In the previous column I traced the career of Humphry Davy to 1800. In 1801 he was invited by Count Rumford to a position at the relatively new Royal Institution in London. There Davy was eventually able to continue his own research, but first had to work up lectures on the chemistry of tanning, and with his usual thoroughness he did experiments on that subject; and on the applications of chemistry to agriculture. He later published a well-received book on that topic, and developed techniques of soil analysis.

In 1806 he was able to return to electrochemistry. He established some fundamental principles and in 1807 came the great breakthroughs. First was the isolation of metallic potassium from moist potassium hydroxide by electrolysis. The isolation of this astounding new metal – silvery, reactive with water and air – was recorded by Davy thus: “Capt. Expt. Proving the decompn. Of Potash”. It was capital. The previously undecomposed strong base had given him a new and extraordinary element. In short order followed metallic sodium, and calcium, barium, strontium and magnesium, though Berzelius had got there first with the alkaline earth metals.

This flood of new elements was one reason that Davy found Dalton’s new Atomic Theory unsatisfactory; Davy felt that nature should be simple. He toyed with the idea that all metals were in some way compounds of hydrogen. And he always preferred “experimental” chemical equivalents to Dalton’s “theoretical” atomic weights. In 1812 Davy published “Elements of Chemical Philosophy” which embodied his views. It included his elucidation of the nature of oxymuriatic acid, the gas obtained by the action of manganese dioxide on hydrochloric acid, which Davy showed contained no oxygen. He named it chlorine, after its color; it was yet another new element!

In 1812 two very significant events occurred; on April 8 he was knighted by the Prince Regent; he was now Sir Humphry. Three days later he married Jane Apreece, a young and wealthy widow. She was a social climber and most of Davy’s friends did not take to her. Davy’s researched continued; in October 1812 he isolated the dangerously explosive nitrogen trichloride and was injured by an explosion. His sight was initially affected, but he eventually recovered. In March 1813 he hired the young Michael Faraday as secretary and assistant and later that year the Davys and Faraday embarked on a European tour to France (Britain was at was with France at the time!), Italy, and Germany. In France Davy took the opportunity to undertake chemical work on a new substance isolated from seaweed, and declared it to be an analog of chlorine. He named the new element iodine. Gay-Lussac, who had been working on the same substance, was annoyed at what he viewed as trespass by the Englishman.

After returning from the Continent Davy was asked to work on a problem of national importance; explosions of fire-damp (mostly methane) in coal mines killed many miners who worked by the light of open lamps and candles. Davy undertook some basic research on the burning of methane and devised his safety lamp, in which the flame was surrounded completely by a cylinder of fine copper gauze. Fire-damp burned inside the lamp but the gauze conducted the heat so efficiently that there were no explosions. Davy gave his invention freely to the mining industry, and it has undoubtedly saved many lives.

Davy was now a statesman of science. He was active in the Royal Society and became its President, a position of much influence, in 1820. He continued doing scientific work, notably on developing sacrificial electrodes to protect the copper sheathing of ships. But he also continued to write on many other subjects – poetry and fishing. He had been an avid angler since boyhood. But his health began to deteriorate, perhaps due to his “heroic” experiments when he was young. Early in 1827 he was accompanied by his brother John – later his biographer – on a trip to the warmer climes of Italy. His condition was not much improved when he returned to London. He decided on another journey. In March 1828 he left for Austria and Italy. His condition grew worse and in early 1829 he was joined in Rome by his wife and his brother. The decision was made to return to England but on May 29, 1829, Humphry Davy died in Geneva, Switzerland, at the age of 50.

Humphry Davy, perhaps the most romantic of all 19th century chemists, died on May 29, 1829, in Geneva, Switzerland, at the age of 50. Why the most romantic? Look at any portrait of Davy in his prime: the handsome face, the wavy hair, and the superb public manner. And he was also a poet, esteemed by Coleridge. All this and a great chemist, too. Yes, a romantic figure.

Humphry Davy was born in Penzance, Cornwall, England (the Pirate city) on December 17, 1778. His origins were humble; his father was a wood carver, but descended from yeomen stock, and Humphry, the oldest of five children, was sent first to a small local school to learn his letters, and then to Penzance Grammar School where he mastered the conventional classical curriculum including Latin. He wrote verses, told stories, took up fishing (a major Penzance trade) and hunting, and even dabbled in practical chemistry, devising his own fireworks. At age 14 he transferred to the superior Truro – the county town- Grammar School at the expense of a family friend. He did well, but left the school when he reached 16 years of age.

A year later Humphry’s father died and in early 1795 the boy was apprenticed to an apothecary-surgeon. A document Davy drafted at that time outlined his ambitious program of studies which included, under the heading of “My Profession” Botany, Pharmacy, Nosology, Anatomy, Surgery, and Chemistry. He also proposed to learn English, French, Latin, Greek, Italian, Spanish, and Hebrew! And, as if that were not enough, he planned a comprehensive course in physics and mathematics.

Davy was befriended by a French surgeon, and for the first time was able to use scientific instruments. He began to study Lavoisier’s “Elements of Chemistry” in French, aided by William Nicholson’s “Dictionary of Chemistry” and became acquainted with Gregory Watt, son of James Watt, who was convalescing in Cornwall, and with whom he discussed theories of heat – Lavoisier’s caloric. A local Member of Parliament, Davies Giddy – later Davies Gilbert- met Davy and aided him with the loan of books and with introductions to others with scientific interests. Through Giddy Davy met Thomas Beddoes, a lecturer in chemistry at Oxford University, who had established a Pneumatic Institute at Bristol for the study of the use of newly discovered gases in the treatment of diseases. Impressed by Davy and by an article Davy had written on heat and respiration Beddoes invited Davy to become his assistant at the Institute and in October 1798 Davy moved to Bristol.

In Bristol, using himself as a guinea pig, Davy undertook “heroic” (and foolhardy!) experiments on the effects of nitric oxide and carbon monoxide. Nitrous oxide, or laughing gas, was much more instructive. “I felt a sense of tangible extension highly pleasurable ….I lost all connection with external things….I imagined I made discoveries.” Davy was captivated by this new recreational drug. For some months he breathed the gas at least several times a week. Davy published the results of his researches in a book which brought him to the attention of both scientists and the public. In it he made a prescient suggestion which was not followed up for several decades: “As nitrous oxide …appears capable of destroying pain it may probably be used with advantage during surgical operations…”

It was in 1800 that the Royal Society published Volta’s famous letter on the discovery of current electricity; Beddoes and Davy were convinced that electricity would yield great discoveries in chemistry and built a large battery. But Davy was soon to be called to a new, brilliant appointment, where he could continue his work on electrochemistry.

In the first of this two-part series on Max Planck, I sketched his career to the point where, in 1897, he began to work on explaining the phenomena of black-body radiation, a problem that had challenged some of the best physicists of the day and that they had failed to solve. At first, he tried combining electrodynamics and thermodynamics, but Boltzmann correctly criticized Planck’s formulation. Planck then successfully combined Wien’s work with that of Rayleigh and Jeans, but a satisfactory physical explanation was still lacking.

When Planck tried to apply Boltzmann’s statistical formula for entropy to the problem, he found he had to assume that the enclosure walls were composed of electrodynamic oscillators, which could only emit energy that was not infinitesimally variable but was connected to the oscillator frequency by the now-famous formula E = h, where h is what Planck called a quantum of action. Later generations dubbed it Planck’s constant. Planck obtained a value for h from experimental data that is close to the currently accepted value. He introduced these new ideas in two presentations to the German Physical Society in Berlin on October 19 and December 14, 1900. Their impact was to be felt throughout 20th-century science.

At first, however, Planck’s novel view of radiation, while it was agreed to be interesting, was viewed as a kind of formalism: a way of accounting for the data without necessarily providing a fundamental physical explanation of the phenomena underlying it. Boltzmann was impressed, and Planck himself is supposed to have told one of his sons that he had made a discovery that was in the class of one of Newton’s. But he was still trying classical approaches to the problem until finally, toward the end of his career, he wrote: “My vain attempts to somehow reconcile the elementary quantum with classical theory continued for many years and cost me great effort…. Now I know for certain that the quantum of action has a much more fundamental significance than I originally suspected.”

That significance was first postulated by the obscure patent clerk in Switzerland, Albert Einstein, in his wonder year of 1905. He broadened the quantum approach to radiation by applying it to all radiation, inventing the photon as a particle of radiation—a collection of which sometimes behaves as a wave! Planck trumps Maxwell. With this revolutionary idea, Einstein was able to explain another familiar physical phenomenon, originally described by Hertz, which like black-body radiation had eluded the net of classical physics, namely, the photoelectric effect. Quantum theory was on its way to being accepted as one of the great foundational ideas of science, and Planck was awarded the Nobel Prize for Physics in 1918 and received many honorary degrees and fellowships.

Planck’s personal life was not easy. His first wife, with whom he had four children, died in 1909, and three of those children died during World War I, a son at the Front and two daughters in childbirth. He remarried and had another son. When Hitler came to power in 1933, Planck was 75. He accepted the Presidency of the Kaiser Wilhelm Society (now known as the Max Planck Society), hoping to modify the views of the new Fuhrer toward some scientists, but in vain. Planck’s surviving son from his first marriage, Eric, was executed by the Nazis for his part in the July 1944 plot against Hitler. The Planck family house was destroyed during the bombardment of Berlin, but Planck was escorted by American forces to Goettingen in West Germany, where he lived until his death on October 4, 1947, just a few months short of his 90th birthday.

This article has been greatly aided by the following sources: A Biographical Dictionary of Scientists, Trevor I. Williams, Ed., Wiley, 1982; From X-rays to Quarks, Emilio Segre, Freeman, 1980; and The Strange Story of the Quantum, Banesh Hoffmabnn, Dover, 1959.

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April, like most months, is rich in anniversaries of scientists who made major contributions to chemical sciences. Among them are James Watson, Robert Woodward, Carl Lindemann, and Glen Seaborg. But I choose to discuss the career of a great physicist whose work made such an impact on our science that it changed the thinking and work of every chemist who followed him. I refer to Max Karl Ernst Ludvig Planck, born in Kiel, Germany, on April 23 (a birthday he shares with Shakespeare), 1858.

The Planck family had, in common with the family of J. Clerk Maxwell, a long history of public service as lawyers, scholars, and clergymen. Planck’s father was a professor of law. The family moved from Kiel to the independent state of Bavaria when Max was 9 years old. He attended the Maximilian Gymnasium in Munich, where he chose an emphasis on physics over music (he remained an excellent pianist all his life), perhaps through the influence of his physics teacher H. Muller. His experience for his first 3 years at the University of Munich was less inspiring, and he transferred to Berlin, where he encountered two distinguished physicists as teachers. Kirchhoff, the collaborator of Bunsen in spectral analysis, apparently delivered his polished lectures in such a manner as to put many in his audience to sleep. Helmholz, the great expert on electrical and optical phenomena, was often unprepared and difficult to follow.

Planck read widely in physics and decided to specialize in thermodynamics, after reading some of Clausius’s work. His doctoral thesis, which included a critique of Clausius’s views on irreversibility, was successfully submitted to the University of Munich in May 1879. It is worth noting that some of Planck’s results had already been published by J. Willard Gibbs in a very long article published in the somewhat obscure Transactions of the Connecticut Academy of Sciences, an article that was not brought to the attention of the European thermodynamicists for decades. On the strength of his thesis, Planck was appointed Privat-Dozent at Munich and then in 1885 was called to Kiel as Extraordinary Professor of Theoretical Physics.

In 1889, on the death of Kirchhoff, the prestigious University of Berlin asked Boltzmann to succeed him. Initially, he accepted, but then changed his mind. In his place, the somewhat unlikely choice was the young 34-year-old Planck, who was appointed Professor in 1892, becoming a colleague of the great Helmholz. Planck remained at Berlin for the rest of his professional career, retiring in 1928. His successor was Schroedinger.

Planck’s work before he ascended to the Berlin Chair was collected in his important thermodynamics text, published in 1897, and included discussion of chemical potentials and their applicability to equilibrium constants; dissociation of real gases; and the thermodynamics of colligative properties, including freezing-point depression and osmotic pressure. These treatments of really fundamental chemical and physical problems led him to the forefront of classical thermodynamics.

At Berlin, he began to turn his attention to emissivity phenomena, the so-called black-body radiation. His predecessor, Kirchhoff, had provided theoretical backing for the observations that the distribution of radiant energy with wavelength (or frequency!) emitted from a heated enclosure did not depend on the material of the enclosure. It was therefore a quite general or universal result. In 1893, Wien had used experimental data to derive his displacement law, which connected the enclosure temperature with the frequency of maximum energy output. The efforts of some of the best physicists of the day, including Rayleigh and Jeans, were able to explain parts of the Wien law at low frequencies and high temperatures, but failed at other extremes. The field was open for Planck’s efforts.

Also, please join CHAL at the Hilton Salt Lake City on Monday, March 23 for our semi-annual reception. The reception will last from 5-8PM and is generously sponsored by Knobbe Martens Olson & Bear LLP. The hotel is downtown across from the convention center.

In no way can I fully describe Jack’s wonderful life, impressive achievements and tremendous contributions to CHAL in my brief Chair’s Message, and I encourage everyone to read the poignant article about Jack written by CHAL co-founder and Past Chair Howard Peters, one of Jack’s closest friends. I would like, however, to say a few brief words about Jack and share some memories of Jack’s service to CHAL.

Jack was an active member of ACS for over 50 years, dutifully serving as Chair of the Santa Clara Valley Local Section, as well as the founder and editor of the Santa Clara Valley Local Section newsletter. Because the Santa Clara Valley Local Section includes a significant number of chemical patent attorneys as members, Jack recognized the potential value of creating an ACS Division dedicated to chemistry and the law. Although Jack was not a lawyer and had no formal legal training, his vision, along with the vision of fellow Santa Clara Valley Section members Hugh Dubb, Howard Peters and Shirley Radding, led to the formation of CHAL.

Although I have many fond memories of Jack, two especially come to mind. During a recent and particularly long Sunday evening CHAL Executive Committee meeting, none of the attorneys in the room — myself included — could reach a consensus on the international distribution of our newsletter by mail. After almost a half hour of relatively unproductive discussion, someone asked whether anyone knew how many CHAL newsletters were mailed to addresses outside the United States. Jack, who understandably had fallen asleep during the discussion, immediately awoke and correctly answered “79.” We then reached agreement and promptly turned to another area of discussion, thereby giving Jack the opportunity for some more well-deserved sleep.

Significantly more special, however, was CHAL’s celebration of Jack’s 80th birthday at the Spring 2007 National Meeting in Chicago. Although Jack had been suffering from advanced multiple sclerosis for some time, he continued to travel across the country and attend every National Meeting through Fall 2007. During CHAL’s Monday evening reception at the Chicago Meeting, we surprised Jack with an 80th birthday party, complete with cake and a happy birthday song. It really made Jack’s day, and we were genuinely grateful for the opportunity to celebrate a special moment with such a fine gentleman, who played a central role in CHAL’s success throughout our 25 years as an ACS Division. Directly or indirectly, Jack touched the lives of each and every member of CHAL in a positive way. Thank you Jack, and God bless you!

Jack has requested that donations be sent in his name to the National Multiple Sclerosis Society, Silicon Valley Office, 2589 Scott Boulevard, Santa Clara, CA 95050.

On June 9, 2008, the Supreme Court decided Quanta Computers, Inc. v. LG Electronics, Inc., and limited a patent owner’s right to seek payment for using a method once a product using the method is sold. The Court held that the authorized sale of a product incorporating a patented method “exhausts” the patentee’s right to seek payment for use of the patented method from a purchaser of the product. As a result, purchasers of the product are free to use the patented method without a separate payment to the patentee.

The primary issue addressed by the Supreme Court in Quanta Computers, Inc. v. LG Electronics, Inc., is the applicability of the patent exhaustion doctrine to a patented method. LG Electronics (LGE) owns three patents directed to methods for microprocessors to retrieve data, organize read and write requests and manage data traffic. LGE entered into a licensing agreement with Intel to manufacture microprocessors that, when combined with common components, would practice the methods claimed in the LGE patents. The licensing agreement permitted Intel to sell the microprocessors and stipulated that the license did not extend to any third parties. Thus, according to LGE, if a third party purchased a licensed Intel microprocessor, then those microprocessors could only be used with other Intel components.

Quanta Computer, however, purchased the licensed Intel microprocessors and used them with computer components made by other companies. As a result, LGE sued Quanta Computer for patent infringement for using the patented methods embodied in the microprocessors without a separate license from LGE.

Quanta argued that it was a good faith purchaser of the licensed Intel microprocessor incorporating the patented method, and therefore LGE’s patent rights were “exhausted.” According to Quanta, it was free to use the licensed microprocessor as it wished. The District Court held that because the LGE patent was for a method invention, it was not subject to patent exhaustion.¹ On appeal, the Court of Appeals for the Federal Circuit agreed, and, in the alternative, held that “exhaustion did not apply because LGE did not license Intel to sell the Intel products to Quanta for use in combination with non-Intel products.” ²

The Supreme Court disagreed with both lower courts. The Supreme Court held that while “a patented method may not be sold in the same way as an article or device… methods nonetheless may be embodied in a product, the sale of which exhausts [method] patent rights.” ³ In this case, the Court held that each microprocessor sold by Intel “substantially embodies the patent because the only step necessary to practice the patent is the application of common processes or the addition of standard parts.” ⁴ Finally, the Supreme Court held that “because Intel was authorized to sell its products to Quanta, the doctrine of patent exhaustion prevents LGE from further asserting its patents rights [against Quanta].” ⁵

For component purchasers, this decision provides reassurance that a patent owner cannot demand a royalty from the purchaser after an authorized sale of a component that “substantially embodies” a patented method or a patent of the component itself. However, for patent owners, this decision presents the potential for unintended loss of the patent rights.

Patent owners are now faced with the burden of not only updating their practices for future licensing transactions, but also reviewing and potentially renegotiating existing agreements, including method patent licenses and manufacturing contracts. In particular, patent owners must determine if any licensed components “substantially embody” a method patent and therefore are now subject to patent exhaustion when they are sold.
____________________
¹LG Electronics, Inc. v. Asustek Computer, Inc., 65 USPQ 2d 1589, 1593, 1600 (N.D. Cal. 2002).
²LG Electronics, Inc. v. Bizcom Electronics, Inc., 453 F.3d 1364, 1370 (Fed. Cir. 2006).
³Quanta Computers, Inc. v. LG Electronics, Inc., 553 U.S. ____ (2006).
⁴Id.
⁵ Id.

Brian: Nhung, to many of us, that sounds like a very silly question. After all, the answer is “I do”, isn’t it? Well, we know that surprisingly often, that is NOT the case in the United States for inventors who are employees. My read is that under U.S. laws ownership vests initially in the actual inventor(s) of an invention. However, an employee-inventor may not have retained that ownership. How can it be that an employee may invent it, but not have sole ownership, or even co-ownership of the invention?

Nhung: Brian, you may cringe, but I have to give you a lawyer’s answer, which means I have to be precise. When you say “U.S. laws” you probably meant “patent laws”, right? U.S. patent laws say:

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” (35 U.S.C. 101) (emphasis added)

So the patent laws say that if you are an inventor, you may obtain a patent for your invention. What if no one applies for a patent for that invention? The patent laws do not specify who “owns” the invention, they only say who may obtain a patent for the invention. In the absence of a patent, you would have to look to the property laws of the states, as opposed to the federal patent laws, to determine who owns the invention.

Brian: O.K. Let’s talk about the most common situation for a chemist, where something that you may have invented may not be “yours”. That occurs, for example, if you are an employee of an industrial chemical or pharmaceutical company in the United States, and you have signed an agreement, even before starting work, saying, among other things, that anything invented while using the company resources belongs to the company; and the company is not obligated to pay you any royalties in return. In fact, royalties are rarely paid, and any immediate reward for a patent is usually limited to a gift, a token dollar, or a plaque.

Nhung: Brian, those employment agreements typically cover inventions regardless of whether they are patentable or whether any attempt is made to patent them. So the agreements in general cover more than just patent rights. There are also some states that limit the scope of the inventions covered by the agreement. For example, I understand that Minnesota excludes inventions in a field unrelated to the business of the employer, and made entirely on an employee’s own time without the use of facilities, equipment or material from the employer. It goes without saying that you have to read those agreements carefully before you sign them. If you are at the beginning of your career, you may not have much leverage to negotiate changes in the terms of the agreement, but you should at least know what you are committing yourself to do.

Brian: Let’s go back to the question of reward or compensation for an employee who has developed an invention in the chemical or pharmaceutical industry. The question often asked is, shouldn’t the employee get more than a plaque or a token gift? Is it equitable that an employee-inventor in the U.S. may not have retained ownership in his or her invention? Few will argue that the employee-inventor should own all of it, but many would argue that the employee-inventor should retain part ownership or receive some reasonable royalty.

Nhung: That’s an age old debate in which the systems in other countries such as Germany have been held up as models. I don’t see any momentum for similar legislation being enacted in the U.S.

Brian: I suppose you really have to look at the whole picture to get an idea of what is “fair.” If you invented a billion dollar product for your company, you may not think it fair that you don’t get a share of the profits. However, consider how many thousands of people work diligently and receive compensation for decades in industry without developing a marketable invention to show for it. Under this scenario the lack of compensation for the one blockbuster becomes a lot more reasonable and understandable.

I think the last thing we would want to do, though, is suggest that there is no reward for creativity, diligence and the inventions which may follow. Career advancement, including salary increases, is the traditional reward in the U.S. for an employee who develops an invention when working in industry, particularly in R&D. Also, while the ownership may not be yours, the rules for naming the actual inventors on patents I understand are very strict, so if you are the employee-inventor, I would expect that you can count on seeing your name in the header of the patent.

Nhung: Here, I have to be the lawyer again. You may have been an inventor as defined under U.S. patent laws, but it is still possible that you have no right to have your name recited as an inventor on a patent. Let me explain. The inventorship in a patent is determined by looking at the claims in a patent. If your invention is recited in at least one claim in the patent, then your name should be listed as an inventor.

Let’s say that a U.S. patent application was filed with a set of claims for which you qualify as an inventor. Then, during the “prosecution” of the application before the Patent and Trademark Office, the decision was made to delete all the claims for which you qualify as an inventor. That may occur, for example, when the examiner at the Patent and Trademark Office continues to reject those claims over “prior art” that is very close to your invention. With those claims being deleted, U.S. patent laws require that your name be removed from the list of inventors for that patent application. The text of the application (which becomes the text of any granted patent) still describes the invention you contributed, but there are no longer any claims covering your invention. Therefore, you are not entitled to have your name recited as an inventor in that patent. This illustrates again that not all inventions are patentable. We should also remember that not all inventions are patented even if patentable, for example when the decision is made not to pursue a patent because of the costs involved.

Brian: Let me see if I understand. Could that go something like this? My coworker and I worked on a project where she produced a series of chemical analogs with a trifluoromethyl group, and I produced a series of analogs with an amine group. Our company submits a patent application with claims covering both series of compounds, and so both of us are named as inventors. If the claims for the analogs with the amine group continue to be rejected, and a decision is made to delete those claims from the patent application, then my name HAS TO BE removed from the inventors listed in the application, even though I worked shoulder to shoulder with my co-worker on the project. Could that happen?

Nhung: Yes, that would be an example. Please note, however, that just because you worked on “producing” the compounds does not necessarily make you an inventor. You have to have contributed to the “conception” of the compounds, as opposed to merely carrying out a synthesis envisioned and designed by someone else.

Another example: let’s say you came up with the idea for a method to measure the residual ozone level in a product made by a process that uses ozone. When the patent application is filed, it contains claims to the method of making that product. In addition, the application has just a few claims on the method for measuring residual ozone in the product. The Examiner at the Patent and Trademark Office imposes a “restriction requirement,” saying that in effect you have claims to two different inventions in the same application. In response to that “restriction requirement,” the decision is made to “elect” the claims to the method of making the product. Eventually the claims to the method of measuring residual ozone are cancelled from the application. Since you did not contribute to the idea or conception of the claims that are left in the application, your name MUST be removed from the list of inventors’ names in the application.

Brian: Academic scientists and students often face the same situation. While perhaps to varying degrees, an entering professor, graduate student or post-doc will also be required to assign ownership rights to inventions to the University. From what I have seen, compensation may be more common in Universities, however. As in so many cases, it is worth finding out what the terms of the agreement are and what are the University policies before making any commitment.

Nhung: Some universities may have an agreement for professors that is different from the agreement for graduate students and post-docs. And undergraduate students may be treated differently in this regard. See, for example, the agreements at Penn State University which you can find on-line here.

Brian: Whether we are talking industry or academia, the terms of such an agreement may differ markedly for any employee-inventor or student-inventor. I know some agreements claim anything invented, at any time or any place while being employed, while some agreements may only claim those as part of employment. If inventing in your spare time is something that you see as a path to future riches, you want to be sure you understand what you are agreeing to.

This discussion offers a VERY general introduction to the issues of employee-inventor compensation. Employee-inventor compensation can be exceedingly complex and require the advice of experienced Intellectual Property counsel. However, if you consider the question “Who Owns My Invention?” now, much of what happens later will make more sense.
———————————–
Brian is Ph.D. chemist working in industry. Nhung is a patent attorney with a Master’s degree in chemistry.

Second, to my friends and colleagues who have served dutifully as Chair of CHAL before me. These fine men and women include Sandie Thompson, Carl Lippenberger, Brian Meadows, Bill Johnson, Ken Colton, Carl Meyer, Chuck Hauff, Alan Ehrlich, Mike Kaminski, Dan Burk, Alice Robertson, Dave Jaffer, Jim Carver, Rich Racine, Howard Peters, Shirley Radding, Jack Riley, Michael Burns, Rose Ann Dabek, Hugh Dubb, Ken Bjork,Tom Irving and Mike Gilroy. Their twenty-five years of service to CHAL, not to mention their collective hundreds of years of experience in the legal profession, have led the Division to where it is today.

Next, to the countless others who have served on CHAL’s Executive Committee over the years. They too have contributed immeasurably to the success of the Division, and I greatly look forward to working with the current Executive Committee this year and beyond.

Additionally, to the Past ACS Presidents who have unfailingly supported CHAL’s endeavors. They include Katie Hunt, Ann Nalley, and particularly Bill Carroll, under whose leadership CHAL’s Legal Assistance Network formed.

Finally and most importantly, to all attendees of CHAL’s symposia and social events at national, international, sectional and local meetings. Your continued attendance at CHAL’s sessions and participation in HAL’s social and networking activities is perhaps the greatest measure of CHAL’s success over the last twenty-five years. On behalf of the entire Executive Committee, we are genuinely grateful and loyal to all of you, and we truly value your input regarding CHAL’s programs. As always, if you have any suggestions for our Division or would like to see any particular programs scheduled during upcoming meetings, please do not hesitate to contact me directly at justin.hasford@finnegan.com or (202) 408-4000.

Here’s to the success of CHAL for twenty-five more years and beyond!

Justin Hasford