Academics should be told to file patents before publishing, says IPO

Out-Law News | 20 May 2011 | 4:51 pm | 4 min. read

Academics should patent new research before publication to earn universities vital revenue and improve the wider economy, according to guidance published by the Intellectual Property Office (IPO).

Universities should do more to educate academics to file patent requests on new research before publishing the findings, the IPO guide says.
"The vast majority of a university’s output is put directly into the public domain by publication in journals or by free dissemination," the Intellectual asset management for universities guide (48-page / 1MB PDF) said.

"The ability of researchers to publish must be preserved, but industrial contracts and IP protection need to be considered, for example by educating researchers on the necessity to file a patent application before publishing, or by allowing industrial partners to request delays in publication in order to accommodate patent filing," the guide said.

"IP related activities may generate a small, but welcomed, proportion of a university’s revenue, but can have a wider economic impact by enabling new knowledge to create new jobs and deliver innovation to the economy," it said.

But the IPO has not included enough guidance on some of the more pressing IP issues universities face today, one expert said.

Louise Fullwood, an IP law specialist at Pinsent Masons, the firm behind OUT-LAW, said the guide had not adequately explained how universities should protect digital material.

"The guide is a little bit conservative and covers the traditional models of patenting and spin-outs," Fullwood said. "It could have gone a bit further and been more creative in dealing with the issues thrown up by new technologies," Fullwood said.

"More recent IP management headaches for universities include the legalities of activities such as digitising teaching or student materials; recording or streaming lectures online and the use of content sourced from, or uploaded to sites such as flikr, YouTube or blogs," she said. " There is no mention of how university IP policies should be dealing with these issues in order to avoid breaching third-party intellectual property rights or indeed how to utilise such new technologies to generate revenues or other benefits from university IP.  It was as if Web 2.0 never happened."

Universities do not have to own the IP to material in order to benefit commercially from its use, the guide says. An "important distinction" between ownership and access rights is needed so that universities can agree collaboration terms for the use of IP material with industry or with other academic bodies, it said.

"It is possible that the goals of a project or department can be met simply by being able to use a piece of IP and therefore the terms on which access rights are granted are critical. IP agreements should therefore be negotiated on a case by case basis," the guide said.

"[Universities] need to have IP agreements in place that ensure that they secure the rights to continue to use existing IP and to exploit the IP that arises from research, whilst also balancing this with working collaboratively with other institutions, public or private," it said.

When considering how to use IP universities should ensure that they can operate freely and retain the right to use the material for the purposes of future research, the guide said. Universities should consider whether it should protect the IP of material it gives out to students and the models it uses to transfer knowledge.

"Policies are needed to manage the IP in teaching materials in order to ensure continuity following departure of an academic, or to ensure that a researcher can publish his research following any research contract to ensure future access to the work being undertaken," the IPO guide said.

"The effective protection of any proprietary teaching models and materials and research results needs to be considered in order to support the most effective transfer of such knowledge. Knowledge without knowledge transfer is of no value to organisations established with a good public motive," the guide said.

Universities should introduce uniform licences that allow it to both commercialise software and publish the coding for the software for others to assemble for free, the guide said.

Transferring technology and partnering with businesses in a continuing professional development scheme can lead to direct profits, the guide said. Universities should also consider the wider benefits to the economy of knowledge exchanges, such as investing in student business ideas, it said.

Universities may approach IP strategy differently as some of the methods used by one university to improve IP protection and raise revenues may not be appropriate for others, the guide said. They must establish clear IP policies so that they can benefit commercially when other organisations want to use research or other assets they have protected, it said.

"The policies have to sit in a complementary way with the core objective of knowledge creation, scholarship and learning," the IPO guide said.

The guidance might have benefited from more private sector input, Fullwood said.

"Looking at the list of authors, the primary input to this report is from the public sector," said Fullwood. "This is great in that the authors are highly experienced experts in their field.  However, including a stronger business perspective could have been beneficial."

"When we speak to some of our industry clients, they criticise some universities for taking an overly risk-averse approach to intellectual property and that has caused problems for those universities not perceived as commercially friendly," Fullwood said.

"This report does relax earlier ownership issues a little, for example by confirming it is ok for universities to let students own their intellectual property and by encouraging universities not to insist on retaining IP ownership when dealing with business," Fullwood said.