IP Ownership, Benefit Sharing and Incentive for Researchers Bayh Dole Act Ownership Benefit Sharing Incentive for Researchers
Bayh Dole Act Regulations of Ownership Laws governing employment relationships Laws related to agricultural, plant varieties, trade, health Laws of industry, science and technology and education issues Innovation laws University laws As well as IP policies in the institutions when they exist, follow the national law. It is important that the relevant departments within universities and research institutes are aware of the laws of their state which govern their activities.
Historical concerns over allowing entities to privatize the fruits of publicly-sponsored research Inventions financed with public funds should inure to the benefit of the public, and should not become a purely private monopoly under which the public may be charged for, or even denied, the use of technology which it has financed. U.S. Attorney General, 1947 Over time, policies changed Greater opportunity for federal grantees to take title to patents arising from government-sponsored research Concerns arose that government-owned patents were not being put to good use E.g., NASA in 1970 Patents owned by agency: 1% commercialization rate Patents owned by grantees: 18-20% commercialization rate Fears over U.S. economic stagnation relative to Europe and Japan
US - Bayh Dole Act (1980) The Bayh-Dole Act allows the transfer of exclusive control over inventions generated from government funded researches to universities ) Possibly the most inspired piece of legislation to be enacted in America over the past halfcentury. The Economist, 2002
Universities may elect to take title to inventions developed through federal funding Universities must file patents on inventions they elect University must have written agreements with faculty and staff requiring disclosure and assignment of inventions University must share a portion of revenue with Bayh Dole Act Contributed to an explosion of university patenting 1980: 495 patents issued to universities 2005: 3,278 patents issued to universities Other factors also contributed Rise of technology transfer infrastructure 1980: 25 technology transfer offices (TTOs) 2005: 3,300 TTOs
Substantive Provisions Universities may elect to take title to inventions developed through federal funding Universities must file patents on inventions they elect University must have written agreements with faculty and staff requiring disclosure and assignment of inventions University must share a portion of revenue with inventors Excess revenue must support research and education Ownership
Who owns IP generated by publicly funded research? Generally national law defines who owns IP (inventions) arising from work conducted for an employer In some cases, national laws specifically address ownership of inventions arising from publicly sponsored research Sometimes IP ownership covered in different laws 2011 Yumiko Hamano Government University (e.g., Germany, Austria, Japan, China, South Korea, UK, France, US, Denmark) Creator/ Faculty (e.g., Sweden, Italy) 2011 Yumiko Hamano
No Country University Faculty State 1 Australia X 2 Austria X 3 Belgium X 4 Canada X X 5 Denmark X 6 Finland X 7 France X 8 Germany X 9 Iceland X 10 Ireland X 11 Italy X 12 Japan X 13 Mexico X 14 Netherlands X 15 Norway X 16 Poland X 17 South Korea X 18 Sweden X 19 United Kingdom X 20 United States X Benefit Sharing
Benefit Sharing Most institutional IP policies include share of benefit accruing from commercialization of IP. The university or R&D institution may use the benefit to finance: - research infrastructure - research projects - IP protection - IP maintenance - funding all or part of the technology transfer office. Stakeholders of benefit sharing (a) Universities and R&D institutions (b) Inventor(s) (c) Inventor s research group and/or department and/or college/school (d) Students, research assistants and visiting researchers (e) Governments and public funding agencies (g) Collaborators and sponsors (f) Technology transfer units 2011 Yumiko Hamano
Benefit Sharing How are the revenues from research commercialization shared among faculty, university, government funder and other stakeholders? The distribution proportions differ by institution Inventor Faculty University On average, Inventor: 25-85% Faculty: 25-30% University: 25-50% (in many cases, the university provides part of its portion to the TTO (or the administrative unit) and the laboratories of the creator 1/3: 1/3: 1/3 institution portion often used for funding research ) 2011 Yumiko Hamano Net income = gross income -15% (for the administrative costs of the Stanford Office of Technology Licensing (OTL) + any unreimbursed expenses (e.g. patenting expenses) Net income is shared by: 1/3 to the inventor(s); 1/3 to the inventor(s) department (e.g., department of Electrical Engineering); 1/3 to the inventor(s) school (e.g., School of Engineering). Source: http://otl.stanford.edu/inventors/resources.html
# Institution Stakeholders Inventor Institution Department TTO% % % % 1 National University of Singapore 50 20 30-2 Nanyang Technological University, Singapore 50 50 - - 3 California Institute of Technology, USA 25 75 - - 4 Moi University, Kenya 40 30 20 10 5 Tohoku University, Japan 30 40 30-6 City University of New York, USA 50 25 25-7 Oklahoma State University, USA 50 30 20-8 McMaster University, Canada 50 50 - - 9 University of Muenster, Germany 30 70 1 1 10 University of Stellenbosch, SA 50 25 25- - 11 University of Tokyo, Japan 33.3 33.3 33.3-12 University of Victoria, Australia 80 Negotiable - 13 University of Witwatersrand, SA 70 30 - - 14 MIT, USA 33.3 33.3 33.3-15 ICIPE, Kenya 33.3 33.3 33.3-16 ILRI, Kenya 100 17 University College Cork, Ireland = or <50 35 = or >15 18 Unicamp, Brazil 33.3 33.3 33.3 Incentive for Researchers
Incentive Scheme How should universities and R&D institutions encourage and motivate scientists/ researchers? Training on IP knowledge Capacity building Involvement of scientists/ researchers in the process of IP and technology management Financial compensation Fixed percentage of royalties lump sum Inventor s award Personal program Promotion scheme Framed certificate of inventors Dinner with dean/ the senior management of university thanking inventor/ research team 2009 Yumiko Hamano Thank you for your attention
Yumiko Hamano WIPO University Initiative Program Innovation Division WIPO Yumiko.hamano@wipo.int