Managing University Intellectual Property in the Public Interest (2011) / Chapter Skim
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Pages 1-12
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The committee held a series of open meetings with a variety of presenters, including a two-day public conference with invited experts addressing questions on six topics identified by the committee. It also commissioned original research on the activities and organization of university technology transfer offices and on the legal context of technology transfer.
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personal individual faculty and student consulting arrangements with individual private firms; 7. entrepreneurial activity of faculty and students occurring outside the university without involving university-owned IP; and 8.
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The only proposal for an alternative system to attract interest among observers and critics of the status quo is one giving university faculty much greater autonomy in managing their inventions, either by assuming ownership or by having freedom to pursue licensing opportunities through outside service providers, although the home institution might retain ownership. Finding 4: The Bayh-Dole legal framework and the practices of universities have not seriously undermined academic norms of uninhibited inquiry, open communication, or faculty advancement based on scholarly merit.
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Inevitably, disagreements will arise among participants in the process and the university administration may need advice on how to resolve disputes. Recommendation 2: Universities with sizable research portfolios should consider creating a standing advisory committee composed of members of the faculty and administration; representatives of other business development units in or affiliated with the institution such as business incubators, research parks, proof-of-concept centers, and entrepreneurial education programs; members of the relevant business and investment communities; and, if appropriate, local economic development officials.
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should be charged with advising on university policy regarding technology transfer and hearing and helping to resolve disputes between inventors and the technology transfer office with respect to the protection and commercialization of inventions. Both the full advisory committee and the internal committee should make recommendations to the provost or other executives of the university.
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As a general matter, however, Recommendation 5: Universities should pursue patenting and licensing practices that, to the greatest extent practicable, maximize the further development, use, and beneficial social impact of their technologies. More specifically, the committee supports an informal, evolving set of good practices originally articulated by several university leaders and endorsed by the Association of University Technology Managers.
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The research tool guidelines developed and published by the National Institutes of Health (NIH) address the process of materials exchanges, and NIH also has developed model Material Transfer Agreements (MTAs)
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Industry sponsors should follow similar practices, encouraging material exchanges and refraining from demanding overly restrictive conditions. University technology transfer and sponsored research offices should discourage investigators from entering into sponsored research agreements where the terms governing material exchanges between nonprofit institutions deviate from this policy.
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With respect to a university's equity stake and/or royalty rates, these terms are likely to vary from institution to institution and from one technology field to another, but they should reflect sensitivity to the exigencies facing start-up enterprises in their earliest phases, and they should provide for predictability and simplicity with a view toward reducing transaction costs that may be especially burdensome for prospective entrepreneurs with limited time and resources. This recommendation is intended to support venture creation as a principal vehicle for technology transfer for social good and, to this end, is also intended to encourage staff cooperation with the technology transfer office, facilitate cooperation among elements of the support structure for entrepreneurship, and result in more accurate reporting of entrepreneurial activity.
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At the national level, data collection should focus on placing IP-based transactions in the context of knowledge dissemination broadly defined and attempt to capture the social and economic impacts of technology transfer. Recommendation 13: Principal university and professional organizations and federal science agencies should coordinate efforts to develop a more balanced set of measures of total university knowledge exchange with the private sector to improve understanding of the process and its performance.
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Effective oversight relies on the availability of relevant data, for which the NIH iEdison database services as a central repository, but institutional reporting has been judged by the Government Accountability Office to be incomplete and access to the data is severely restricted. Recommendation 15: Federal research agencies should reinvigorate the requirement that institutions reliably and consistently provide data to iEdison on the utilization of federally funded inventions, including licensing agreements and efforts to obtain such utilization.
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