University Intellectual Property. Graham Richards
go wholly to the author. This does not seem fair because the sums of money can be quite considerable; there are academic authors who earn hundreds of thousands of pounds per year from writing standard texts. This is very much what academics should do, but it seems far from clear why synthesising a molecule of commercial value should lead to income sharing while writing books or articles should not. Why should universities own patent rights but not copyright?
Of course it is somewhat complicated by the fact that academics do not have set hours of work. The boundary between what is really part of one’s duties as a lecturer or professor and what is totally outside employment in a specific department is very fuzzy. However, if one takes the case of an academic historian, hired to cover a set period of history, who then writes books on this topic and makes magnificently remunerated television programmes, then it is hard to see why the employer should not derive some benefit.
A further level of complexity is now developing as a result of the internet and the use of IT by lecturers. Increasingly the contemporary student does not like lectures using traditional talk and chalk. Blackboards are even considered to provide a health and safety hazard. White boards and the provision of lecture notes on the web in the form of handouts are now expected. But who owns these lecture notes, the lecturer or the employing university? Some of these notes will be downloaded from the internet by lecturers at universities in other countries, either directly or via students who move on to teaching posts. Once more it is hard to see why there is any essential difference between this type of work and scientific research, given that the formal duties of the academic are to teach and to do research. If the university were to own the teaching materials then they can employ a mechanism whereby the content is protected and exploited to the mutual benefit of both author and employer.
Trade marks
Universities have often been very lax in protecting their names and symbols such as their crests. Oxford is a case in point as it failed to register the coat of arms of the university which had been in use for centuries and so had to develop a variant with a belt drawn around it, which was subsequently protected. The crest without the belt appears on tee-shirts and other items sold across the world, with no royalty on the proceeds due to the university.
An even more surprising omission was the fact that Oxford’s enormously successful publishing house, Oxford University Press, which dates from 1473, did not protect its name until the 1960s. At that time Robert Maxwell decided to publish an Oxford Dictionary of Spelling. The university took his company to court on the grounds that the book was passing itself off as being from the University Press. They lost. It was decided to appeal and fortunately for the university the case came up before the sparkling eyes of Lord Denning.
The corporate entity bringing the case was ‘The Chancellor, Masters and Scholars of the University of Oxford’. Denning observed that he was a plaintiff being both a Master, having the degree of MA, and a former scholar of the university, but neither side objected. The case of Maxwell’s company was that it was indeed based in Oxford so that the title of the work was accurate. Lord Denning observed that the defendants were located in the suburb of Headington and that the university would not object if the defendants’ work were called the Headington Dictionary of Spelling. The defendants lost in the appeal.
Another similar tale involves a pharmaceutical company based in Boston tried to use the name ‘Veritas’, the Harvard motto, but were prevented by the university, becoming instead Vertex. Nonetheless some bright young man in the UK did in fact register the name for use in Europe.
These anecdotes, though slightly comic, do illustrate just how careful academic bodies need to be to defend their trade marks and names. Perhaps the area where most care needs to be taken in registering names is with domain names for use on the internet. Many institutions have suffered at the hands of unscrupulous souls who register obvious names in advance of the legitimate body getting around to the task.
Consultancy
Consulting and giving expert advice, such as when acting as an expert witness, are further somewhat muddy realms where income, often very significant, can be earned by academics by virtue of their employment by their host institution. Although many academics would complain were the university employer to take a proportion of such income, it is hard to see why the employer should not have some rights.
In addition, if a professionally-run organisation manages and organises the consultancies on behalf of academics, it is quite likely that even after this body has taken a percentage the professors can be much better rewarded. This is because academics are notoriously bad at negotiating fees for consultancies and similar activities. I like to recount the tale, probably not apocryphal, of the Oxford academic who was invited to appear on a BBC television programme for a fee of £50. He wrote back immediately accepting the invitation and enclosing his cheque.
Academic lawyers can, not infrequently, receive large sums in arbitration cases, but they would not have been selected were it not for the post they hold in a Law Faculty.
In such areas there is a strong case to be made for these outside activities being properly organised by the university, which would then take some financial benefit. Instituting change along these lines, however, would certainly generate opposition.
Summary
As we have seen, it is really only in the field of patents and licensing that university intellectual property has begun to generate significant income. Even this activity has a relatively short history, with a marked difference between what has happened in the USA and in Britain. This is the subject to which the next chapter turns.
3. Bayh-Dole-Thatcher
By Graham Richards
The Bayh-Dole Act
In 1980 the United States became concerned about declining productivity and rising competition from Japan. As a response Congress passed the Bayh-Dole Act, which enabled universities to patent federally-funded research and pursue ownership of an invention in preference to the government. Universities were thus offered the opportunity to licence campus-based inventions to private companies in exchange for royalties. In the years following, Congress passed a number of additional laws to encourage university-industry links, notably generous tax breaks for corporations willing to invest in academic research.
There are those who were unhappy about the Bayh-Dole Act since in a sense giving private firms the rights to inventions generated at public expense means that the public has to pay twice for the same invention – once through taxes to support the research that yielded the invention and then again through higher monopoly prices and restricted supply when the invention reaches the market. However, the legislation does contain safeguards, such as a march-in provision enabling the federal government to terminate an exclusive licence if the licensee fails to take effective steps to bring the invention into practical application within three years. A royalty-free licence is also included to enable the government to use the technology at any time.
What is quite certain is that the Act produced a massive increase in the amount of academic research being commercialised in the USA, more in terms of licensing than in the creation of spin-out companies. There was a ten-fold increase in patents generated and cumulative increases in industry funding for universities, rising to an annual $2 billion by the turn of the millennium. In June 2011, however, the US Supreme Court in Stanford v Roche cut back the effect of Bayh-Dole. Quite how much remains to be seen.
The Thatcher initiative
The much-repeated truism that Britain is good at invention, but poor at exploitation, is based on a long history of innovative science and woeful commercial success. In the 19th century Perkin produced the first synthetic dye, mauveine, and even started to manufacture it commercially. The country had a unique lead but by 1914 when it was necessary to send an army to France, the only source of khaki dye for the uniforms was I.G. Farbenindustrie and some of the British Expeditionary force went to war in navy