Who Should Own Patents –
Professors or Universities?
At the Association of University Technology Managers annual meeting earlier this year, two medical innovators unveiled a draft of the “Academic Inventors’ Bill of Rights.”
Although billed as a “collaborative work in progress,” the initiative highlights ongoing tension between academic and student inventors on one side, and university administrators on the other. At stake: who ultimately controls and profits from intellectual property developed on campuses across the country.
Association of University Technology Managers or AUTM, citing the groundbreaking Bayh-Dole Act of 1980, say universities should own and control IP developed by professors and students when they use federal funds and facilities.
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Earlier this year, AUTM president Arundeep Pradhan wrote a lengthy defense of the Bayh-Dole Act in BusinessWeek, arguing among other things that universities are best positioned to handle the administrative and financial burdens of obtaining and commercializing patents.
“(University) technology licensing offices expend resources to obtain patent protection and are rapidly implementing programs that include entrepreneurial training, product proof of concept support, and seed stage or gap funding,” he wrote. “If universities did not undertake these financial risks, the number of patents, licenses, and startup companies emanating from academic research would drop off dramatically.”
Alan Bentley, director of commercialization for Cleveland Clinic Innovations, and Dr. Renee Kaswan, founder of IPAdvocate.org, former research professor at the University of Georgia and inventor of Restasis, a product for dry eye, say universities tend to exercise too much control of academic IP.
IP Advocate is a nonprofit organization that educates and empowers faculty researchers on patent rights and the process of commercialization.
“Faculty researchers generally understand that the university’s tech transfer office can be a valuable resource,” Kaswan said in prepared remarks. “But we’re also vulnerable because there are no official protections of our role in translating our discoveries into products that benefit society.
“The Bayh Dole Act initiated a 30-year evolution of IP policy language that singularly protects university administrators,” she added, “often at the expense of students and faculty.”
Kaswan’s and Bentley’s bill of rights proposes, among other things:
- Students and faculty have a right to freedom of expression; the right to teach and publish their research shall not be abridged by intellectual property policy.
- Inventors shall be entitled to timely disposition of their inventions and to obtain access to inventions for which the university elects to discontinue commercialization effort, without onerous restrictions or obligations to the university that would act as disincentives to commercialize.
- Universities must establish and publish transparent practices and procedures comprising their commercialization processes.
- Inventors have the right to due process, conducted in public with public access to all records as they may request.
- All inventors, including students and other subordinate persons, shall have equal right to institutional protection of their interests in their intellectual property regardless of academic rank or position.
- Inventors have the right to be informed about any license negotiations or re-negotiations.
- Any changes to intellectual property or commercialization policies shall be approved by the appropriate faculty-run governance body, such as a Faculty Senate.
- Disputes shall be resolved by a committee that includes faculty, student and administrative representatives.
Kaswan recommends either of the following rights also be adopted:
- No university may require present assignment of future IP rights as a condition of employment or student enrollment.
Or, at a minimum:
- Inventors who assign their IP to a university may elect a qualified independent agent to promote their invention into public use. The agent must represent the interests of the university, public and inventors. Election of an agent does not modify the pre-existing royalty sharing arrangements.
This last right is the subject of a recent proposal by the Kauffman Foundation to the Department of Commerce.
Editor’s note: This article appears in the June 2010 print edition.
