Academic Inventors’ Bill of Rights unveiled in poster presentation at AUTM Annual Meeting

Mar 18 2010

As technology transfer managers from around the country prepare today to debate the role of academic researchers in commercializing their own inventions, two experts – one from each side of the aisle – have come together to propose an Academic Inventors’ Bill of Rights.

“Most technology commercialization professionals understand the importance of building strong partnerships with our faculty innovators”

The authors of the initial draft are Alan Bentley, Director of Commercialization for Cleveland Clinic Innovations, and Dr. Renee Kaswan, founder of IPAdvocate.org (www.IPAdvocate.org), former research professor at the University of Georgia and inventor of the breakthrough product for dry eye, Restasis^®.

Bentley and Kaswan are unveiling their Academic Inventors’ Bill of Rights in a poster presentation at the Association of University Technology Managers (AUTM) Annual Meeting, which kicks off today in New Orleans.

Both believe that adopting a standard of minimal legal protections for the intellectual property of students and faculty will benefit faculty, students, society at large and universities in the long run.

“Most technology commercialization professionals understand the importance of building strong partnerships with our faculty innovators,” said Bentley. “The productivity of our industry has been called into question of late, partly because of isolated system failures in working with faculty. The creation of a standardized Inventors’ Bill of Rights that all academic institutions can adopt would be a powerful message to our faculty that commercialization is indeed a partnership.”

“Faculty researchers generally understand that the university’s tech transfer office can be a valuable resource, but we’re also vulnerable because there are no official protections of our role in translating our discoveries into products that benefit society,” said Dr. Kaswan. “It’s encouraging to see both sides coming together to discuss these issues openly, and to brainstorm creative solutions. The Bayh Dole Act initiated a 30-year evolution of IP policy language that singularly protects university administrators, often at the expense of students and faculty. Consequently, we now must re-establish an authentic basis for a partnership consistent with the lifetime – 20 years or longer – of the shared intellectual property rights. Because the stakes can be large, a clear and enforceable Inventors’ Bill of Rights is needed to build a genuine foundation for the mutual goal of promoting highly significant innovations.”

The Inventors’ Bill of Rights proposes, among other things:

• Students and faculty have a right to freedom of expression; the right to teach and publish their research shall not be abridged by intellectual property policy.
• Inventors shall be entitled to timely disposition of their inventions and to obtain access to inventions for which the University elects to discontinue commercialization effort, without onerous restrictions or obligations to the university that would act as disincentives to commercialize.
• Universities must establish and publish transparent practices and procedures comprising their commercialization processes.
• Inventors have the right to due process, conducted in public with public access to all records as they may request.
• All inventors, including students and other subordinate persons, shall have equal right to institutional protection of their interests in their intellectual property regardless of academic rank or position.
• Inventors have the right to be informed about any license negotiations or re-negotiations.
• Any changes to intellectual property or commercialization policies shall be approved by the appropriate faculty-run governance body, such as a Faculty Senate.
• Disputes shall be resolved by a committee that includes faculty, student and administrative representatives.

Dr. Kaswan recommends either of the following rights also be adopted:

• No university may require present assignment of future IP rights as a condition of employment or student enrollment.

Or, at a minimum:

• Inventors who assign their IP to a university may elect a qualified independent agent to promote their invention into public use. The agent must represent the interests of the university, public and inventors. Election of an agent does not modify the pre-existing royalty sharing arrangements.

This last right is the subject of a recent proposal by the Kauffman Foundation to the Department of Commerce.