Universities Are Trying Too Hard to Cash In on Discoveries, Says Academy Panel

It's been 30 years since Congress revised U.S. patent laws to encourage universities to embrace the world of commerce. Critics predicted that the integrity of academic research would be compromised by patent-grubbing and attempts to build companies around the latest laboratory findings. But such fears did not come true, says a new report from the National Academies released Monday. The panel—chaired by Mark Wrighton, Chancellor of Washington University in St. Louis—examined a vast file of scholarly work on how universities have managed intellectual property in the wake of the 1980 Bayh-Dole Act and concluded that things are pretty much hunky-dory right now. Or, as the report says:

The Bayh-Dole legal framework and the practices of universities have not seriously undermined academic norms of uninhibited inquiry, open communication, or faculty advancement based on scholarly merit. There is little evidence that IP [intellectual property] considerations interfere with other important avenues of transferring research results to development and commercial use.

At the same time, however, the Academies' panel warns universities not to go overboard hunting for patents. While some universities have made millions of dollars by licensing discoveries from their labs, raising money should not be the main goal. Instead, the report says, universities should aim to disseminate technology as widely as possible for the public good. This may mean passing up the best-paying licensing deal and taking one that allows for broader use of the technology. For most schools, it adds, the likelihood of "raising significant revenue" from patents is small, the probability of disappointment is high, and the risk of "distorting and narrowing" the use of new knowledge is great.

It's important not to get carried away with racking up patents at the expense of the university's primary obligation to disseminate new knowledge and technologies, says panel member David Korn, assistant provost for research at Harvard University. A former dean of the Stanford University Medical School, Korn was involved in reviewing a set of high-minded guidelines for universities that were largely adopted by the panel. These "Nine Points to Consider in Licensing" were previously endorsed by the Association of University Technology Managers. 

The guidelines say, for example, that a university should never agree to give full control of a discovery to a licensee. They also encourage generous rather than exclusive licensing of scientific discoveries that may have broad applications.

The report contains several novel suggestions among its six findings and 15 recommendations, including:

  • Universities should not try to give students and faculty members power to act as independent agents to obtain patents and draw up licenses on their own. This idea, put forward by the Ewing Marion Kauffman Foundation, is not workable and should not be tried, says the report.
  • Successful patent managers should consider setting up a mentoring system using people from the most experienced schools to train the less experienced. This approach, it's argued, would make the system work better for inventors.
  • The president should consider issuing an executive order to improve oversight of technology transfer laws across the federal government, specifically by centralizing oversight in a single office.
  • A U.S. database that contains reports from grant recipients to the government on how they are putting research to use in commerce—known as iEdison, maintained by the National Institutes of Health—should be opened up for confidential inspection by qualified researchers. At present the database is closed.

*This item has been updated to include more information.