Patents Take How Long?!

It's not an unusual question: How long does it typically take to get a patent?

Unfortunately, even with recently implemented systems to expedite the process, it can still be years before an application is granted a patent. Just look at the case of Drs. Frank Hurley and Thomas Wier. 

Yes, this is the promised story of their patent saga. 

Rice Institute accepted the terms of the offer laid out in Dr. Hurley's letter (see previous post), with little change. Hurley and Wier would provide all necessary documentation and future testing as necessary, and Rice provided all legal and administrative support to become the assignee. 

This initial set of correspondence took place in August, 1943. During the remainder of that year, a few key players emerged.

1. Dr. Harry B. Weiser (Chemistry Department, Rice Institute): reviewed the research of the two former Owls and consulted on technical matters
2. Mr. C. A. Dwyer (Secretary to the President): provided administrative support and facilitated communications
3. Dr. Edgar Odell Lovett (President, Rice Institute): generally the top guy in charge--what more can I add about one of the most influential figures in Rice's history and culture?
4. Mr. Harry C. Hanszen (Board of Trustees, Rice Institute): Board member known personally by Dr. Hurley, recipient of the August 1943 letter, and namesake of Hanszen College

Edgar Odell Lovett's signature

 

Eventually, they would be joined by Robert Eckhoff, the attorney in charge of pursuing the patents, and George R. Brown, who agreed to help cover the costs of the attorney and the patent application. 

It's a particularly important list because--aside from the members' roles in shaping Rice and Houston--across the years and correspondence, it can be difficult to keep track of all those involved. Despite industrial interest in the inventions and positive chemistry faculty feedback, the three electrodeposition of aluminum patents were not granted until 5 years later.

Those keeping track of the story likely already noticed the time lag. And those familiar with patents are likely also familiar with a two or three year wait between application and granting. However, over four years between filing applications (February 1944) and granting patents (August 1948) is slightly longer than usual. 

Across those four and a half years, the USPTO patent examiner continued to find problems and reject the applications. Evidently, these rejections were not typical. Rice's legal team felt the assigned examiner had "been extremely stubborn in this instance, rejecting the applications repeatedly, though not finally, on grounds not in accordance with the Office practice".

1947 letter from the attorney office containing the above quote.

The university Board agreed, and mentioned removing Eckhoff, as Dr. Wier expressed extreme dissatisfaction with how he handled their representation.

In the end, Wier and Hurley were required to run additional tests and submit signed affidavits to prove their processes were unique improvements to prior art. One of the three original applications was completely rejected; a third was then born of one of the other two. These became application serial numbers 524,486 and 542,487, joining 522,387.

An attorney from Eckhoff's firm approached an associate in Washington D.C., who had an inside line to the USPTO Examiner, to attempt to remediate and expedite their applications. This strategy worked; on June 16, 1948, a letter informed Mr. Dwyer the three applications were accepted about a week prior. Unfortunately, I found no record of what transpired during those meetings and/or exchanges.

June 17, 1948 letter of acceptance.

In the end, what is most frustrating today, is that somehow Rice no longer has the originally issued patent grant certificates. The patent attorney's letters that accompanied these documents was retained in the archives, giving important context to this story; one must wonder what happened with the patents. Perhaps they were presented to the inventors.

Correspondence enclosed in this archival file concludes with licensing the developed technology to several interested companies, proving the original expectations.

The next entry in this series will be the conclusion. It looks at the infancy of a Rice Institute intellectual property policy pursued in relation to the Hurley/Wier patents.

The True Story of Rice's First Patents

It's finally time to answer the big question about the three 1948 patents, invented by Drs. Frank Hurley and Thomas P. Wier, Jr., and assigned to Rice Institute:

Did the inventors simply assign ownership of the patents to Rice, giving it to an uninvolved Institute independently, or was Rice the home and supporter of the research leading to the patented inventions, and thus an owner (assignee) in the same way Rice is today?

Yes. The answer is yes.

Over several months and across consultations with various Rice and USPTO entities, I found little to provide a definite answer. Additional archival research on the history of the Kelley Center and Fondren as a patent depository seemingly exhausted the potential sources of related records. In desperation, I requested more archival materials like offprints of Dr. Hurley's publications (in hopes of finding some research preceding the patents), and the correspondence of Dr. Wier. A few items from Thomas Wier, Sr., popped up, and were equally as unhelpful. 

Finally, among the correspondence of Rice Institute president Dr. Houston I found a file labeled "Patents". Fully expecting this to be futile--perhaps about patent investments or something unrelated--I left it for last.

A very young Frank Hurley, from the 1932 Campanile

It was surprising yet frustrating to discover that the physical folder was given a much longer title than "Patents", displayed in the finding aid. It specifically named Drs. Hurley and Wier! (I don't blame anyone for that; no one could expect the details on a very long label to be a key piece of information in a future search.) Thus, hundreds of documents have been hidden away for years, decades even, unknown to any PTRC representative or patent librarian, given the lack of recognition and exclusion from the institutional repository, Rice Digital Scholarship Archive.  

Here, at long last, was the evidence that could solve the patent mystery, and answer the big question of assignee/ownership and Rice's involvement.

The answer lay in the earliest correspondence document. Yes, the patented inventions were based on research performed at Rice, for Rice scholarship. And yes, the patents were gifted to Rice by Wier and Hurley.

It's a case of both being true. Dr. Hurley started his research into electrodeposition of aluminum while employed by Rice; evidently he was unable to actively pursue it until Wier became his graduate student lab assistant. When Hurley left for Reed, Wier took over the project entirely. As noted in a previous post, this formed his thesis dissertation. 

An equally young Thomas Wier, from the 1940 Campanile

In August 1943, Dr. Hurley wrote to Harry Hanszen. He suggested that their research on the electrodeposition of aluminum may have some commercial value, and proposed that patents for the process should be sought and ownership assigned to Rice. Unlike today, Rice did not seek out formal ownership of intellectual property.

Highlights of the very long missive include: 

"My own attitude (and Wier's also, I believe) is that as an alumnus of Rice--a recipient of its educational training and the advantage of its scientific facilities--the Institute can rightly be said to possess some interest in this process."

"As you probably know, several universities have in recent years administered patents assigned to them with great success."

"For my own part, I can say that my principal interest lies in obtaining the recognition which may derive from the publication of this work, for I have cast my lot with the universities and colleges and am anxious too attain to success as a teacher, researcher, or administrator. Should the process prove to be of value,  it is my desire that the Institute should receive the greater part of any income deriving therefrom."

 

Dr. Hurley's letter to Hanszen.

To read the whole letter (which I recommend, as Hurley crafts a better narrative than I), click here.

In celebration of solving this mystery, I've officially added the three patents to Rice's Digital Scholarship Archive, rectifying their previous omission. Check out Electrodeposition of Aluminum: US 2446350A, US 2446349A, and US 2446331A.

But the tale of Rice's first foray into patent ownership hardly ends there!

The documents revealed many other stories, some to be told another day; look forward to future posts on the saga behind obtaining the patents, the earliest attempts to develop a concrete intellectual property policy, and hopefully the Reed College perspective, once access to their full archives is restored.

Robert Floyd Curl, Jr., Assistant Professor (Chemistry)

Bonus post!

The promised finale on Rice's first patent is coming, but in the meantime, allow me to share a document I found, related to the post in honor of Dr. Robert Curl's memory: an application for a grant from when he was 25. Dr. Curl was only an assistant professor at the time, just hired by Rice that same year (1958), but already starting on research that would define the majority of his career (and his patents!)

The Research Corporation gave numerous grants to Rice Institute researchers, many of which I was reviewing while trying to learn about Rice's patent history. I couldn't help but smile when I came across the proposal for "Investigations of the Microwave Spectra of Radicals and Molecules", a reminder of how many years Dr. Curl was with Rice.

Proposal for "Investigations of the Microwave Spectra of Radicals and Molecules", 1958