9 (Suggested) Commandments of Research Licensing

Group of research institutions and the AAMC release guidelines for technology transfer.
March 7, 2007

When it comes to technology transfer, the potential dilemmas come in multiple forms -- the ethical and contractual among them.

A handful of top research universities, along with the Association of American Medical Colleges, identified what they consider the most pressing of those issues in a white paper released on Tuesday. “In the Public Interest: Nine Points to Consider in Licensing University Technology” is the result of a meeting attended primarily by research officers and technology licensing directors at research universities last summer at Stanford University.

The paper is intended to serve as a road map for universities to follow when they grant licenses to private parties for the rights to the institutions' scientific advances. It asks for a kindler, gentler environment for technology transfer, in which the public interest is paramount, research avenues are kept open and litigation is a last resort.

As the paper points out, while licensing approaches and agreements vary on a case by case basis, “universities share certain core values that can and should be maintained to the fullest extent possible in technology transfer agreements.”

"With all the discussion about universities and intellectual property, it seemed valuable to discuss fundamental values,” said Arthur Bienenstock, a former research dean at Stanford who organized the meeting. “There’s a sense that there are institutions that haven’t been mindful of basic principles.

“We were hearing complaints that technology managers were being pressured by administrators to bring in maximum amounts of money and signing licenses that would restrict the performance of research at other universities,” added Bienenstock, who is now special assistant to Stanford's president for federal research policy. “We wanted to nip that in the bud."

Universities have faced requests from companies to license not only existing intellectual property but also that which will be generated by a researcher or a department. Bienenstock said it becomes problematic when a university is beholden to a private entity and loses a share of its future autonomy.

After intellectual property has been licensed to private sources, academic researchers should feel comfortable continuing their work without fear of problems, the paper says. There are certain cases in which an institution should grant exclusive rights to its discoveries, and in those instances, the university should structure the agreement in a way that will allow those in the science fields to "develop new applications," it says.

In addition to Stanford, the paper was signed by California Institute of Technology, Massachusetts Institute of Technology, the Wisconsin Alumni Research Foundation, the University of California system, University of Washington, University of Illinois at Chicago, University of Illinois at Urbana-Champaign, and Cornell, Harvard and Yale Universities. The AAMC also endorses the document.

The nine points are as follows:

1. Universities should reserve the right to practice licensed inventions, and to allow other nonprofit and governmental organizations to do so.

The report says that institutions should clearly articulate the scope of reserved rights.

2. Exclusive licenses should be structured in a manner that encourages technology development and use.

Technology transfer offices should avoid overly broad exclusive rights agreements that stifle future research and “diligent” development of the technology.

3. Strive to minimize the licensing of ``future improvements.``

Colleges should aim to avoid “enslaving” a faculty member’s research program to a company, thus thwarting his or her ability to receive corporate and other research funding and work with scientists employed by other companies that don’t hold the license.

4. Universities should anticipate and help to manage technology transfer related conflicts of interest.

For instance, licensing a startup founded by faculty, students or other university inventors can be problematic.

5. Ensure broad access to research tools.

6. Enforcement action should be carefully considered.

Universities should keep in mind the primary mission of using patents to promote technology improvements for the benefit of society when considering enforcement of intellectual property. Litigation should be a last resort for resolving disputes. “It reflects poorly on universities to be involved in “nuisance suits," the report says.

7. Be mindful of export regulations.

8. Be mindful of the implications of working with patent aggregators.

The paper notes that as most university-owned patents are unlicensed, technology transfer officers are approached by those who want to commercialize it through further licenses.

9. Consider including provisions that address unmet needs, such as those of neglected patient populations or geographic areas, giving particular attention to improved therapeutics, diagnostics and agricultural technologies for the developing world.

Sheldon Krimsky, a professor of urban and environmental policy and planning at Tufts University and a current research scholar at Columbia University, said that while the paper addresses serious problems, it falls short on several fronts.

"There's little concrete depth provided," Krimsky said. "There are high goals but in many cases the points are too vague and there are few examples given."

For instance, on point No. 1 about reserving the right to practice licensed inventions, Krimsky said the paper's authors do not explain how the goal can be achieved. He said a stronger statement would have been that universities should not enter into a contract with a company that doesn't have a research exemption policy for material or methods that they have licensed.

Krimsky criticized the report for saying that exclusive licenses are sometimes warranted; that arrangement restricts innovation, he says. "Universities shouldn't be in the business of exclusive licenses. Surely they can make money, but they should open up their ideas to as many people as possible." Krimsky also said he would have liked to see examples given of when an exclusive arrangement is proper.

John Fraser, president of the Association of University Technology Managers, a group that manages intellectual property, said he agrees with the document.

"It provides thoughtful suggestions of how to address the core issues likely to be negotiated and reminds all of us of common obligations as custodians of the results of publicly funded research on our campuses," he said.

Bienenstock said the release of the white paper is timed to coincide with the annual meeting of AUTM this week.


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