New Orleans
Renee L. Kaswan brought her campaign for greater rights for faculty inventors on Thursday to the very people charged with commercializing their research.
Invited by the Association of University Technology Managers to be part of a 90-minute debate on the issue, Dr. Kaswan told hundreds in the audience at the group's annual meeting here that she believed faculty members should have a choice in how their inventions are managed, "just like we can shop for a research grant" or choose where to publish.
Dr. Kaswan, who is known for her legal fight with the University of Georgia over its handling of an eye-care product she invented while a professor there, is also now pushing a platform of best practices, which she has dubbed an "academic inventors' bill of rights."
Intellectual-property policies at most universities don't give faculty members adequate say in how their inventions are commercialized, she said during Thursday's debate. Such policies usually require faculty members to assign the rights to their inventions to the university if the work is developed using the institution's facilities or on university time. The policies also require that the university share in any profits made on those inventions.
Dr. Kaswan argued that professors should play more of a role in deciding things like which companies are chosen to license their inventions and the terms of such agreements. Faculty inventors should have the right to choose agents to handle their inventions, she said, and not be restricted to using their institution's technology-transfer office. "Sometimes they're good. Sometimes they're not," she said of the university offices. "Sometimes they like us. Sometimes they don't."
Marcel D. Mongeon, a consultant who has worked in technology transfer, joined Dr. Kaswan in arguing for the "free agency" model (also advocated by groups like the Ewing Marion Kauffman Foundation). Forcing institutions to compete for the right to handle their own professors' inventions would push a university's senior leadership to take the function seriously, Mr. Mongeon said. "Are they going to do this, and do it properly, or not?"
Robin Rasor, director of licensing at the University of Michigan at Ann Arbor, defended the university-based system. Professors may know a lot about their research, she said, but they may not necessarily know how to move it to market. "We don't tell them how to do experiments," she said.
Commercialization of academic inventions doesn't always go smoothly, Ms. Rasor noted, but that's "a function of the invention business," in which early-stage ideas are often hard to license to companies, she said.
If a cure for cancer is invented, "it's very likely we're going to be able to license it and get a lot of money," said Ms. Rasor. But usually, "the inventions we see aren't ready to go on the market."
The technology managers' meeting, which drew more than 1,600 people from companies and universities in the United States and overseas, continues through Saturday.
Comments
1. tridaddy - March 22, 2010 at 09:19 am
Most scientists/researchers employed at a university are provided lab space at no cost to their grants (I realized this is not true in some universities and research institutes). Therefore the trade off in these cases is some expectations of involvement by the university in the commercialization process. For those researchers who must, in essence, lease or rent lab space the argument for more autonomy and authority for commercializaton of their research seems to be appropriate. But for those who have "free" space it seems the provider has some say so in regard to how or where the invention is commercialized. We always seem to want to use the "academic freedom" card when we don't like or appreciate how the university relates to us but I can say without reservation, my couple of patents would not have occurred without the assistance of my technology commercialization office. They were consultative and receptive to my input.
2. frankmhowell - March 22, 2010 at 12:36 pm
This is an interesting debate. I served on the Copyright Committee at a research university. We had a "case" where a faculty member followed the extant policy of a proposed 50:50 split on royalties/license fees for a software product to do some mathematical gymnastics that only those doing fluid dynamics research would have significant interest in licensing. The University claimed that they should get 100% of the fees since the faculty member had a laptop computer on his inventory. Moreover, the University Counsel met with the Committee but would only listen to us discuss it and not speak himself (perhaps the strangest meeting I attended) and proposed a written policy that would claim all student work done in classes! That policy was never formally adopted. My point here is that administrators, too, can take very unreasonable stances "on behalf of the public's investment" in the University. After a 30 year career being around the research grant scene--both at the university and state/federal agency level--perhaps Ms. Rasor's approach needs the hearing that it is getting. I'm not sure that the "we don't tell them how to run experiments" justifies Tech Transfer personnel to be experts on marketing patents and copyrights, either. How many of them have created patents and significantly licensed copyrights? How many have had successful careers in the private sector doing marketing of scientific products? I don't know but it seems good to ask.
3. cranefly - March 22, 2010 at 02:51 pm
My experience of tech transfer has been that the TT offices don't know how to do their jobs...They're usually people who couldn't get jobs in law offices, and generally have very little or no training in sales/marketing. Nor do they have any real funds to go out and take a product to market. The most they do is send emails or make a few calls and hope to unload the product at a huge profit.