Strategic Development of Engineering Policies for Patenting and Licensing

By Petrick, Irene Johnston; Reischman, Michael M. | SRA Journal, Spring 1996 | Go to article overview

Strategic Development of Engineering Policies for Patenting and Licensing


Petrick, Irene Johnston, Reischman, Michael M., SRA Journal


Introduction

Most research universities have established formal patent and licensing policies to facilitate technology transfer. University technology transfer activities have been widely studied. Investigators have evaluated the effect of technology transfer on economic development (Feller, 1994; Feller & Anderson, 1994), formal program structure (Bonaccorsi & Piccaloga, 1994; Rahm, 1994), and satisfaction of program participants (Petrick, 1995). Researchers have also investigated the effect of technology transfer on specific industrial sectors and society as a whole (Fairweather, 1990; Mansfield, 1991, 1995; Marazita, 1991).

Technology transfer has been widely touted as the "silver bullet" for sagging industry performance (Huffman & Evenson, 1993). The literature abounds with anecdotal information about the success of specific industry-university collaborations (Godkin, 1988; Barber, 1985; Schriesheim, 1990/91; Scolnick, 1990; Vleggaar, 1991). Common measurement tools to quantify technology transfer success include: (a) the number of patents generated, (b) the ratio of patents to research expenditures, and (c) the monetary return on licensing investments. All of these measures certainly help to describe technology transfer activities. However, inadvertently, such metrics may have affected the development of university policies governing intellectual property.

This paper sets forth the following arguments:

* For technology transfer to be successful, the university and the industry sponsor must both benefit from the partnership. This means that each should be concerned about the way the partnership affects the other.

* Universities that develop an all-inclusive policy for the transfer of intellectual property to industry are myopic. This approach ignores the differences among academic units and, more importantly, the varied needs of the industrial sector.

This paper explores the appropriateness of patent and licensing policies across disciplines. The first section identifies commonly held university patent and licensing positions and examines these polices from a historical perspective. The next section of the paper describes how collaborations between university and industry partners can help meet industry's evolving R & D needs. The concept of "breakthrough versus incremental improvement" is then discussed in the third section. This discussion provides the rationale for a differential patenting and licensing policy. The paper concludes with a discussion of a series of patent and licensing guidelines for engineering-based R & D activities.

University Technology Transfer Activities

Patents are important links in the commercialization chain. University interest in the ownership of intellectual property developed by faculty and staff began in earnest in 1980. The impetus was the Bayh-Dole Act. Under this legislation, intellectual property resulting from research sponsored by the federal government became the property of the university responsible for carrying out the project. With patent ownership, universities began to pursue industry licensees to commercialize their intellectual property.

An invention or idea left unprotected by a patent is free for all to use. From a business perspective, a concept or idea has maximum value if it affords a competitive advantage that is not available to others. In other words, the idea is only valued if it can be kept secret or if its use can be restricted. A university, on the other hand, is in the business of idea-generation and -distribution, not idea-protection. In fact, this issue - how and when to disseminate concepts with potential commercial value - is often a major stumbling block to negotiating a contract between the university and its potential industry sponsor. Two cultures, two motivations, two approaches to judging success. Research administrators are charged daily with bringing these two camps together to the benefit - and satisfaction - of all. …

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