Say you’re a scientist working in a lab, using your employer’s resources and federal grants, and in the course of your research, you come up with a promising gene therapy for cancer. Countless people could benefit; drug companies would pay millions for the rights to make it.
Who owns your idea? Who decides to whom to license it? Who gets the money?
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By Emilio DiSpirito IV License Partner | Private Office Advisor Engel & Völkers Oceanside www.DiSpiritoteam.com…
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In most private-sector settings, it’s quite simple: your employer. In academia, however, the scientists usually get a share as well – one-third of the net proceeds at the Massachusetts Institute of Technology, for example; 30 percent at the University of Pennsylvania; 35 percent of amounts under $50,000 and 25 percent of amounts above that at Harvard University.
But what if you come up with your great idea while you’re on leave, even out of the country? What if the idea comes to you at midnight, in the shower? And what if your invention isn’t a gene therapy related to your work, but a brilliant new way to build a mousetrap?
Questions like those had Brown University astir last spring, when, after 24 years with an intellectual property policy written before the Internet, personal computers or the human genome project, the school tried to revamp its rules.
Andries van Dam, a computer graphics pioneer tapped in 2002 to serve as Brown’s vice president for research, says “the biggest reason” for updating the IP policy was to make it more generous to inventors – and more competitive with other institutions.
Brown’s old policy gave 50 percent of royalties up to $100,000 to the inventor, but only 25 percent of royalties between $100,000 and $1 million, and 20 percent of amounts above that. That means from net royalties of $2 million, a Brown researcher would get $475,000, compared with $600,000 at Penn and almost $667,000 at MIT.
“They didn’t get a good enough deal,” van Dam said in an interview.
But along with a more generous formula – one-third of net royalties, as at MIT – the new policy included explicit language claiming Brown ownership of any idea or discovery made by its faculty, graduate students, postdoctoral associates, employees, visitors and consultants if:
*it was “conceived during or developed from research conducted as part of their (Brown) duties”;
*“all or part of the cost” was paid by Brown or from funds administered by Brown, such as federal grants; or
*it was developed “in whole or in part” through the “more than incidental use” of Brown resources.
And yes, the policy says explicitly, that includes the work faculty do while on sabbatical, and it may include work beyond your current project at Brown, because academic research and endeavors are “dynamic and subject to change and evolution.”
In other words, of all those earlier scenarios, only the mousetrap would be exempt, and only if it really was unrelated to your work (physicists and engineers beware). As van Dam put it, “It makes no difference where or when; what makes the difference is what” you invent.
Yet for most professors, the new rules were irrelevant, because they don’t do the kind of work that leads to patents, and under a related policy, books, films and other copyrightable materials – the more common faculty creations – belong to the author by default.
But, just as has happened at other universities, some professors who’d be personally affected were upset. Such was the outcry that the policy had to be amended – they say dramatically toned down; van Dam says clarified – before the faculty would go along with it. (The Brown Corporation, the university’s trustees, finally approved the policy May 27.)
One of the critics, physicist Xinsheng Sean Ling, had invented a promising device while on sabbatical in the Netherlands, and Brown staked a claim on the idea when he returned. This was under the old policy, but several in the faculty saw the sabbatical rule in particular as a vindictive response to his case; van Dam said that’s nonsense.
Ling also objected to the rules on consulting, which as originally drafted, “effectively made the professors slaves,” because they seemed to claim ownership of their work even if it was done on contract for someone else.
Brown officials added a clause explicitly exempting consulting work, as long as it didn’t violate Brown’s conflict-of-interest policies or was done with Brown resources. After some other changes, Ling said, “I think the final policy was perfect.”
The IP rules’ other major critic, however, chemist Gerald J. Diebold, took a different position.
While he went along with the amended policy, he said it’s still unfair, claiming a stake in the fruit of researchers’ labor even when they’ve gotten little, if any, Brown help.
“We’re the ones that are doing all this work,” Diebold said. “It’s not as if the university is setting up these labs for us and we say, ‘We need another laser,’ and they say, ‘Oh yes.’ It doesn’t work that way. Their role in contributing to your work is virtually negligible compared to what industry does.”
Scientists like him don’t come to Brown because they have “this burning desire to teach,” Diebold added, but because they’re excited about making a “real discovery.” Brown, he said, shouldn’t stifle that. “If they make the university just like a business, why would anybody want to come here?”
Ling added that Brown shouldn’t put itself in an “adversarial” position with faculty, but rather make its labs and facilities as accessible as possible and “make the environment more free, so everybody will be more creative and invent more.”
Anne S. DeGroot, a physician and biomedical researcher who’s got her own company, EpiVax, to move her discoveries into the market, said the new policy is “a moot point for me,” because all her work is done collaboratively and involves detailed arrangements with Brown.
But DeGroot also said she hopes Brown won’t stop with this policy.
“I’m comfortable with what they’ve decided, but if you want the Providence biotech environment to thrive, you’re going to want to be creative about intellectual property, so that the people who are actually inventing things get a lot more control over the outcome,” she said. “That’s going to take very creative people coming into Brown, coming into Lifespan, coming up with different ways of doing the business of biotechnology.”
Van Dam said flexibility and room to evolve are built into the new policy: First, there’s a committee to evaluate complex cases – made up of five faculty members, he stressed. Second, there’s a clause that says the policy is to be “periodically” reviewed and updated.
“So now we don’t have to wait for a crisis,” van Dam said. It was “ridiculous” to wait 24 years to update the policy, he said, and it won’t be that long next time. “We have to evolve. The IP landscape is evolving.”
