Patent Policies of 65 Educational Institutions: A Comparison
Bowers, Lynne Jordan, Leon, Vickie, SRA Journal
In the 1970s, U.S. research universities began a heavy commitment to the transfer of technology to industry. Events of the 1980s, from the "promise of biotechnology" to the promulgation of new patent law and increased federal involvement, further influenced university policies. The distinction between knowledge transfer and technology transfer, as well as increasing interest in commercializing research, is chronicled by Gary W. Matkin in Technology Transfer and the University (1990). Matkin's highly readable study is commended to the reader who seeks a broader understanding of this controversial and timely issue. For evidence of controversy, one need only look at the August 4, 1993, issue of the Chronicle of Higher Education, which includes an article entitled "Struggle over a patent brings prison term for former U. of South Florida student." The timeliness of this issue is supported by the fact that 75% of the 65 patent policies reviewed here were revised since 1980, 20% in 1990-93 alone. Columbia University's patent policy directs that the policy is to be "reexamined at least once every five years."
A comparative review of 65 current patent policies was undertaken in the summer of 1993. The differences and similarities of the key features of the policies are discussed below. These key features can serve as a primer for those who need only a cursory understanding of the issues related to patent policies. Consideration of the observed differences among the policies should be of interest to those who require a greater understanding of patent policies.
Copies of the policies reviewed here were available in the authors' files in 1993, when this article was written. The authors managed a competitive grants program that supported research for the Superconducting Super Collider. The grant conditions for that program required that funded institutions submit a copy of their patent policy. The institutions described herein represent all of the institutions with faculty who were funded by the state of Texas for SSC-related research and educational programs in the summer of 1993. These institutions can be assumed to be representative of institutions with programs in high-energy physics.
Why Have a Patent Policy?
The debate over the appropriateness of the mercialization of research versus creation of knowledge for its own sake began before 1924, when the first university patent policies were adopted by Lehigh University and Columbia University, in that order. There are those who contend that scientists should publish and dedicate their discoveries to the public and that the prospect of patents and commercialization corrupts the purposes of the university. In 1948, the patent policies of the University of Chicago and Yale University did not allow the staff of the university to profit monetarily from research by means of patents, royalties, or licensing agreements. By contrast, a survey of university patent policies published in 1948 by Archie Palmer included this quote by Elihu Thomson in his address to the 1920 graduating class of the Massachusetts Institute of Technology:
Publish an invention freely, and it will almost surely die from lack of interest in its development. It will not be developed and the world will not be benefitted. Patent it, and if valuable, it will be taken up and developed into a business.
How many of the patent policies reviewed here acknowledge the existence of this historical debate about the university's role? Eighteen percent include a preamble or rationale that recognizes this issue. Sixty-six percent of the policies reviewed cite maximizing the benefits to the public as the rationale for instituting the policy. After public good, the most frequently cited reasons are to protect the interests of the inventor, the university, and external sponsors, in that order. All of the reasons cited in the patent policies are listed in Table 2. Eighteen percent of the policies include neither introductory statements nor any objectives for the policy. …