University Intellectual Property Research Articles

“Your” Intellectual Property: Who Owns It?

State Street Bank & Trust Co. v. Signature Financial Group, Inc. brought “business methods” into the scope of patentable material. In an academic setting, this expansion may increase the importance of university intellectual property policies to business research. This article discusses criteria for protection as copyrightable or patentable work. It also addresses implications for faculty ownership and disclosure requirements. The discussion highlights rights universities have enforced through their intellectual property policies. Recognition of these issues may be helpful in identifying both opportunities and pitfalls as “business method” intellectual property protection continues to evolve.

Intellectual Property in an Innovation-based Economy

AbstractThe process of transformation into an innovation-based economy has had a considerable impact on the intellectual property (IP) system. IP has become an integral part of innovative processes. These developments have led to changes in IP concepts. The authors argue that the notion of IP must include both legal (IP as rights) and economic (IP as an asset) aspects. The balance between different kinds of IP (copyright, related rights, industrial property) within innovation processes should be reviewed in order to acknowledge the rightful place of copyright as the core of IP and IP culture. Nevertheless, the major tools for enhancing innovation are still based on industrial property. The role of IP in different kinds of policy documents should be increased. In order to fully exploit the potential of IP, it is necessary to enhance the development of supportive infrastructure for the utilization and commercialization of IP (intellectual infrastructure). Such infrastructure should support the functioning of IP systems, identifying new knowledge and transfering knowledge from entrepreneurial universities to industry. Raising public awareness about practical aspects of IP and fostering IP competencies are of paramount importance. Teaching IP at universities and adopting university IP policies form an important part of this process. According to the vision of the authors, a basic course on IP should be taught at every university to all students. Specialized IP courses should be part of the curricula at the faculties of law, economics, engineering, biology, philosophy, etc. The authors outline the Estonian experience with regard to these issues.

Technology transfer offices and commercialization of university intellectual property: performance and policy implications

The recent increase in the rate of commercialization of intellectual property at US and European universities has important performance and policy implications. We review recent studies of the antecedents and consequences of these activities and then draw some lessons learned for policy-makers. A key conclusion is that universities and regions must formulate and implement coherent and feasible technology transfer/commercialization strategies.

Technology Licensing for the Benefit of the Developing World

In the years since the passage of the Bayh–Dole Act of 1980, university technology transfer success has been measured primarily by traditional metrics such as numbers of patents filed, revenue obtained from licensed patents and numbers of start-up companies founded to commercialize university intellectual property. Intellectual property (IP) managers have often responded to these metrics and expectations by attempting to maximize revenue from commercial IP licences. In recent years the University of California at Berkeley has acknowledged that, while licence revenue generation and local economic development are important goals, it is equally important to maximize the social impact of research. It has therefore adopted several IP management strategies, including a Socially Responsible Licensing Program (SRLP). Several types of agreements have been executed under the SRLP, including IP licences, sponsored research agreements and collaborative research agreements. All are structured to provide an economic incentive to licensees to develop and distribute goods and services to low-income and middle-income countries and/or other target groups as they are defined in each contract.

Technology transfer offices and commercialization of university intellectual property: performance and policy implications

The recent increase in the rate of commercialization of intellectual property at US and European universities has important performance and policy implications. We review recent studies of the antecedents and consequences of these activities and then draw some lessons learned for policy-makers. A key conclusion is that universities and regions must formulate and implement coherent and feasible technology transfer/commercialization strategies.

Spin-out fever: Spinning out a University of Oxford company and comments on the process in other universities

University spin-out companies are increasing seen as a favoured route for commercialisation of university intellectual property. There has been criticism in the Lambert Review of Business–University Collaboration in 2003, commissioned by the UK Government in 2003, that there have been too many spin-outs of low quality and that a measure of quality is the amount of external equity they attract. This has been refuted by Dr Williams of the University of Warwick technology transfer office. Oxford University has created 42 companies with no failures. The rigorous process involved in the creation of an Oxford spin-out is given in some detail. The author then goes on to discuss his experiences of other university spin-out models. Finally, some of the tax problems that caused universities across the UK to stop spinning-out companies recently are discussed. In conclusion despite the criticisms, the author believes the process of creating companies to commercialise university R & D is critical to the overall success of UK plc in the long term.

Spin-out fever: Spinning out a University of Oxford company and comments on the process in other universities

University spin-out companies are increasing seen as a favoured route for commercialisation of university intellectual property. There has been criticism in the Lambert Review of Business–University Collaboration in 2003, commissioned by the UK Government in 2003, that there have been too many spin-outs of low quality and that a measure of quality is the amount of external equity they attract. This has been refuted by Dr Williams of the University of Warwick technology transfer office. Oxford University has created 42 companies with no failures. The rigorous process involved in the creation of an Oxford spin-out is given in some detail. The author then goes on to discuss his experiences of other university spin-out models. Finally, some of the tax problems that caused universities across the UK to stop spinning-out companies recently are discussed. In conclusion despite the criticisms, the author believes the process of creating companies to commercialise university R & D is critical to the overall success of UK plc in the long term.

Guest editorial: The sealing of university intellectual property boundaries and the ceiling of academic entrepreneurial tolerance

Guest editorial: The sealing of university intellectual property boundaries and the ceiling of academic entrepreneurial tolerance

Confronting the Privatization and Commercialization of Academic Research: An Analysis of Social Implications at the Local, National, and Global Levels

Confronting the Privatization and Commercialization of Academic Research:An Analysis of Social Implications at the Local, National, and Global Levels Risa L. Lieberwitz* (bio) Introduction In the current era of capitalist hegemony, the term "globalization" has become synonymous with the global dominance of private market economies. Though concepts of "internationalism" have long been associated with the political Left, the possibilities of a progressive vision of globalization are currently overshadowed by the deepening of private market policies in existing capitalist economies and the expansion of capitalism to former socialist countries and to developing countries throughout the world. This phenomenon has affected all societal institutions through governmental implementation of privatization policies and deregulation; through the power of global financial institutions—such as the World Bank and the International Monetary Fund—to impose loan conditions that require governments to adopt policies that promote private markets;1 and through multilateral trade agreements that favor transnational corporations (TNCs) in their pursuit of increased capital mobility and market expansion.2 This article addresses the impact of privatization on universities in the United States, focusing, in particular, on the effects on the university mission and academic research in the life sciences. Both public and private nonprofit universities have been affected by public policies of privatization, leading to [End Page 109] increased commercialization of academic research and growing university-industry ties. These changes in practices have been accompanied by a significant weakening of the traditional definition of the university mission of serving the public interest through university teaching and research independent from conflicting interests of either government or business. Tied closely to university independence has been the core value of faculty academic freedom, protecting faculty autonomy over their work and enabling them to ensure the integrity of teaching and research that is independent from conflicting interests.3 The university's mission and the rights of faculty also describe the social role of the university and its faculty. Where the university has a public mission, its social role is defined in terms of promoting the public interest.4 Its policies and practices should, therefore, be aimed toward carrying out its public mission. As the university's mission becomes privatized, however, its social role is redefined as well, shifting from the public interest to serving private economic interests. Given the dominant influence of the United States in promoting private market economies globally, the social implications of privatizing the university's mission will extend beyond the national borders as well. This article begins with a discussion of the traditional definition of the university's public mission and faculty academic freedom, which have formed the core elements of faculty identity in the university. In part II, the discussion moves to legal developments promoting privatization that have had a major impact on these traditional definitions of university mission and faculty rights. The relevant legal developments have taken place at both the national and international levels. At the national level, these changes have been aimed specifically at the university, with the federal Bayh-Dole Act of 1980,5 which authorizes and encourages federal fund recipients—including universities—to patent and license federally funded research. As a consequence of the Bayh-Dole Act, universities have expanded their private market activities, leading to a major growth in university-owned patents and licensing of patents to industry. The article explores the impact of increased market activities at three levels: at the local level, on university culture and [End Page 110] research; at the national level, on the university's public mission; and at the international level, on the social implications of the university's involvement with expanding intellectual property rights. The article examines the international consequences of this commercialization by examining the World Trade Organization (WTO) multilateral trade agreement known as TRIPS—the Agreement on Trade-Related Aspects of Intellectual Property Rights.6 The 1994 TRIPS agreement, which requires WTO signatories to enact national laws protecting intellectual property rights, was not created with universities in mind. But with the increase of university-industry exclusive licensing agreements, university intellectual property practices take on global implications, as TNCs rely on TRIPS to reap the global benefits of their monopoly over university-owned patents. Part III of the article further...

Confronting the Privatization and Commercialization of Academic Research: An Analysis of Social Implications at the Local, National, and Global Levels

Confronting the Privatization and Commercialization of Academic Research:An Analysis of Social Implications at the Local, National, and Global Levels Risa L. Lieberwitz* (bio) Introduction In the current era of capitalist hegemony, the term "globalization" has become synonymous with the global dominance of private market economies. Though concepts of "internationalism" have long been associated with the political Left, the possibilities of a progressive vision of globalization are currently overshadowed by the deepening of private market policies in existing capitalist economies and the expansion of capitalism to former socialist countries and to developing countries throughout the world. This phenomenon has affected all societal institutions through governmental implementation of privatization policies and deregulation; through the power of global financial institutions—such as the World Bank and the International Monetary Fund—to impose loan conditions that require governments to adopt policies that promote private markets;1 and through multilateral trade agreements that favor transnational corporations (TNCs) in their pursuit of increased capital mobility and market expansion.2 This article addresses the impact of privatization on universities in the United States, focusing, in particular, on the effects on the university mission and academic research in the life sciences. Both public and private nonprofit universities have been affected by public policies of privatization, leading to [End Page 109] increased commercialization of academic research and growing university-industry ties. These changes in practices have been accompanied by a significant weakening of the traditional definition of the university mission of serving the public interest through university teaching and research independent from conflicting interests of either government or business. Tied closely to university independence has been the core value of faculty academic freedom, protecting faculty autonomy over their work and enabling them to ensure the integrity of teaching and research that is independent from conflicting interests.3 The university's mission and the rights of faculty also describe the social role of the university and its faculty. Where the university has a public mission, its social role is defined in terms of promoting the public interest.4 Its policies and practices should, therefore, be aimed toward carrying out its public mission. As the university's mission becomes privatized, however, its social role is redefined as well, shifting from the public interest to serving private economic interests. Given the dominant influence of the United States in promoting private market economies globally, the social implications of privatizing the university's mission will extend beyond the national borders as well. This article begins with a discussion of the traditional definition of the university's public mission and faculty academic freedom, which have formed the core elements of faculty identity in the university. In part II, the discussion moves to legal developments promoting privatization that have had a major impact on these traditional definitions of university mission and faculty rights. The relevant legal developments have taken place at both the national and international levels. At the national level, these changes have been aimed specifically at the university, with the federal Bayh-Dole Act of 1980,5 which authorizes and encourages federal fund recipients—including universities—to patent and license federally funded research. As a consequence of the Bayh-Dole Act, universities have expanded their private market activities, leading to a major growth in university-owned patents and licensing of patents to industry. The article explores the impact of increased market activities at three levels: at the local level, on university culture and [End Page 110] research; at the national level, on the university's public mission; and at the international level, on the social implications of the university's involvement with expanding intellectual property rights. The article examines the international consequences of this commercialization by examining the World Trade Organization (WTO) multilateral trade agreement known as TRIPS—the Agreement on Trade-Related Aspects of Intellectual Property Rights.6 The 1994 TRIPS agreement, which requires WTO signatories to enact national laws protecting intellectual property rights, was not created with universities in mind. But with the increase of university-industry exclusive licensing agreements, university intellectual property practices take on global implications, as TNCs rely on TRIPS to reap the global benefits of their monopoly over university-owned patents. Part III of the article further...

Assessing Technology Transfer and Business Development Potential: Technology Cluster Analysis

This article presents a methodology that university technology transfer practitioners can employ to improve interactions with corporations that have active intellectual property management programs. The methodology provides a means for packaging university intellectual property in ways that align with core competencies of corporations and is designed to maintain consistency with the mission, ethics, and organizational practices of both large corporations and research universities. For historical and organizational reasons, intellectual property at universities tends to be developed in discrete units that are, in turn, licensed as discrete units—usually based on a patent. The authors call this model one-off licensing. Although widely practiced, one-off licensing may diminish the university’s ability to realize the full potential of its intellectual property. Enhanced value results when several pieces of related intellectual property are grouped together. Synergistic groupings of intellectual property also enhance the ability of universities to spin out successful contributions to business formation.

Should there be corporate concern?

Academia is an industry like many of those in the private sector. It produces valuable patents, copyrights and other intellectual property. Consequently, the “research for sale” industry by way of corporate/university partnerships continues to grow. While it is certain that academics participating directly in corporate research partnerships are required to abide by project confidentiality agreements, their colleagues and other academic researchers peripherally involved may only be required to adhere to their own university's policies, which may or may not be sufficient. From a corporate executive and strategic policy standpoint, important questions arise. Are corporate interests protected by the presence of valid university intellectual property policies, or should there be concern? In an effort to answer this question, our article examines university policies for the purpose of determining which academic institutions are more likely to maintain protective policies, private or public, and which policies are most prevalent amongst universities: patent, copyright, general loyalty clauses, invention, trademark or trade‐secret policies.

Impacts of government high-tech policy: a case study of CAD technology in China

Abstract Rapid growth of technology innovations promotes governments world-wide to actively explore the best way to realize its economic benefits. Likewise, Chinese government has positioned advances of high technology a driving-force to continued economic achievements, and launched various high-tech policies. This case study focuses on computer-aided design (CAD), a key field under policy support, discloses policy’s critical role. Interview/survey data from corporate and academic leaders were also collected and synthesized. The emergence of university–industry collaboration, capitalizing university intellectual property, and new modes in CAD innovation and technology diffusion are among those major findings. A Model is also proposed. The study provides new observations for debates to high-tech policy-makers and can benefit scholars and business managers seeking to understand the environment in China, and serve as a foundation for further policy and management research.

Bottom-up versus top-down policies towards the commercialization of university intellectual property

What national policies are most efficient in promoting the commercialization of university-generated knowledge? We address this question by characterizing and evaluating the policy pursued in Sweden and the US, two countries that put a great deal of resources into university R&D, but follow very different models for commercialization. Despite a leading academic record, there is an impression of laggard rates of commercialization of academic research results in Sweden. Although there exist no micro data to evaluate this impression, we argue that it is likely to be true in part due to the top-down nature of Swedish policies aimed at commercializing these innovations as well as an academic environment that discourages academics from actively participating in the commercialization of their ideas. This sits in stark contrast to a US institutional setting characterized by competition between universities for research funds and research personnel, which in turn has led to significant academic freedoms to interact with industry, including significant involvement in new firms.

Equity and the Technology Transfer Strategies of American Research Universities

American universities are experimenting with new mechanisms for promoting the commercialization of academic research and generating revenue from university intellectual property. This paper discusses mechanisms available to universities in managing the commercialization of intellectual property, considering equity as a technology transfer mechanism that offers advantages for both generating revenue and aligning the interests of universities, industry and faculty. Employing data from a national survey of Carnegie I and Carnegie II institutions, we document the recent rise in university equity holdings. We present and estimate a model that considers the university's use of equity to be a function of behavioral factors related to the university's prior experiences with licensing, success relative to other institutions, and the organization of the technology transfer office, as well as structural characteristics related to university type.

How States Augment the Capabilities of Technology–Pioneering Firms

State governments offer a variety of programs to assist technology intensive entrepreneurial firms yet there is a limited understanding of how firms use these programs. This paper provides a framework for categorizing state technology programs and uses detailed case studies to examine how these programs augment firms’ capabilities. It is concluded that firms made extensive use of state programs that provide access to university intellectual property and research facilities. In addition, firms participated in programs that provided incentives for faculty to conduct joint research with industry. Finally, state venture capital programs, though small relative to federal R&D grants or venture capital, appear to nurture firms’ development.

Growth and productive efficiency of university intellectual property licensing

Licensing activity of US universities has increased substantially in recent years. We examine this increase focusing on the ‘productivity’ and ‘changes in productivity’ of licensing activity. While it is generally acknowledged that there has been a dramatic increase in licensing, there is little understanding of the licensing process as it relates to university characteristics, nor is there evidence on the extent to which this is the result of increased resources devoted to commercialization or whether it stems from other factors. This paper employs data envelopment analysis (DEA) combined with regression analysis to examine the overall productivity of university licensing activity as well as the productivity of individual universities. We find that licensing has increased for reasons other than increases in overall university resources. Given input levels, universities are today more commercially productive than they were in the recent past; we propose reasons for this shift and analyze factors associated with the shift and factors associated with relative levels of commercialization.

How Do University Inventions Get Into Practice?

Jeannette Colyvas • Michael Crow • Annetine Gelijns • Roberto Mazzoleni Richard R. Nelson • Nathan Rosenberg • Bhaven N. Sampat Institute for International Studies, Stanford University, Stanford, California 94305 Office of the Executive Vice Provost, Columbia University, New York, New York 10027 INCHOIR, Columbia University, New York, New York 10027 Department of Economics and Geography, Hofstra University, Hempstead, New York 11594 School of International and Public Affairs, Columbia University, New York, New York 10027 Department of Economics, Stanford University, Stanford, California 94305 School of Public Policy, Georgia Institute of Technology, Atlanta, Georgia 30332 colyvas@leland.stanford.edu • mc71@columbia.edu • acp10@columbia.edu • ecorzm@mail1.hofstra.edu rrn2@columbia.edu • nate@leland.stanford.edu • bhaven.sampat@pubpolicy.gatech.edu

Patent policies to fine tune commercialization of government-sponsored university research

Exploitation of intellectual property is widely seen as one of the major benefits of federally sponsored research in the United States. Yet patents or other private appropriation of the results of government-sponsored research can interfere with the transfer of new technologies to the private sector for commercial development. To resolve conflicts inherent in private appropriation of government research, university intellectual property protection seekers, laws, and the courts ought to be careful not to grant patent protection for university-based inventions that is too broad. Multiple and competitive sources of technology advance are socially preferable to a structure where there is only one or a few sources. Copyright , Beech Tree Publishing.

Academic research: policies and practice

The Bayh-Dole Act of 1980 allowed universities in the US to own and manage inventions obtained using federal funds. This Act laid the foundation for university technology transfer activities in most major research universities of the country. Consequently, the interaction between universities and industry has increased, and so has the sophistication in university intellectual property management. UIC's model for managing its intellectual property is efficient and successful, and is the one increasingly used by university technology transfer offices. The model deals with all aspects of UIC's intellectual property: disclosure, protection, marketing, negotiating and licensing, as well as intellectual property provisions in UIC's research agreements, material transfer agreements, option agreements, licensing agreements and others. In a pioneer effort, UIC has developed a policy on contracts for collecting natural product samples for drug discovery which includes royalty sharing and other important provisions. Accompanying this policy we have also drafted a standard contractual agreement for collectors.