Management of intellectual property in publicly-funded research

1.4.1. PROs as sources of new discoveries - The Open Science ModelAlthough there is a long tradition of interaction between industry and academia as more fullydescribed in Chapter 4 below, it can be stated that traditionally, PROs have been recognised as sourcesof innovation through two main routes:- Publications of research results in scientific journals. As soon as published, they enter thepublic domain and can be used by anyone.- Contract work from industry in which PROs have contributed to the development of newtechnologies. In most cases, industry contracts to acquire ownership of the results and filespatent applications to protect its development.These are illustrated schematically on the top panel of Figure 1.In both cases, no intellectual property rights are retained by PROs (other than moral rights linked tothe authors). We call this model the “Open Science” model because it is comparable in many wayswith the open source model in software development. The only moral obligations from the users are toacknowledge credit to the source and to share the improvements. There is no need to manageintellectual property rights, since PROs do not retain them, and there is correspondingly no need fortechnology transfer offices. Innovation is entirely left to the responsibility and diligence of privateindustry.The Open Science Model is very appealing to scientists because it accords a universal value to scienceand the unrestricted flow of new information 9 . The quality and reputation of researchers is measuredby the number and quality of peer-reviewed publications. It was the prevailing model in the USA untilthe 1980s and still prevails in most countries of Europe as the traditional basis of transferring PROresearch results to the public.1.4.2. PROs as Sources of New Inventions - The Licensing ModelThe US ExperienceIn the USA, prior to 1980, inventions based on university discoveries funded by public moneybelonged to the US government, which had the policy to grant only non-exclusive licenses. In practice,there was little incentive on the part of researchers to file patent applications and little incentive on thepart of industry to take non-exclusive licenses from the government.The Bayh-Dole Act 8 strongly encouraged PROs in receipt of research funding from the FederalGovernment to establish a technology transfer function. The major features of the law 9 are:oooTitle to inventions sponsored by the Federal Government are with the university,unless the university chooses not to take title;If the university elects to take title, it must file for patent(s) and show due diligencein finding a licensee that will develop commercial products;The university must share a portion of royalty income with the inventor;8 The Bayh-Dole Act. A Guide to the Law and Implementing Regulations” http://www.ucop.edu/ott/bayh.html9 Some of these provisions, such as the march-in rights and the obligation to manufacture domestically have beenquestioned by both industry and PROs.8