Once upon a time, universities didn’t pay much attention to IP. That has changed over the years. When I was a kid growing up in Ann Arbor in the late 1970’s, the athletic director at the University of Michigan was considered a pioneer and a marketing genius, but it wasn’t until 1985 that the block “M”, which had been in use since at least the 1890’s, was registered as a trademark. Now every university with even a moderately successful football or basketball program will register and assert copyrights and trademarks for logos and mascots to go on clothing, shot glasses, wall clocks and just about anything else one can think of. (Some universities with not-so-great athletic programs but with a few Nobel prizes to their credit do the same.)
Universities now also seek patents. In the USA that’s directly attributable the passage of the Bayh-Dole act in 1980, which allowed universities to profit from the IP generated by federally-funded research. I blogged a number of years ago about the chemistry building at Princeton, that was completely funded by royalties from a molecule initially synthesized in a Princeton lab and eventually brought to market by Eli Lilly.
In Israel too, there was a time when universities and research institutes didn’t pay attention to patents; the notorious story around Rehovot is that of the Weizmann Institute professor who discovered the strong bond between avidin and biotin and didn’t think to patent it. Now all the institutes of higher education in Israel have tech transfer offices.
That doesn’t mean that drafting patent applications for professors, or commercializing the underlying technology, is easy for the patent attorney or TT office. Professors are used to telling others how what to do, so it can be a tricky thing to tell Professor X that his one example that he thinks will get paper published in Nature is insufficient to support broad patent claims. And although professors today tend to be more IP-aware than their predecessors a generation or two ago, most professors are still focused on publishing papers, not commercializing products or supporting the patent applications that facilitate such commercialization.
Tech transfer offices have limited budgets, which means that, often, patent applications don’t get filed in many countries, or even as a PCT application, unless a strategic partner to fund the patenting has been found. Hitherto, though, I viewed finding that strategic partner to be part of the tech transfer office’s job. This week I heard about one Israeli TTO that recently adopted a new scheme: it puts the onus on the inventor to be the salesman.
Basically, if the prof doesn’t provide the TTO with enough proven examples of possible uses of technology, it won’t file anything beyond a provisional. That’s a great deal for a prof who’s not interested in commercializing her work, and just wants to concentrate on publishing. But for the TTO and the university, given professors’ general reticence toward the patenting process and general lack of business sense, this doesn’t sound like a winning formula to securing outside funding and eventually making profits for the institution in question. At a minimum, it would take a promise of a very large percentage of the profits, should any be realized, to entice a professor to do this, and there’s no reason to think that most professors would do a better job than the business-minded people employed by the TTOs at identifying possible partners. One would think that trying to work with faculty, instead of making them responsible for something they may not care about in the first place, would be a better route to success.
We’ll check back in a few years and see if this institution’s PCT and overall patent filings drop as a result of this new policy.
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