Читать книгу University Intellectual Property - Graham Richards - Страница 9

The Patents Act of 1977 in the UK placed the ownership of intellectual property generated by employees who were expected to produce patented work to their employer. In the case of industrial companies this is fairly straightforward: if you work for a pharmaceutical company in a research department, then developing new drugs is your job and your employer obviously expects to receive the rewards. Universities are less clear cut and accordingly the switch from individual academics owning the intellectual property arising from research in their laboratories to that ownership being vested in the employing university was not without contention. Is, for instance, an academic researcher expected to produce IP?

It may be hard to convince academics that the IP on work which they have done in their own research laboratory should belong to the university and that this is preferable for all concerned, but the latter part of this is in fact true, although perhaps not obvious at first sight. For example, if the individual is the owner, then he or she will have to pay all the patent and legal costs, whereas if the institution owns the IP then it will have to pay the expenses. Initial expenses are not large but once the international phase is reached these can become significant. A real danger of individual ownership is that patents are allowed to lapse, which is the worst of all possible scenarios as it means no ownership and alerting the rest of the world to the invention.

Most universities across the world now own the patent IP of their employees. What is much less universal is the situation with respect to the work done by students. If the uncertainty is not avoided then there are real problems when exploiting the research: a student could at some late stage turn up and claim to have done the work and give evidence in terms of joint authorship of publications. The prospect of this can be a severe impediment to financial backers.

Although it is best if the central institution owns all aspects of the IP and has mechanisms for technology transfer, it is equally important that all who contribute to developing the IP should have incentives and rewards. If exploitation is in the form of creating a spin-out company, then the responsible researchers should receive equity, the percentages being settled by negotiation, with the academics being reasonable and ideally having their own legal adviser.

If on the other hand the mechanism of exploitation is by licensing the IP to other companies then there needs to be a scale of remuneration dependent on the income. The Oxford system which I helped devise gives virtually all the early income to the researcher as an incentive to seeking patent protection, but then a sliding scale so that as the sums become larger the percentage going to the university increases. In the rare case where the invention brings in millions of pounds, then both the individuals and the institution will receive comparable amounts.