University-owned Patents Research Articles

Strategic portfolio management of university-owned patents for commercializing inventions

In the contemporary knowledge-driven economy, universities are pivotal in generating intellectual property through research. Efficiently managing and commercializing the resulting patents are critical for fostering innovation and economic growth. This article presents a comprehensive framework for the strategic portfolio management of university-owned patents, focusing on effective patent selection and periodic evaluation through a structured scoring system. Drawing inspiration from international experiences such as the Bayh-Dole Act, the framework incorporates scoring scales that evaluate novelty, inventive step, commercialization potential, and inventor team status. The process guides universities in selecting patents for their portfolio and periodically reevaluating their relevance. This systematic approach aims to optimize patent commercialization efforts, enhance innovation transfer, and align universities' patent portfolios with their strategic goals. However, the framework is not without limitations, including subjectivity in scoring and evolving market dynamics. Future research directions could address these limitations and further refine the framework to maximize the impact of university-owned patents in driving innovation and economic progress.

Development of Academic Patenting in European Regions – A Large Scale Analysis

Abstract In this article, we analyze academic patenting on an unprecedented scale - for 29 European countries. The comprehensive identification phase captures both groups of academic patents, in and outside of the ownership of universities. With stronger patent rights of universities, the share of university-owned patents is increasing faster. Nevertheless, even today, universities own only one third of their patents while the other two thirds remain in the property of individuals and companies. Universities have recently accounted for 13% of regional patent production and compared to firms their contribution to region’s innovation performance remains small. The share of academic patents is higher in Eastern Europe and in regions where innovative companies are lacking, in capital regions, and in regions with a strong tradition in academic patenting. The contribution of universities to the innovation performance of the most innovative regions is relatively small, although there are large differences, and the size of the contribution can vary significantly for similar levels of patent intensity. Given the effects of university research, it has been known since the 1990s that increasing university spending on research is driving innovation on the part of companies and within the region. However, such an effect is limited to high quality research and is most effective in terms of regional policy in poor regions where innovative companies are lacking. In this paper, instead of research expenditure, university patents filed with the EPO represent university research, as other patents are assumed to be a product of companies. We have found that the latter can be predicted by the volume of academic patents.

When do academics patent outside their university? An in-depth case study

A central theme of university entrepreneurship—including the generation and commercialization of university-invented research—is academic patenting (referring to patenting by university scientists). This study explores organizational-, individual- and patent-level factors and their respective relationship with academic patenting. Based on a thorough investigation of all academic patents (that have at least one university scientist involved) from one of the largest Dutch research universities during the period 2000–2009, and further building on first-hand qualitative and quantitative data, the results show that Technology Transfer Offices (TTOs) are instrumental in generating more academic patents. However, this effect is predominantly manifested by the increase in the number of patents patented under the name (solely or jointly) of the university (university-owned patents), far more than the increase in the absolute volume of patents invented by the university (university-invented patents). Further, regarding individual academic inventors, our study shows that, in general, male researchers and lead-inventors with higher academic rankings are less likely to abide by the TTOs, resulting in more patents being filed outside the university. Regarding the academic invention, the value of the patent itself does not seem to be related to the choice of the ownership (e.g., university-owned or not) of the patent.

China’s Bayh-Dole Act and University Patenting: A Contingency Perspective

Around the world, universities are playing an increasingly important role in the technological development of industries. Many counties emulate policies like the Bayh-Dole Act in the US by giving universities full property rights of government-funded research. Bayh-Dole-like laws have been empirically examined with mixed findings, but few studies have considered the institutional conditions and investigated the causal effect of the Bayh-Dole like policy in developing and transition economies like China. Based on the 2002 Bayh-Dole-like reform in China, we conduct the difference-in-differences (DiD) analysis at the university-IPC level and find that China’s 2002 Bayh-Dole Act increased university-owned patents significantly. In addition, universities with higher prestige (supported by Project 211) and located in areas with better market conditions benefit the most from the Act. These findings provide new insights and highlight the importance of considering complementary institutional mechanisms in fulfilling the intended effect of Bayh-Dole like laws. Our research has significant implications for policymakers, especially in developing and transition economies.

The impact of the abolishment of the professor’s privilege on European university-owned patents

ABSTRACT Intellectual property regimes governing university inventions were quite diverse in Europe at the end of the 1990s. Several European countries maintained the so-called professor’s privilege, an exception to employment law whereby university researchers were allowed to retain the ownership of academic inventions. The 2000s were characterised by convergence towards a more homogeneous system, in which university administrations took control of IP management. We investigate the impact of the reform and we observe a decline in the technological importance and the value of the patents owned and managed by universities in the countries abolishing the professor’s privilege. On the contrary, by differentiating the academic patents by type of ownership, we find that the technological importance of academic patents owned by companies has instead increased. Our study produces some new results that may alert policymakers to the possible unintended consequences of the university ownership model.

Patent management by universities: evidence from Italian academic inventions

Over the past 20 years, European universities have increased their propensity to retain title of their faculty’s inventions, but evidence on the value of such patents is at best mixed. Based on a longitudinal sample of Italian academic patents (patents over faculty’s inventions), assigned either to universities or firms, we find that the lower value of university-owned patents, versus firm-owned ones, is owing to lower Technological Importance of the inventions and less effective Exploitation of the related patents. Lack of experience in managing patented inventions explains our results for Technological Importance, but not for Exploitation. Both are unrelated to the presence of a technology transfer office. Our study suggests caution in pushing universities to expand their patent portfolios and in using university-owned patents as indicators of technology-transfer activities.

The role of regional economic specialization in the production of university-owned patents

Several studies have revealed that R&D funds, university-level characteristics and the internal university environment determine the number of patents applied for by universities. However, only a few papers have analysed the effect of the demand side on the production of patents. This study looks into the extent to which patents generated by European universities are related to the regional specialization of host regions. Drawing on a sample of 3330 university-owned patents from the European Patent Office, covering the period 2001–2004, and several count models, our results suggest that the regional economic specialization significantly affects the production of university patents in high-technology sectors. We did not find any significant relationship between the regional specialization and the production of medium and low university-patented technologies.

Different network typologies in patenting activity of academic inventors through time: the case of Italian chemists in the period 2000–2011

In this paper, we present the results of a network analysis applied to academic patent data in a subsector of the chemical field in Italy in the period 2000–2011. In particular, we analyse the micro-level interactions to point out the different network structures shaped by university-owned and university-invented patents. We detected three subnetwork typologies (labelled type A, B, and C) that exemplify different qualitative relational structures as well as different attributions to propriety rights. Type A (open science) exemplifies the typical owned patent; type B (multiple ties) represents the hybrid structure with multiple ties and involvement of academics as individuals and of universities as organisation; type C (disconnected subnetworks) represents the typical invented patent with no role of universities as organisation. The whole network seems to show a breaking point in terms of connectivity around 2005, a year that marks a change in policy rule and strategic orientation of Italian universities towards patenting. After 2005, the number of actors grew disproportionally and the network appears disconnected in several comparable components. Also, the composition in terms of subnetwork types changed. The overall picture seems to underline a big structural change dominated by the important increase of academic patenting both direct (university ownership) and indirect (increasing academic patenting).

The Ownership of Academic Patents and Their Impact

Cet article compare la valeur et l’impact des brevets universitaires dans cinq pays européens avec des cadres institutionnels différents : Danemark, France, Italie, Pays-Bas, et Suède. Un brevet académique est défini comme tel quand au moins un professeur ou un maître de conférences figure parmi ses inventeurs, indépendamment du propriétaire. En effet, la plupart des propriétaires sont des entreprises commerciales, suivies par les universités, les organismes publics de recherche, et les inventeurs individuels. La répartition de la propriété dans ces catégories différentes change beaucoup entre le pays, en raison d’une combinaison de normes juridiques sur la propriété intellectuelle et des caractéristiques institutionnelles du système universitaire. Elle est aussi associée à la valeur des brevets, telle qu’elle est mesurée par les citations des brevets. Les brevets académiques appartenant aux entreprises ont tendance à être cités comme les non-académiques, ceux de propriété des universités ont tendance à être moins cités. Les brevets académiques dans les Pays-Bas sont plus cités que les non-académiques, indépendamment de leur propriété, alors que les brevets appartenant aux universités obtiennent moins de citations en Italie et au Danemark. Nous proposons une explication de ces résultats par l’autonomie variable dont les universités sont dotées dans les différents pays considérés. Nous constatons également que les brevets universitaires appartenant aux entreprises en Suède reçoivent beaucoup moins de citations que les non-académiques. Parmi les brevets appartenant aux particuliers, les académiques sont le plus cités. JEL Codes : O31, O32, O33, O34

What Determines University Patent Commercialization? Empirical Evidence on the Role of IPR Ownership

This paper addresses the commercialization of academic patents, developed in both universities and public research organizations (PROs). We distinguish between university-owned and university-invented patents to analyze if and how patent ownership affects the probability of commercialization and, similarly, if the characteristics of national university intellectual property right (IPR) regimes correlate with it. We study three commercialization channels—sales, licensing and spin-off formation—appearing in a sample of 858 university and PRO patents filed with the European Patent Office between 2003 and 2005 across 22 countries. To analyze differences in commercialization outcomes, this study employs a multivariate probit model. The results suggest that PRO ownership is negatively associated with the likelihood of selling the patent and creating an academic spin-off; university ownership positively affects the patent's licensing uses. Finally, the institutional IPR regime has a negative effect on the probability of selling a patent.

The Impact of Academic Technology: Do Modes of Involvement Matter? The Flemish Case

Patent statistics that reflect university technology development have become increasingly relevant as academia adopts entrepreneurial objectives while facing a trend toward more accountability. In this contribution, we focus on the patent activity of Flemish universities (period 1991–2001). In Flanders, university patenting has become explicitly incentivized through policy measures (1996) and more recently even resource allocation schemes are resulting in a notably high share of universities in the overall patent portfolio of the regional innovation system. As a result, one might expect inflationary effects on the level of academic patents, especially in terms of quality. In addition, we analyze whether the impact of academic patents depends on the mode of university involvement (university-invented vs university-owned). Overall, we observe a considerable increase in both types of academic patenting without any deterioration (over time) of citation rates. Moreover, our findings indicate that university-owned patents receive more forward citations than university-invented (firm-owned) patents. Combined, these findings signal that the increase of academic patent activity—stimulated by policies granting ownership rights to universities—did not coincide with a decrease in their value.

Spatial differences in the quality of university patenting: Do regions matter?

This paper uses patent citation data to analyze the quality of university technology across European regions. The empirical analysis draws on a panel dataset of 4580 European university-owned patents classified by 202 European regions over the period 1998–2004. The methodology involves a multilevel framework to identify the effects of factors at three hierarchical levels (individual, university, and regional) on the quality of university patenting. The results suggest that regional factors, such as the level of development, industrial potential, and regional higher education R&D expenditure, do not play any significant role in determining the quality of European university patents. We instead find that the factors affecting patent quality stem from their specific characteristics. We also find that university size does not explain the quality of patents. However, there is significant unobserved heterogeneity at the university level in all models, suggesting that differences in other university characteristics explain a substantial part of the variance in patent quality.

University Patenting in Germany before and after 2002: What Role Did the Professors' Privilege Play?

We examine ownership patterns of German university-invented patents before and after the abolition of the “professors' privilege” in 2002 to explore how the legal change affected patenting activities. We find no evidence of increased patenting activities after the reform. Our data moreover show a pronounced shift from individually owned and firm-owned patents to university-owned patents. Differences in inventors' patent experience help explain the variance in ownership patterns. Both experienced and inexperienced inventors are affected by the legal change.

University patenting: patterns of faculty motivations

Few papers address the issue of faculty motivations to patent and none comprehensively investigates why faculties decide not to patent. To fill this gap, I surveyed Italian faculty inventors of university-owned patents (N=208) and non-inventors working in the same disciplines (N=416). Major motivations to patent are prestige/reputation and knowledge exchange. Although universities rely almost exclusively on royalties, I show that researchers are sensitive to diverse incentives, whose importance varies according to both personal characteristics and the context. Surprisingly, patents are not perceived by non-inventors as inappropriate to academic activities or as obstacles to publications and conferences.

University IPRs and knowledge transfer: is university ownership more efficient?

This paper addresses an issue that has been largely ignored so far in the empirical literature on the role of patents in university–industry knowledge transfer: does it matter who owns the patents on university research? We observe that especially in Europe, many patents in which university researchers are listed as inventors are not owned by the university. From a literature review, we conclude that private ownership of university patents may reduce the efficiency of the knowledge transfer process. This hypothesis is put to an empirical test, using data on patents in six European countries. Specifically, we assess whether university-owned patents (in Europe) are more often applied, and/or more economically valuable, than university-invented (but not-owned) patents. Our results indicate that, after correcting for observable patent characteristics, there are only very small differences between university-owned and university-invented patents in terms of their rate of commercialization or economic value.

University Software Ownership and Litigation: A First Examination

Software patents and university-owned patents represent two of the most controversial intellectual property developments of the last twenty-five years. Despite this reality, and concerns that universities act as "patent trolls" when they assert software patents in litigation against successful commercializers, no scholar has systematically examined the ownership and litigation of university software patents. In this Article, we present the first such examination. Our empirical research reveals that software patents represent a significant and growing proportion of university patent holdings. Additionally, the most important determinant of the number of software patents a university owns is not its research and development ("R&D") expenditures (whether computer science-related or otherwise) but, rather, its tendency to seek patents in other areas. In other words, universities appear to take a "one size fits all" approach to patenting their inventions. This one size fits all approach is problematic given the empirical evidence that software is likely to follow a different commercialization path than other types of invention. Thus, it is perhaps not surprising that we see a number of lawsuits in which university software patents have been used not for purposes of fostering commercialization, but instead, to extract rents in apparent holdup litigation. The Article concludes by examining whether this trend is likely to continue in the future, particularly given a 2006 Supreme Court decision that appears to diminish the holdup threat by recognizing the possibility of liability rules in patent suits, as well as recent case law that may call into question certain types of software patents.

To patent or not to patent? A survey of Italian inventors on motivations, incentives, and obstacles to university patenting

This paper reports results from a survey of 208 Italian faculty members, inventors of university-owned patents, on their motivation to get involved in university patenting activities, the obstacles that they faced, and their suggestions to foster the commercialization of academic knowledge through patents. Findings show that respondents get involved in patenting activities to enhance their prestige and reputation, and look for new stimuli for their research; personal earnings do not represent a main incentive. University-level patent regulations reduce the obstacles perceived by inventors, as far as they signal universities’ commitment to legitimate patenting activities. Implications for innovation policies are discussed.

Effects on academia-industry collaboration of extending university property rights

Several recent studies show European university scientists contributing far more frequently to company-owned patented inventions than they do to patents owned by universities or by the academic scientists themselves. Recognising the significance of this channel for direct commercialisation of European academic research makes it important to understand its response to current Bayh-Dole inspired reforms of university patenting rights. This paper studies the contribution from university scientists to inventions patented by dedicated biotech firms (DBFs) specialised in drug discovery in Denmark and Sweden, which in this respect share a number of structural and historic characteristics. It examines effects of the Danish Law on University Patenting (LUP) effective January 2000, which transferred to the employer university rights to patents on inventions made by Danish university scientists alone or as participants in collaborative research with industry. Sweden so far has left property rights with academic scientists, as they also were in Denmark prior to the reform. Consequently, comparison of Danish and Swedish research collaboration before and after LUP offers a quasi-controlled experiment, bringing out effects on joint research of university IPR reform. In original data on all 3,640 inventor contributions behind the 1,087 patents filed by Danish and Swedish DBFs 1990–2004, Difference-in-Difference regressions uncover notable LUP-induced effects in the form of significant reductions in contributions from Danish domestic academic inventors, combined with a simultaneous substitutive increase of non-Danish academic inventors. A moderate increase in academic inventions channelled into university owned-patents does appear after LUP. But the larger part of the inventive potential of academia, previously mobilised into company-owned patents, seems to have been rendered inactive as a result of the reform. As a likely explanation of these effects the paper suggests that exploratory research, the typical target of joint university-DBF projects in drug discovery, fits poorly into LUP’s requirement for ex ante allocation of IPR. The Pre-LUP convention of IPR allocated to the industrial partner in return for research funding and publication rights to the academic partner may have offered more effective contracting for this type of research. There are indications that LUP, outside the exploratory agenda of drug discovery, offers a more productive framework for inventions requiring less complicated and uncertain post-discovery R&D.

The mobility of university inventors in Europe

This paper analyses university patenting and academic mobility based on information in the PatVal database on European inventors in six European countries. We show that university participation in patenting activity is grossly underestimated when assessed on ownership exclusively: university-owned patents account for only 15% of patents with at least one academic inventor. Academic mobility is unevenly distributed across technologies (most is in biomedics) and across countries (mainly the UK, Germany and the Netherlands). Descriptive evidence highlights the high levels of patenting and mobility of UK academic inventors. We analyse labour mobility from academia to business. Multinomial models show the presence of a strong individual life cycle effect on mobility. Moreover, there are important differences in what determines mobility towards other universities or businesses. Inventors with more valuable patents, which embody more tacit knowledge, are more likely to go to private organisations. Scientific productivity has no impact on the probability of moving.

University patenting and its effects on academic research: The emerging European evidence

This paper surveys the existing fragmentary data on the growth of university-owned patents and university-invented patents in Europe. We find evidence that university patenting is growing, but this phenomenon remains heterogeneous across countries and disciplines. We found some evidence that university licensing is not profitable for most universities, although some do succeed in attracting substantial additional revenues. This might be due to the fact that patents and publications tend to go hand in hand. In a dynamic setting however, we fear that the increase in university patenting exacerbates differences across universities in terms of financial resources and research outcome.