Here to stay: Universities, technology transfer and intellectual property
In University IP: A Source of Finance and Impact, Graham Richards, the former chair of the Chemistry Department at Oxford University with experience with 50 companies that were developed using university research, addresses the vast and growing subject of university technology transfer along with related intellectual property law issues. Professor Richards authors five chapters and then offers six additional chapters written by different authors, including the perspectives of a distinguished former judge, an attor- ney, and a technology transfer professional. The book is an excellent overview of the issues associated with the protec- tion of university intellectual property by law and raises issues. These include changing university intellectual prop- erty ownership policies which may skew research agendas away from basic research, practical problems relating to the standardization of agreements for technology transfer, and raising a controversial question about university ownership of copyright material created by academics along with uni- versity managerial responsibility and ownership over aca- demics? consultancy arrangements with industry.
The issues raised by university intellectual property are vast and Professor Richards and his co-authors do a com- mendable job of setting forth the issues and do so in a way that is accessible in a short, readable 149 pages. Not all of the issues are given in-depth treatment, but the issues are raised very well. For example, the book will give the reader a sense of the political and cultural issues associated with technology transfer in the university context along with the positions of various stakeholders. And, the book goes beyond describing the issues to making specific, helpful proposals for reform. In a word, this book is useful.
This volume also serves as a helpful introduction and overview concerning the subject for many including attorneys who want to represent companies which either work with or have spun off from universities, attorneys who desire to represent universities or university employee inventors, technology transfer professionals, academic researchers, students studying the subject, policy-makers, and the general public. The audience for this book is wide because universities are critically important to economic growth. While the main method of technology transfer from universities to the economy is the training of students who become workers in the public and private sphere, technology transfer through patents and other types of intellectual property has become increasingly important as we look to stimulate and grow our economy and at the same time we are searching for funding to offset the ever increasing cost of the higher education system.
Many believe that university ownership of research gen- erated at universities holds the promise of ensuring that research that may be publicly or privately funded will reach and benefit the public through the commercializa- tion of products and services and may provide the benefit of funding for universities as well. Unfortunately, the promise of a windfall to universities has not quite materialized?at least for the vast majority of universities, particularly in the United States. This should not, and I believe the authors would agree, stop universities from pursuing improvement of the system as it exists?and there are many useful proposals from the authors.
This truth may redirect the focus from expectations of funding the university through royalty streams to new metrics to measure success such as local economic growth or the development of products and services for humani- tarian benefit, as others have suggested. But it does raise a cautionary flag?universities have served to transfer tech- nology for years through the training of students, academic presentations and academic publications benefiting the public, and will we disrupt the existing benefits of the system with an attempt to ?make patents work? in the uni- versity context. In other words, what may we lose? This is an important question and is one that the book could address in more depth, although Catherine Rhodes in her chapter does a fine job of addressing this issue. Indeed, I believe Professor Richards may have been somewhat swayed by Ms Rhodes?s perspective as his final chapter expresses concerns with the change toward the increased focus on technology transfer by his wise statement, ?we need to ensure that the pendulum does not swing too far in the opposite direction.? He also raises the point that hiring decisions for academics should be done along tra- ditional lines: ?teaching and research capabilities without consideration as to whether their work might be commer- cially exploitable.? Unfortunately, in the quest for more funding for universities, the next step in academia?one that is raised in a qualified manner by one co-author and no doubt is raised by others in the field?is to tie the com- mercialization of research or formation of new university start-ups to tenure and promotion. And, as Professor Richards notes, ?[a]ll experience shows that big successes come from blue-sky research. . ..? The benefits of which, as he recognizes, are difficult to know at the beginning of most basic research projects.
While hedging some of the more pro-university patent positions of his co-authors, Professor Richards is very practical in acknowledging that the modification of the system to favor university ownership of academic research and promote commercialization is here to stay. He is right?it is here to stay. Thus many of the practical suggestions to reform the system to improve it for its intended purpose are welcome. For example, helpful practical suggestions include: increasing education about the patenting and commercialization process as well as contractual terms for academics; developing a well-trained technology transfer office staff; sharing resources amongst universities to foster technology transfer; creating clear policies concerning the ownership of all patentable inven- tions, including those concerning graduate students; encouraging socially responsible licensing practices; and using mediation to resolve disputes early to ensure the invention is actually commercialized. All of these sugges- tions are well worth pursuing and should be considered by decision-makers involved in the university technology transfer field.
The issues that Professor Richards raised and which I thought would be most interesting to read more about are the arguments as to whether most, if not all, copyright material produced by academics should be owned by the university and whether universities should receive most, if not all, of the revenue from consulting by academic researchers. This is a fascinating issue and definitely a con- troversial one. Professor Richards astutely leaves it to his colleagues in academia to think about it themselves. I am hopeful that he will write about the issue in the future.