Posted tagged ‘patents’

Who owns the research outputs?

March 2, 2011

For ten years, through the 1990s, I worked as a professor of law in the University of Hull in Northern England. Every so often I would be present at the kind of conversation where people mused on missed opportunities, and one of the recurring topics under that heading was why the university had not become super-duper rich from the proceeds of its best known invention, liquid crystal displays (LCD). This technology was developed in the 1960s by a research team in Hull led by Professor George William Gray. However in 1970 a patent for LCD was filed by the Swiss company Hoffmann-LaRoche, and in the end the University of Hull never benefited materially beyond getting recognition for this work in some scholarly articles. The big question always was, what went wrong, and why did Hull not protect its discovery?

The issue remains a live one, and partly because universities want to maximise the payback from discoveries most now maintain full-time patent officers and, sometimes, whole legal teams. The issues are complex and involve the following considerations:

• Most (but not all) major university discoveries have been funded by the taxpayer, and it is thought to be unacceptable if the profits from this flow largely or entirely into private or corporate pockets.
• Universities often expect academics who discover something that can be commercialised to recognise that the output is university property, as it was developed on their time and with their resources.
• On the other hand, universities also want to incentivise staff to work on such discoveries.
• Companies want to work with universities where the latter can support them to develop products or processes that have commercial potential, and will fund university work, but expect to be able to secure as their property any resulting discoveries.

All these different interests can compete with each other in securing intellectual property and gaining profits from it. One recent example of the disputes that may arise is a case that just this week has gone to the US Supreme Court, involving a new method to detect HIV developed at Stanford University. The case involves the conflicting interests of the university, the researcher who developed the process and the company now commercialising it – ironically Roche (as Hoffmann-LaRoche is now called). The question for the Court is whether the academic in question was entitled to assign the intellectual property to the company, or whether it was Stanford’s property.

What are we to conclude? First, there needs to be legal certainty that serves all the various interests but in particular protects the public interest – which must be that research should be encouraged and that it should be translated into use as effectively as possible., but also in a way that supports commercial involvement. Secondly, universities need to have clear agreements with their employees as to the distribution of rights and interests. Thirdly, universities need to be good at recognising which pieces of intellectual property are worth protecting and which are not. Registering a patent costs money, but much more importantly defending it can cost a fortune. If the end product isn’t worth much, then the registration isn’t worth the effort and cost either.

On the whole universities need support in this, and certainly should pool their resources. But all sides should take this topic very seriously. University-based research is likely to be a major contributor to economic activity in the future.

The academic gold standard

April 22, 2009

If you are an academic and you’ve made your way up the promotional ladder – let’s say you are a full professor – then you will have been a prolific publisher of books, monographs and refereed journal articles. And if I don’t immediately know about you, there are now various databases where I can look you up and find out what you’ve published – this is a good example. And if I need to make a judgement as to how good you are as an academic, then the information I find there will help me to make it.

As has been mentioned before in this blog, that raises a few questions about whether and how we value excellence in teaching; but let us leave that aside for now. My concern here is something different: that there may be an increasingly significant conflict between this basis of advancing someone’s academic career on the one hand, and the interests of the university on the other. It has been clear for some time that in those areas of research where the registration of intellectual property (chiefly patents) may be vital in order to protect the research and ensure that when it subsequently is exploited commercially the university gets a share of the revenues. If you publish – either before the patent is registered or in some cases at all – the commercial value of the discovery may be lost to the university for good. And just in case you are tempted to answer that all this is OK, because university research should be accessible to all, then think again: the consequence of not registering the patent is typically not that everyone can use the discovery, but rather that someone external to the university will exploit it and then register the patent themselves, thereby excluding the wider community and indeed ensuring that the financial benefits are kept in private hands. Innovation offices in universities have for some time had to struggle with these contradictions.

This has been an intractable problem in large part because the academics affected, when faced with this scenario, have to weigh up the competing claims of the university (and possibly themselves) for a share of the financial benefits of the research on the one hand, and the prospect of their career advancement on the other. That is not a dilemma we should place before them.

It seems to me that the answer to this is that we must begin to tackle much more seriously the basis on which we promote academic staff, and we may have to face up to the possibility that academic publication as the sole gold standard cannot survive as the only real basis for promotion. We must of course not compromise in our desire to have intellectual excellence and proven scholarly output as the foundation for the assessment of merit; but we may need to think again about exactly where that excellence and that output should be visible. This cannot be done by one institution acting alone, as academic reputations need to be built on a globally recognised rate of exchange; we just need to start the debate on what that should be.