Held March 18, 2010
AUTM Annual Conference, New Orleans
Dr. Renee Kaswan, former UGA professor and inventor of Restasis®, was invited to take part in the first annual AUTM debate on the "Role of Inventors in Negotiating License Transactions" at its Annual Conference, held this year in New Orleans. What follows is Dr. Kaswan's commentary based on this debate:
At present, administrators at most U.S. universities have claimed "total authority and sole discretion" to make the crucial decisions that affect the life and public utilization of inventions made by faculty and graduate students, while we, the inventors who brought these ideas to fruition, are swept behind the curtain of university intellectual property (IP) politics.
Rhetorically, Association of University Technology Managers (AUTM) professionals call us "partners" but contractually universities define us as labor - powerless corporate employees. For the public welfare and for the benefit of strong inventor-university relationships, inventors need to recover the standing they once had to represent the university's interest in their work. An idea spawns an invention and one academic invention is the start of a 20-30 year relationship between an inventor and his/her invention. When a university administrator claims ownership of the invention and insists on managing it, the relationship becomes one between the inventor and the university administration. Before starting down this path, academic inventors deserve a solid foundation of clearly defined commitments.
Principal investigators (PI) have primary leadership responsibility for their research. They decide what to study, who will fund them, who will participate, what is worthy of publication and, within an industry, where, when and how to teach their distinctive knowledge. The translation of their research inventions to public utility is fundamentally a faculty investigator's responsibility. This responsibility should not and, realistically, cannot be involuntarily usurped by university administrators. Divorcing ownership from capability works against innovation. For this reason, ownership of inventions (and any associated patents) must not be made a condition of faculty or student employment.
AUTM, an organization of individuals involved in university patent licensing, held a debate at its 2010 annual meeting on the merits of compulsory ownership and control of inventions and invited my participation as an experienced inventor. The debaters and audience of hundreds of technology transfer (TT) professionals agreed that it is foolish to exclude inventors from strategic decisions on where, when and how to develop their inventions. Yet many universities place the legal authority for management ultimately with administrators. The inventors' interests and input are managed as a voluntary courtesy, not a functional partnership.
Our university innovators need an Academic Inventors' Bill of Rights to codify respect for the intellectual insights and rights of inventors. A Bill of Rights makes clear the rights and liberties reserved from central control. For all the seeming efficiencies and conveniences of central control, an Academic Inventors' Bill of Rights makes clear that central authority over research inventions is properly limited; university faculty and students as inventors reserve to themselves responsibilities, within the context of their academic appointments and duties, to ensure that inventions are made available to the public on reasonable terms.
Robin Rasor, president elect of AUTM for 2011, was prescient when she remarked how tired she is of faculty making negative assumptions about her Technology Transfer Office at the University of Michigan based upon decisions or attitudes of people who were in the office five years ago. No matter how sincere the intentions of an individual technology transfer professional, when university administrators take ownership of inventions, the relationship the faculty inventors have is with the institution not with the individuals the institution hires to manage its claims. An Academic Inventors' Bill of Rights would establish a core set of expectations to guide these relationships.
Technology transfer personnel and university research administration change frequently. The only players who will not change over the 20 plus year lifetime of a successful patented technology are the inventors. If the TTO is not required as a matter of shared governance to consult inventors, the inventive relationship is damaged from the start.
Regardless of whether the first face of technology transfer an inventor meets seems helpful or harmful, there will be a long line of changing faces who will have authority over an invention, thus determining the ultimate success or failure of what may be our life's work. If that isn't sufficient to intimidate any academic inventor, multiply that by the turnover rate of university presidents, vice presidents and provosts who call the shots on all major deals, from signing high value licenses to deciding whether to sue for breach or infringement. To begin with, the inventor's world is uncertain. A compulsory IP policy that places ownership with a university but without any commitment to continuity, accountability or transparency creates overwhelming uncertainty. An Academic Inventors' Bill of Rights will restore continuity across changing technology transfer personnel and senior administrative leadership.
The AUTM members I spoke with agreed on at least this point: to achieve a long-term goal, such as successful commercialization of a research invention, consistent professional stewardship is required. Academic inventive work is frequently long-term, while university administrators are frequently short-term professionals with short-term bottom line agendas. All major decisions should be made in collaboration, as a mutual partnership, with the inventors, with an effective and balanced dispute resolution procedure when agreement cannot be reached.
AUTM professionals would not publicly agree that inventors should have the right to approve university management decisions on their own inventions. But they would agree that an Academic Inventors' Bill of Rights would help to establish legally binding responsibilities to protect both inventors' and TT managers' authority to make professional decisions in the best interests of innovation translation rather than the short-term interests of short-term administrators. A Bill of Rights therefore serves more than just inventors - it serves the public interest in funding university research.
A Bill of Rights cannot be toothless. It must make clear the limits on authority ceded to central control. Faculty and graduate students' invention rights start with the inventors. A research invention is often technical, complex and arcane. The inventors are experts in their own field and innovation. Many senior administrators, however, do not care and will not care until something is either very good (lots of money) or very bad (litigation and/or bad press). A Bill of Rights aims to preserve faculty independence which is critical to the public trust. But how will we sell that to corporate-minded university administrators?
The Kauffman Foundation offered a suggestion in the Harvard Business Review. Because public funds support most university research, the public has good reason to expect to be the ultimate beneficiary of the resulting intellectual property. The Bayh-Dole Act of 1980, regulated by the Department of Commerce, was passed to promote this vital public agenda. Commerce can modify the regulations, with input from academic inventors and entrepreneurs, to provide incentives for federal funding agencies to involve principal investigators and inventors in designating qualified commercialization agents to manage the diverse interests of the public, university and inventors. Competition in an open market would incentivize and reward long-range TTO specialization and excellence. Channels for innovation such as GreenXchange could develop, most likely as public/private ventures. But AUTM members bristle at any suggestion of sharing decision making power with inventors. That's a shame.
Most TT professionals describe their role as a support service to inventors in the complex process of translating an academic innovation into a useful product. However, since the Bayh-Dole Act, faculty privilege to control the fate of their creative innovations has been progressively eroded. IP lawyers have crafted policies of adhesion that replace faculty governance with total administrative authority over all strategic decisions about the ownership and commercialization of our inventions. Broker relationships that have the greatest likelihood of long-term success are based on choice and mutual agreement. Since patents are long-term assets, choice is essential. Mutual agreements should be founded on a Bill of Rights with creative flexibility to make the arrangement work.
Are faculty thought leaders, mutual partners, or casual labor? If people want change, the place to start is an Academic Inventors' Bill of Rights that restores to faculty inventors their proper place in the research ecosystem.
Explore the Academic Inventors' Bill of Rights proposals >>