Can it be a responsible, or even economically sound, course of action for academic bodies to give away their intellectual property (IP)? That was the question behind The Great IP Giveaway, a debate held in London recently by the National Endowment for Science, Technology and the Arts (NESTA) and the Chartered Institute of Patent Attorneys (CIPA).
The debate stemmed from news in a spring issue of Electronics Weekly about Easy Access IP, an initiative by King’s College London and the universities of Bristol and Glasgow to make key patents available to industry partners for free. Regardless of the economic benefits that those institutions predict the scheme will unlock, Easy Access IP has startled experts with more traditional views.
With all that in mind, CIPA and NESTA assembled a panel from Parliament, industry, University College London (UCL) and King’s College itself to debate the motion: ‘This house believes that, in order to speed economic growth, universities should give away their IP to private enterprise.’ What followed was a lively and absorbing insight into two possible futures for the UK patent system.
Dr Alison Campbell, managing director of King’s College London Business Ltd, set out to destroy some myths about the patent system as a passport to economic glory. ‘Universities in England spend 20 times more on patenting than the income they derive from licensing,’ she said. Campbell also cited a 2005 Business Week article in which United States Patent and Trademark Office representative Richard Maulsby admitted that, of 1.5m US patents in effect at that time, only 3,000 were commercially viable.
Her next step was to launch a critical dissection of some choice university mottos in order to pin down what academic bodies really stand for. There was, she argued, a noticeable theme behind examples such as Strathclyde’s ‘a place of useful learning’ and UCL’s ‘a world-class centre dedicated to disseminating original knowledge’. And that theme, in Campbell’s words, is that ‘there is no requirement for universities to be businesses’.
Campbell also highlighted patent-free technologies that underpin large industrial platforms with numerous participants. ‘DNA fingerprinting – a public-domain tool – has proved paternity, kept families together and helped in the fight to protect endangered species,’ she said. ‘The internet was developed by a consortium working under Tim Berners-Lee’s ethos that there should be no patenting and no royalties due. And monoclonal antibody technology, which has contributed to numerous pharmaceutical products, was never patented.’
Homing in on her last point, Campbell referred to Argentine biochemist César Milstein, who made significant discoveries in the monoclonal field. Despite the promise of riches, Milstein never sought a patent on his own work, declaring that there should be rules on technology transfer based upon: i) the interest of the taxpayer – eg responsibility to the public at large; ii) the interest of protecting the scientist; and iii) making money as the least-important consideration. ‘The patent system is flawed,’ said Campbell. ‘We can either defend it, ignore it… or change it.’
Supporting Campbell was Brian Horsburgh of IP Group – an organisation that helps research-intensive institutions to commercialise their IP in spin-offs. Horsburgh was keen to extol the virtues of Easy Access IP: ‘It is a simple agreement that will create jobs and grow the economy by increasing access to academia – particularly for SMEs,’ he said. ‘They are the market leaders of tomorrow. Most importantly, they are nimble and capable of seizing first-mover advantage. It is vital we get IP to them.’
In Horsburgh’s view, ‘The economy is broken, the UK is spending more than it is earning, and a marginal spurt of growth in manufacturing will not be enough, by itself, to offset our over-reliance on financial services.’ Leveraging the science base in universities to release IP for monetisation by start-ups, he argued, is a more promising solution.
Dr Anne Lane, executive director of UCL Business Ltd and effectively Campbell’s counterpart on the panel, built her response from the contention that a culture of universities giving away their IP wouldn’t stimulate economic growth at all, as the proportional return of funds to the economy would not justify the process. ‘It is already hard to incentivise academics to commercialise IP, even when they know they will receive income from its exploitation,’ she added. ‘If we remove that incentive, there will be nothing left.’
Lane called attention to the grace periods available to US, Australian and Japanese innovators, which enable them to make details of their inventions public prior to registration. This allows companies to conduct product research and market testing to determine which innovations have the best commercial chances, well before they commit themselves to the expensive process of registering them.
The US and Australia both have grace periods of one year, while Japan’s is set at six months. However, under the UK’s non-disclosure rules, the specifications of inventions must be kept secret up to and beyond the point of filing – meaning that innovators are often at the mercy of guesswork over the saleability of their works. Lane said that influential IP players should look at the advantages of introducing a grace period for the UK, which would help innovation-rich entities to test the viability of their creations and develop the appropriate licensing plans.
‘Universities are charities, and should maximise the benefits of their assets as much as possible,’ argued Lane. ‘If they gave away their IP for free, they would have no incentive to recover their patent costs, which would discourage the sharing of IP and stunt economic growth.’
Ellesmere Port and Neston MP Andrew Miller – member of the Parliamentary Science and Technology Select Committee – rooted his side of the Against position in the realities of lawmaking. ‘The issue before us could only happen if the statute exists to make it happen,’ he said. ‘Do we really want that? Universities are independent bodies, and in straitened economic times they need all the income they can get.
‘Brian [Horsburgh] is right,’ he added. ‘Leveraging is a hugely important area. But why, without the prospect of income, should universities push their IP into commercialisation by others? Without that prospect, they would have no incentive even to carry out research. If the process of registering IP is laborious, we should think about reforming it – not abandoning it.’
New Legal Review will continue to monitor the progress of Easy Access IP and report any significant developments around the scheme.
In the meantime, find out more about the patents that it has released so far by clicking on the links below: