By Dr. Renee Kaswan
Founder, IP Advocate
During this year, I have crisscrossed our country as an entrepreneur and intellectual property advocate, meeting with many principled technology transfer professionals and administrators. While our discussions have centered on innovative technology transfer policies and best practices, I continue to be amazed at the number of them who believe that the questionable conduct of schools like University of Georgia (UGA), University of Missouri (MU) and many others, could never occur at their institutions.
From my perspective though, unethical conduct can exist and proliferate when people who know better sit idly by. Silence can be a result of authoritarian intimidation, ignorance or professional peer pressure, but the results are still insidious, and can happen on any campus. Edmund Burke summed it up aptly when he said, "All that is necessary for the triumph of evil is for good men to do nothing."
When I point out the following facts, though, the reaction is chagrin or silence:
- The language of "sole discretion" to commercialize faculty inventions is virtually universal in academic IP policies. A Georgia judge cited this terminology in a ruling to absolve UGA of any 'duty of good faith and fair dealing' with their faculty.
- From conception to patent expiration, the lifespan of an invention may be upward of 30 years. Comparatively, tenure and turnover of technology managers, university presidents and board of trustee members is much shorter. The best intentions of these transient personnel are insufficient to safeguard these long-term relationships.
- Political and budgetary exigencies often cause people to make hasty decisions that are not in the long term best interests of the institution. In these instances, long-term vision is sacrificed and corrupted by short-term thinking.
- Unless IP policies specifically permit, technology managers have no voice in administrative decisions to litigate against faculty inventors. Once litigation is elected, the attorneys take over with extreme adversarial and destructive tactics. The best intentions of these TT staffers are plowed under the legal machine as well.
- University researchers need and deserve written contracts that define and protect their incentives to develop and commercialize innovations. When institutions refuse to specify and offer contractual warranties, faculty and students should be hesitant to disclose, assign or entrust their research and its translation to their universities. For every academic inventor, the best approach is to outline your plan of development and get consent before you execute any assignment. Says Lita Nelson, Director of MIT Technology Licensing Office, "Get it in writing."
- Recently, adverse university intellectual property policies and associated contracts of adhesion have been enforced by the court system. The logical and unfortunate result has been a growing trend of researchers withholding disclosure and assignment of their innovations. For universities worried about assets going out the back door, Nelson had more sage advice, "To stop inventors from leaving through the back door, make the front door more attractive."
Of course there are principled technology transfer professionals on every campus across the U.S. However, if they sit by in silence while their counterparts conduct unethical business, they are part of the systemic problem. Even at campuses where inventors are targeted with spurious litigation (UGA, University of South Florida, University of Missouri and sadly, many others) decent TT staffers can surely be found. I wonder, though, are they complacent or complicit?