reduce the high costs of maintaining infrastructure and accordingly benefit society economically.

Under Bayh-Dole, the University of Michigan could even offer ACE-MERL's technology under an exclusive license to a single company, providing that enterprise with a unique competitive edge in the marketplace. Bayh-Dole would also generally require that some licensing revenue paid to the University of Michigan for a given ACE-MERL invention go to the corresponding inventor or inventors at the ACE-MERL, further incentivizing those professors and researchers to continue to develop advanced technologies. Linking patented technology to economic advancement, as Michigan's ACE-MERL strives to achieve, provides a working example of the types of economic effects Congress hoped to bring about with Bayh-Dole.

With so many research tools in the hands of U.S. universities, Bayh-Dole builds upon the patent rights enshrined in the U.S. Constitution by establishing a means to transform advanced university research into valuable patented technology. Universities may license their technology out to the civil engineering industry, either nonexclusively to several companies or exclusively to a single enterprise, possibly increasing the volume of patent licensing in civil engineering toward the higher levels experienced in such disciplines as mechanical and electrical engineering. Widespread application of this licensing activity could infuse a significant amount of new technology into the civil engineering industry, leading to more economic efficiency, reduced infrastructure costs, and substantial royalties paid to university researchers to incentivize further advances.

In the true spirit of capitalism, an array of new partnerships between university faculties and private companies could arise, as players compete to secure the most promising technologies for producing the highest quality work at the lowest price. Overall, potentially higher densities of technological advancement from competing university-industry blocs could promote economic development and cause the civil engineering industry as a whole to advance to meet the rapidly approaching infrastructure challenges of the future.

Disclaimer: This article presents general information only and should not be regarded as legal advice. Accordingly, the author disclaims liability for any omissions or errors. Readers should contact their own lawyer regarding their own specific legal questions, and should not take actions relying on the information presented in this article. This article does not establish an attorney-client relationship with the author or his firm.

Stephen L. Keefe, P.E., Esq., is a patent attorney with Rabin & Berdo, in Washington, D.C. After graduating from West Point with a degree in civil engineering and serving in the U.S. Army, Keefe practiced as a structural engineer for six years and earned a Master's Degree in civil engineering from Columbia University. He served as a patent examiner at the U.S. Patent & Trademark Office, received a Juris Doctorate from the George Washington University Law School, and practiced patent law for several years at a large Washington, D.C., intellectual property law firm. He can be contacted at skeefe@keefepatentlaw.com.

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