IP FORUM

The Online Journal of the Patent, Trademark and Copyright Research Foundation

Inventions come from a variety of sources; from company employees and from university researchers among many others. The subject of employees' inventions is to be covered in a forthcoming online conference to be held by the Patent, Trademark and Copyright Research Foundation. As to the subject of university research, this has been well discussed and illustrated in recent articles by Professor Richard R Nelson of the University of Columbia. At first sight, a greater encouragement to university researchers to patent their inventions is highly desirable: experience in the United States, which many Europeans are keen to emulate, shows that in the twenty years from 1980 to 2000 there was a general correlation between the rise in the numbers of patents based on university research, the rise in the opening of technology transfer and licensing offices in the universities and the rise in the universities' licensing revenues. 1980 was the year of the United States Bayh-Dole Act, which facilitated the patenting of university inventions, though other factors certainly added momentum to the process: in particular, the adaptability of university research in biotechnology and electronics to the needs of industry and the widening of the concepts and categories of patentability. The process may have drawbacks. One is that, while some universities have undoubtedly benefited financially from their licensing activities, others are likely to find that the revenue from licensing does not even meet the costs of running a technology licensing office. Another is that, the more extensively the process results in the patenting of inventions derived from university research, the more probable it is that the domain of what may be called "public science" will shrink. A third is that if, in partnerships formed between the universities and commercial corporations, and especially where these partnerships are either funded by the state or joined by a state agency (or both), disputes over the rights to patents and other intellectual property are apt to increase. None of these considerations should necessarily stop the general process; but they do mean that universities need to weigh carefully the financial implications of operating a technology licensing office; that the university policy-makers need to balance relatively short term financial benefits accruing from patenting their researchers' inventions against possible long-term benefits to the public pool of scientific knowledge; and that any contracts for establishing partnerships between the universities and commercial or state bodies, for pursuing research and development, need to be based on clear principles for the distribution of intellectual property rights and for the fair and effective implementation of the contracts themselves. [10004]