Intellectual Property and the Academic Community

NAPAG NATIONAL ACADEMIES POLICY ADVISORY GROUP

Intellectual Property & the Academic Community

THE BRITISH ACADEMY THE CONFERENCE OF MEDICAL ROYAL COLLEGES THE BRITISH ACADEMY OF ENGINEERING THE ROYAL SOCIETY INTELLECTUAL PROPERTY AND THE ACADEMIC COMMUNITY

MARCH 1995 ISBN 0 85403 496 X

£19.90 FOREWORD

In 1983 in her foreword to Intellectual Property Rights and Innovation – the Nicholson report – the Prime Minister Margaret Thatcher stated:

‘individuals generating new ideas, whether in universities, companies, Government research establishments, or even in schools, should take very seriously indeed the protection of those ideas’.

This philosophy has been promoted vigorously since that report and there is now a greater awareness of the value of ideas. However, which ideas should be protected and when? Who should exploit them and how? Who should profit? These questions have become increasingly difficult to answer. There is inevitably a potential conflict between the openness of scientific research and the competitiveness of the commercial world. The fundamental problem is how to operate the patent system in a way that encourages both research and its exploitation.

The National Academies Policy Advisory Group was formed in 1992 and in Spring 1993 it was agreed that the spectrum of issues thrown up by intellectual property required the mul- tifaceted approach that NAPAG could offer. Thus, a working party comprising scientific, technological, medical, ethical, commercial and legal expertise began work in June 1993. The working party consulted widely and I would like to thank all those who contributed to its deliberations.

Intellectual Property and the Academic Community is published as a statement of NAPAG. I hope that all those with an interest in the impact of IP issues on creative work, or the way current IP regimes cope with technological advance, will consider this report. The issues are complex and will take time and effort to resolve, both at the national and the international level. The report suggests some actions that may be required and offers views on what further examination may be necessary.

Sir Michael Atiyah, O.M. President of the Royal Society Chairman NAPAG 1992–1994

(i) CONTENTS

SUMMARY AND KEY RECOMMENDATIONS vii

PART I INTRODUCTION 1

1. IPRs and Academic Science 1 1.1 Prominence of IP Issues 1 1.2 Relation to Other Policy Debates 1 1.3 Types of IPR 1 1.4 Purpose of IPRs 2 1.5 Government Research Policy and IPRs 2

2. Academic Expectations and IPRs 3 2.1 Value of IPRs to Academics 3 2.2 Results of Scientific Research 3 2.3 Traditions of Academic Science 4 2.4 Practical Thrust of Patents 4 2.5 Academic Rewards in the Science Base 4 2.6 Role of Public Presentation 5 2.7 Demands of the Patent System 5 2.8 Search for Greater Compatibility 6 2.9 Campus Technology Assistance: The Beginnings 6 2.10 The British Experience 7 2.11 Content of the Report 7

PART II SCOPE AND OPERATION OF INTELLECTUAL PROPERTY SYSTEMS 9

3. Patent Systems: General 9 3.1 The Basic/Applied Dichotomy 9 3.2 Causes of Expansion of Patentable Subject-Matter 9 3.3 Demands for Contraction 10 3.4 Particular Issues 10

4. Patentable Subject-Matter and Utility 11 4.1 Current Exclusions 11 4.2 Interpreting the Exclusions 11 4.3 Morality: The General Exclusion 13 4.4 Competence of Patent Office Examiners 13 4.5 Reasons for Judgement on Moral Issues 14 4.6 Fundamental Human Rights 14 4.7 Effects of Refusing a Patent 15 4.8 Common Position: Specific Issues 15

(iii) CONTENTS

4.9 Genetic Material Patents 16 4.10 Genetic Material: Alternative Protection 17 4.11 Utility 18

5. Prior Publication: ‘Self Pre-emption’ 19 5.1 Novelty in Patent Law 19 5.2 Self Pre-emption 19 5.3 US Approach: Grace Period 19 5.4 Pitfalls of Grace Period 20 5.5 Need for Information about Legal Rules 20

6. Lack of Rigour in Patent Office Examination 21 6.1 Effect of Inadequate Examination 21 6.2 Patent Plagues 21 6.3 Second-Tier Protection: Recent Developments 22 6.4 Lack of Certainty 22 6.5 An EU Second-Tier Right? 22

7. Disclosure in the Specification 23 7.1 Patent Law Requirement 23 7.2 Patents as an Information Source for Academics 23

8. Exclusion for Research 23 8.1 Patent Law Exception 23 8.2 Problems of Scope 23

9. Electronic Technology: Computer Science, Telecommunications 24 9.1 Role of Academic Science 24 9.2 IP Problems 24 9.3 IP for Computer Programs 25 9.4 Copyright in Computer Programs 25 9.5 Computer Program Copyright: Scope 25 9.6 Wide Interpretation 26 9.7 Restricted Interpretation 26 9.8 Interfaces 27 9.9 Decompilation 27 9.10 Databases: Modes of Protection 28 9.11 Policy for Databases 28 9.12 Preferable Approach 28 9.13 Digitisation 29 9.14 IP Protection of Digitised Material 30

10. Transfer of Technology to Developing Countries 31 10.1 Role of IPRs 31 10.2 Pressures from Industrialised Countries 31 10.3 IPRs under World Trade Sanctions 32

(iv) CONTENTS

PART III EXPLOITATION OF IDEAS FROM ACADEMIC SCIENCE 33

11. The Growth of Industrial Liaison 33 11.1 IP in Research Contracts 33 11.2 Experimental Nature of Development 33 11.3 Concerns for the Future 34 11.4 Informing the Academic Community 35

12. IPRs within Institutions 36 12.1 Ownership Issues in the Past 36 12.2 Rights under The Patents Act 36 12.3 Research Councils and Charities 37

13. IPRs in Academic–Industrial Collaborations 38 13.1 New Tensions 38 13.2 Pragmatic Solutions 38 13.3 Acquiring Licensing Skills 39 13.4 Negotiating Positions 39 13.5 Enforcement of Rights 40

PART IV CONCLUSION 43

14. The Way Forward 43

APPENDIX I – Descriptive Catalogue of Intellectual Property 45 APPENDIX II – Ownership and Exploitation of Intellectual Property 57 Generated in Academic Institutions APPENDIX III – List of Those who Contributed Information 61 APPENDIX IV – Membership of the Intellectual Property Working Party 63 BIBLIOGRAPHY 65

(v) PART I INTRODUCTION INTRODUCTION

1. IPRs AND ACADEMIC 1.2 Relation to Other Policy SCIENCE Debates This growing concern over IPRs 1.1 Prominence of IP Issues is one element in larger debates: In Great Britain as elsewhere, about the changing objectives, intellectual property rights (IPRs) forms and funding of higher edu- are much in the public eye. cation in general; about the place Persistent attention has been of scientific research in univer- given in recent years, for sities; about the increasing inter- instance, to patenting within the dependence and interpenetration framework of the Human Genome of basic research and technolog- project, to the propriety of ical development in almost every procuring animals for experimen- field; about the contribution tation by manipulation of their which this research can and genetic structure, to the protec- should make to new spheres such tion of newly generated computer as biotechnology and information programs, to rights in databases, science; about the ethical and multimedia products and the bur- social issues which these devel- geoning information industry in opments raise. general. The academic community, as a major generator of intellec- It is within the framework of cur- tual property, has special inter- rent change that this report ests in the subject. The issues seeks to isolate and comment range widely. upon the relationship between IPRs and research in the non- There are fundamental questions: industrial sphere. over the general acceptability and scope of IPRs; and over their potentially distortive impact on the 1.3 Types of IPR processes of scientific research. IPRs are an essential part of industrialisation and exist pri- There are practical consider- marily to give developers and ations: What personnel and pro- producers competing in free mar- cedures should be in position for kets the exclusive right to make acquiring the rights? What cond- and distribute products itions should govern a research embodying particular ideas and collaboration with industry or an symbols. outside investor? How should the rights be turned to account – by The various forms of right – sharing in production risks or by patents for inventions, trade licensing? Who should bear the secrets and other confidential responsibility of enforcing the information, copyright, plant rights through legal proceedings? variety rights, rights in semi-con-

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ductor topographies, trade marks an instinct for justice that seeks INTRODUCTION and names – vary considerably to reward a creative thinker for in detail. A basic description of the results of mental activity, by the differences is to be found in some measure of legal protection Appendix I. for those results against imitation in the market-place. It is important to understand that these rights are separate IPRs form a complement to the and each of limited purpose. direct subvention of research by Restricting the scope of any right government, charitable founda- ensures that no person acquires tions and industry, acting as an exclusive legal rights which incentive to investment and effort would unduly inhibit competition at the stage of commercialisation. in the use of ideas.

There is a tendency in the scien- 1.5 Government Research Policy tific community today to use and IPRs ‘intellectual property’ as a syn- The UK government is seeking onym for ‘discovery’ or ‘research ways of increasing the ‘produc- results’. This loose usage may tivity’ of academic research, which suggest that there is some over- it funds directly to a very consid- arching legal right of unspecified erable extent. The Office of scope in information or ideas Science and Technology’s 1993 which ranks as original: this is White Paper, Realising our not so. Intellectual property law Potential, signals not only some in all countries is much more major re-orientations in the selective than that and rightly so. administration of research grants but lays particular emphasis on the encouragement of collabor- 1.4 Purpose of IPRs ation in academic–industrial part- The ubiquity of IPRs in devel- nerships of one kind or another. oped economies, and their consid- An important example is the erable similarity between one Technology Foresight Programme, country and another, stand testi- a systematic process involving mony to their general usefulness industrialists and academics in as legal underpinnings of the assessment of market oppor- industry and commerce. They are tunities and scientific and techno- a particular means of fostering logical developments likely to creativity and financial invest- have a major influence on wealth ment in ideas which will make creation. The Government will economic and social existence draw upon the results of the more efficient, and will add sig- Foresight Programme in setting nificantly to consumer choice. priorities for its own R&D funding. In the White Paper and At the same time IPRs express the publicity for Foresight, there

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is only fleeting reference to IPRs the different rights with varying and the commercialisation of degrees of comfort. In general, INTRODUCTION research results. However, these rights which arise informally on questions are vigorously pursued the creation or transmission of in another, slightly earlier OST ideas (as with copyright and Paper, Intellectual Property in the trade secret protection) har- Public Sector Research Base. This monise more readily with acad- argues that universities and gov- emic attitudes than rights ernment research institutes must which are acquired only by adopt internal policies which will timely application to a govern- ensure that, whenever possible, ment office (as with patents, the commercial potential of registered designs and plant research will be identified and variety rights). promoted. Thus copyright law protects not The two Papers clearly involve only against commercial piracy but complementary policies. But the also against the prime academic potential for strain between sin of plagiarism (which adds to them undoubtedly exists. It is a infringement the insult of misat- major concern of this Report. tribution). At the same time the law contains exceptions which allow for quotation from works in 2. ACADEMIC EXPECTATIONS the process of reviewing and criti- AND IPRs cising them – a crucial academic activity; and within limits there 2.1 Value of IPRs to Academics may also be free private copying, Academics, whatever their discip- notably for private study or line, have long benefited from research. IPRs. There has been copyright in their writings and similar works, including films and audio- 2.2 Results of Scientific Research visual productions. There have Patents for inventions seek to been patents for their inventions induce those who have made where these can be turned to inventions to reveal them as commercial account. The law also rapidly as possible by giving protects information which has rights to the first-comer. (In the been supplied in confidence and UK and most other systems the this can be relevant to academic first to apply is entitled to the work. patent grant. The US is the exception, applying a cumber- Traditionally academics have not some first-to-invent rule.) shown much interest in shaping Thereafter, even those who make intellectual property laws. the invention independently are Accordingly their working prac- obliged to respect the patent. tices and expectations have fitted

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One pre-condition, however, is trial laboratories and govern- INTRODUCTION that no one, including even the ment research establishments. first applicant, has previously revealed the invention or some- thing similar to the public. This 2.4 Practical Thrust of Patents requirement of the law fits ill Reflecting essentially the same with academic needs and calls dichotomy, scientific work in for further exploration (see fur- industry has been centred on the ther below, Sections 2.7 and 5). production of knowledge of mani- fest commercial or social value. This is often organised around 2.3 Traditions of Academic the patent system, whose scope Science is limited to practical applic- Traditionally the institutional ations of scientific knowledge. separation of universities from government and industry has By law, patents are available for ensured that academics decide ‘inventions’ but not for ‘discov- what scientific research they will eries’ and ‘scientific theories’; a do. This freedom has always been patent specification has to show subject to the task of obtaining some measure of practical useful- resources for the equipment and ness, or capacity for industrial staff needed to carry it out. application – the language has Generally speaking, however, varied from country to country, academics have set their own and the meaning to be attached agenda, often with generous, to these general expressions may unfettered support for well-con- be difficult to settle (see further ceived projects from both the below, Section 4). public and private sectors.

Motivated by personal curiosity, 2.5 Academic Rewards in the institutional norms and the Science Base desire for professional advance- Although the distinction between ment, their interests are centred pure and applied has now on the unexplored areas and become much less sharp, most unexplained basic problems of university scientists are still their subjects, where a signifi- deeply involved in academic sci- cant discovery can attract the ence. This is undertaken in an acclaim of their peers. This international arena which has acclaim has not in the past been little to do with the extraction of readily accorded for the practical commercial value from research. application of scientific knowl- Individuals and research teams edge, which has been regarded as compete even more strenuously a relatively mundane activity, than in the past for the tangible undertaken at some remove from and intangible rewards of coming the academic sphere, in indus- first with a scientific discovery.

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Quite apart from the personal is a necessary condition for any qualities and technical skills that system of personal recognition INTRODUCTION this competition requires and for scientific excellence. engenders, society gains im- Academic scientists are thus sub- measurably from the inspired ject to a highly competitive and critically tested knowledge system of quality control, which that emerges from it. provides the framework for innu- merable well-established proce- Nobody – least of all govern- dures, from the peer review of ments responsible for the long- papers and grant applications, term welfare of their nations – and the obligation to cite earlier should doubt the ultimate benefit work, to the award of Nobel of a healthy, vigorous science Prizes. base, engaged primarily in the search for knowledge without regard to its immediate practical 2.7 Demands of the Patent System utility. As already stressed, established academic procedures are by no means totally incompatible with 2.6 Role of Public Presentation the grant of corresponding IPRs By its very nature, academic sci- through the patent system. In ence is ‘public knowledge’. This is both cases, public disclosure of not just a sentiment in favour of valuable knowledge is the major the supposed good of mankind at objective. But the patent system’s large, rejecting the notion of requirement of initial secrecy turning potentially beneficial often operates in direct conflict knowledge to personal advan- with the academic norm of full tage. Basic science depends for and prompt publication. For its validity and reliability on the example: speedy, widespread dissemination of novel research results, so – While restraint on publication as to expose them immediately to is needed only until patent critical analysis and hoped-for applications have been drafted acceptance. This is the only way and filed, delay could critically of purging them of errors and affect scientific priority; misconceptions. – Even when the urgency is less For all their personal rivalries, acute, the two modes of and occasional secretiveness in disclosure may be quite out of the race for priority, academic synchronism, with the natural scientists are unanimous on the phasing of research papers importance of publishing new seriously disturbed by the data and theories as soon as they demands of patenting; can be presented as sound and convincing. Indeed, this openness – There may be know-how

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surrounding a patented Some reasonable accommo- INTRODUCTION invention which scientists dation has to be reached would normally expect to between the traditions of sci- make available to their entific research and turning colleagues – including even results into applications potential rivals – but which which are both socially from a commercial perspective useful and a source of rev- ought to be kept secret even enue. The need for this accom- after patents are applied for. modation is the greater in those fields where the gap between Faced with such conflicts, many basic and applied research has academic scientists retain a pref- ceased to be perceptible. This is erence for early publication. In so, for instance, in computer sci- particular, since the process of ence and communications tech- deriving commercially viable nology and, above all, in medical products from basic research is research. often so long, uncertain and expensive, they may well reckon (out of hard experience or other 2.9 Campus Technology good reason) that such prospects Assistance: The Beginnings lie beyond their concern. Thirty years ago and more, leading US universities began to establish campus units for the 2.8 Search for Greater industrial exploitation of research Compatibility results. These units provided These objections to the wide- expertise in obtaining IPRs and spread intrusion of the patent then in finding industrial and/or system into academic science are financial partners for exploitation not ill-founded. They derive from of the protected ideas. In a few the basic preoccupations of scien- cases, the results bore remark- tific endeavour and from the way able fruit. In more there was a that the science base is organ- substantial, if not an over- ised. They cannot be dismissed whelming, return. It became today as anachronistic; they will accepted practice, by way of continue to recur. Yet universi- encouragement and out of a sense ties and research institutes of what was fit, that profits of everywhere are now under pres- exploited inventions, after deduc- sure to become less dependent on tion of the development costs, fell traditional forms of public to be divided between institution funding. The cost of much scien- and inventors, often with a share tific research is accelerating also going to the department con- rapidly and the competition for cerned. grants from all sources is becoming ever more acute.

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2.10 The British Experience arrangements about sharing in The US model has now been the proceeds of exploitation for INTRODUCTION taken up in many parts of the individual researchers and their world, developing as well as departments. This is leading developed. In this country, from increasingly to more vigorous the late 70s onwards, it has led examination of commercial to the setting up of Industrial prospects arising from the work Liaison Offices (or now, more of universities and research units purposefully, Technology funded by government and chari- Transfer Offices) in universities. ties. (We return to this subject in Part III below.) Britain has been notable for another development. Since as long ago as 1947 the National 2.11 Content of the Report Research Development Against this background the Corporation had been the body issues particularly addressed in through which exploitable results the ensuing Parts of this Report from government-funded are the following: research had to be channelled. After more than 30 years of suc- Part II assesses the impact on cessful operation, the academic research of present and Corporation was restructured as future regimes of intellectual the British Technology Group, property. For the most part it and its monopoly position was concentrates attention on patents removed. It has since been com- for inventions because of the dif- pletely privatised. ficulties already mentioned. The copyright system and adjuncts to Universities and similar insti- it will be dealt with only in so far tutions have been expected to as they extend to new technical establish their own policy for applications, notably computer encouraging and organising the programs and databases. exploitation of research results. They must ensure that the neces- Part III considers how far acad- sary IPRs are acquired, using emic institutions are dealing whatever professional assistance with IPRs in an effective manner, seems appropriate. As part of given the need to respect the tra- this process, the rights have been ditions and objectives of those acquired by, or assigned to, insti- institutions. tutions, in return for settled

PART II: SCOPE AND OPERATION OF SCOPE AND INTELLECTUAL PROPERTY SYSTEMS OPERATION OF INTELLECTUAL PROPERTY 3. PATENT SYSTEMS: Equally it has been proposed SYSTEMS GENERAL that the strict obligation to publish an invention in the 3.1 The Basic/Applied Dichotomy patent specification for it In recent years there has been should be alleviated; the noticeable willingness to roll the specification should act only frontier of what may be patented as notification of the person back into the area of basic dis- to whom application may be covery. It is a matter of shifting made for more information boundaries, not of wholescale and a licence. annexation of common land. No one is proposing patents for theo- These proposals have been retical perceptions at fundamental made in the belief that the levels. Nonetheless the movement incentive effect of the patent is strong enough to deserve system should be rendered careful monitoring, not least from even sharper. an academic perspective. (ii) Courts have recognised that to allow patents in some 3.2 Causes of Expansion of cases and refuse them in Patentable Subject-Matter others must have the effect The following factors all con- of canalising research in tribute to the interstitial expan- ways which are not self- sion of patent systems: evidently desirable. They have accordingly been (i) Some theoreticians of intel- willing to cut back the scope lectual property have argued of the exceptions to what is that patents should be avail- patentable. able at an early stage in the process from initial discovery The trend was famously to the working out of prac- marked by the Supreme tical consequences, because Court of the United States the financial incentives in its 1980 decision which follow from the protec- (Diamond v. Chakrabarty) tion will bring readier invest- admitting a patent for a ment to the development novel microorganism capable process. Patents have been of eating up oil-slicks: the likened to a mining licence, a Court considered that ‘any- right to explore a tract for its thing under the sun’, apart hidden resources, free from from a human being, was the debilitating dangers of patentable, provided that it rival prospecting. satisfied the statutory

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SCOPE AND criteria of novelty, non- stems from the treatment OPERATION OF obviousness, usefulness, etc. received from the official INTELLECTUAL examiners and appeal PROPERTY There has been a similar boards of the EPO, as well SYSTEMS European trend. The as from such factors as European Patent Convention speed of processing and (EPC) of 1973 defines a relative cost. number of exceptions to patentable subject-matter. (These are mentioned below, 3.3 Demands for Contraction Section 4.) In deciding upon In the past there have been tides applications to it, the of expansion within patent sys- European Patent Office tems which have led to counter- (EPO) has adopted a currents of contraction. The chief presumption that these force for the latter has come from exceptions should be read those in industry who feel them- narrowly, so as to allow selves unduly checked or con- patents in border areas, fined by patentees. Their rather than refuse them. arguments point in particular to cases where there has been no (iii) A separate factor affecting sufficient justification for the the Western European grant or where the holder of a situation is that there are strategic patent has blocked off now competing systems for further developments by others. the granting of patents. In The scope of patent systems is 17 countries, applicants may always in flux as the search goes choose whether to proceed on for optimal effectiveness. through national Patent Offices as of old, or to secure their grants by a single 3.4 Particular Issues application to the EPO in From the perspective of academic Munich. Inevitably the com- science, there is reason to peting offices adopt an examine carefully whether the attitude of helpfulness drive in favour of greater protec- towards their primary tion now needs to be contained. clients, the applicants. The This involves a number of sepa- effects of this cannot easily rate issues, grouped below under be measured but that is no five headings: reason for ignoring it. (i) Patentable subject-matter The European granting and utility system has proved a success beyond the expectations of (ii) Prior publication: ‘self many. One part of this pre-emption’ satisfaction undoubtedly

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(iii) Lack of rigour in exploitation of which are con- SCOPE AND examination trary to ordre public or morality’. OPERATION OF However, more by way of objec- INTELLECTUAL (iv) Disclosure in the tion must be shown than that PROPERTY specification exploitation is prohibited by law SYSTEMS or regulation in some or all of the (v) Exclusion for research participant states.

4. PATENTABLE SUBJECT- 4.2 Interpreting the Exclusions MATTER AND UTILITY US patent law does not exclude bands of subject-matter from the 4.1 Current Exclusions scope of patentability by statutory The patent systems of Western listing. What is within that Europe currently exclude from patent system and what outside, their scope a number of cate- is left for judicial decision. At pre- gories of subject-matter. Among sent, as we have seen, ‘everything these, some reflect a division under the sun’ is open for consid- between basic and applied eration and given a fair wind. research – for instance, the exclusion of ‘discoveries, scien- The European exclusions have tific theories and mathematical been subject to constant criticism methods’. Others express a as the course of mainstream sci- rather difficult set of distinctions ence has shifted so rapidly. It is about the manipulation of living thought to be difficult to amend matter: methods of treating the the text of the EPC directly, since human and animal body are this would involve convening an excluded, while pharmaceutical Inter-Governmental Conference. compositions and substances are The EU is currently seeking to within the net; plant and animal procure changes to the alterna- varieties, together with essen- tive national systems of patent tially biological processes for the law of its Member states, since production of plants and animals these can be enacted by are excluded; however – excep- Directive. The hope is that, in tion to the exception – microbio- the light of such a Directive, the logical processes or the products EPC would be read by tribunals thereof remain patentable. and judges in the same sense. Protection of plant varieties is However, the draft text of the available, in many countries proposed Directive on Rights in including the UK, under a spe- Biotechnological Inventions is cial, carefully delineated regime. the subject of fundamental dis- agreements about the morality In addition there is a ‘long-stop’ and safety of biotechnological provision excluding patents for research and it is quite unclear inventions, ‘the publication or how these tensions will be

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SCOPE AND resolved. The Common Position of animals will be OPERATION OF of the European Commission and unpatentable if they are likely INTELLECTUAL Council of Ministers, which has to cause them suffering or PROPERTY yet to be agreed with the physical handicaps without SYSTEMS European Parliament, was pub- any substantial benefit to man lished late in 1993. or animal; otherwise they will be patentable. The Common Position proposed the following main changes to Beyond these exceptions on the present concept of patentable grounds of public policy or subject-matter in the EPC (as set morality, there are also to be pro- out in Section 4.1): visions which narrowly restrict the exclusion from the patent The concept of inventions which system of plant and animal vari- are contrary to public policy or eties, and the exclusion of the morality, is to be understood by essentially biological production reference to the following distinc- of plants or animals. Moreover, tions: methods of medical treatment of both humans and animals will – (Distinction 1) inventions continue to be excluded; but so concerning the human body or far as concerns animals, inven- its parts are not to be tions of which a method of med- patentable; but patents are to ical treatment forms only one be available for inventions part are to become patentable. relating to genetic, cellular or other material isolated from These proposed changes, broadly the body; speaking, will increase the relevance of patenting to the results – (Distinction 2) processes for of biotechnological research, thus modifying genetic identity of contributing to a climate in the human body will be which biotechnology can flourish unpatentable if they are as a European industry. We contrary to the dignity of man accept the general direction (a phrase which seeks to of this policy and, therefore, distinguish between genetic the tenor of the proposed change which eliminates or rules. At the same time we relieves a condition such as are aware, as anyone cystic fibrosis, and a change addressing the subject must aimed – to take some recent be, of the highly controver- examples – at skin, hair or eye sial potential of some colour or at sexual orientation biotechnological develop- in a human embryo); ments and of the need to proceed with all attention to the – (Distinction 3) processes for moral, social and environ- modifying the genetic identity mental consequences of prac-

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tising some of the techniques However, in our view restric- SCOPE AND and results. In a field where tion of patenting on grounds OPERATION OF few solutions at present seem of ‘ordre public or morality’ INTELLECTUAL self-evident, we offer the fol- serves a useful purpose. It PROPERTY lowing comments on the gen- rules out the prospect of SYSTEMS eral desirability of excluding patents for inventions which patents on grounds of public would be uncontroversially policy or morality, and also harmful and does so in gen- on some of the specific excep- eral terms which recognise tions proposed in the that the character and cate- Common Position version of gories of such inventions the draft Directive. cannot be specified in advance. It thus gives a signal about the relevance of 4.3 Morality: The General moral considerations, which Exclusion is both symbolically and All scientific progress raises practically helpful for scien- questions of ‘ordre public or tists thinking of research in morality’. Nonetheless it is relation to its commercial argued by some that the EPC is applications. not the right forum for them. One line of argument is that matters of public morality have 4.4 Competence of Patent become so firmly political, as Office Examiners advanced societies grow more Less abstractly, it is frequently plural and secular, that they can objected that patent office exam- no longer be addressed in iners have no training by which abstraction from the varying to make moral, as distinct from political processes of the states technical, judgments. This, how- which are party to the ever, is not sufficient reason for Convention. Hence patents removing the present provisions should be granted or withheld from the Convention and the solely on technical grounds, and national laws which are based decisions whether to forbid upon it. experimentation or use left to public bodies with responsibility It is sometimes forgotten in the for health, safety and medical debates on the subject that the ethics. Another line with the examiners are only the first same conclusion might be, that stage in decision making. For science is in itself morally neu- instance, from the EPO exam- tral, and that considerations of iners, a disappointed applicant freedom and progress combine to may proceed to an Appeal Board. favour the separation of the Once an application is granted, growth of knowledge from moral outside objectors may argue the debate about its proper uses. moral objection in opposition pro-

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SCOPE AND ceedings before the EPO’s that fewer mice would be needed OPERATION OF Opposition Division (again with for experimental work than under INTELLECTUAL a right of appeal). And since, at previous regimes. These factors PROPERTY this stage, the European grant were held to outweigh the pain SYSTEMS multiplies into a set of national which the mice were ordained to patents in the various states des- suffer, or any possible environ- ignated in the application, moral mental danger. Other similar objections may be raised before patents have been allowed, while the appropriate tribunals of each by contrast the EPO indicated state as to the validity of the that it would not accept an appli- patent in that country. cation where genetic manipulation of an animal was for research into It is right that, where pos- the restimulation of hair-growth sible, the issue should be set- in the bald. tled for the EPC territories as a whole. At the same time, scope is properly left for dif- 4.6 Fundamental Human ferent moral attitudes, Rights reflecting differences in rel- The pragmatic and constructivist igious teaching or culture, to approach described above may be be expressed by national criticised for failing to grapple authorities. If the price is that with ideas of fundamental right. occasionally inventions prove We consider that it would be a to be patentable in only some mistake to expect moral de- parts of the EPC net, that is a cisions about the granting of price worth paying. patents to be grounded independently of the evolution of a con- sensual morality among the 4.5 Reasons for Judgement on Member states. Indeed it has Moral Issues been strongly argued that the There needs to be a continuing morality exception in the EPC debate about how those who must should operate by reference to judge the morality of an invention the rights guaranteed in the should make their assessment of European Convention on Human the issue. In the Oncomouse case Rights. This Convention, how- (mentioned in Section 4.8(3) ever, does not expressly confer below), the Examining Division of rights either on inventors or on the EPO made a ‘common-sense’ animals. Further consideration of assessment of advantages and dis- the issue within this frame of advantages: the invention was to reference, therefore, becomes a increase the efficiency of experi- matter of implication, and is ments into the causes and allevia- inherently likely to reflect the tion of cancer in humans, a highly opinions and feelings of the de- desirable object in the relief of cision makers, the very difficulty human suffering; it was also said which a rights-based approach seeks to avoid.

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4.7 Effects of Refusing a Patent 4.8 Common Position: Specific SCOPE AND Discussion of the merits of an Issues OPERATION OF ‘ordre public or morality’ test is Turning to the specific proposi- INTELLECTUAL complicated because refusal of a tions in the Common Position PROPERTY patent does not mean the with- version of the draft Directive, we SYSTEMS drawal of the invention. On the would refer to Distinctions 1, 2 contrary, although it may act as and 3 in Section 4.2 above. a deterrent to expenditure on some related research and devel- 1. Inventions concerning the opment, the publicity may also human body, and its parts as draw attention to an invention distinct from material isolated for which no monopoly right is to from it. This distinction be granted. In consequence appears to be practically knowledge and use of the idea tenable and one which may actually spread. Hence leg- differentiates at a point which islatures still need to consider would be widely accepted in whether its use should be academic and industrial directly prohibited or strictly reg- circles but there is ulated. An outcome where an considerable concern at invention is granted a patent suggestions that inventions and then regulated will often based on materials isolated be entirely appropriate, espe- from the body should also not cially if only some of the pos- be patentable. sible uses are a matter of moral objection. 2. Processes for modifying genetic identity of the human Meanwhile, a different sort of body. This distinction uses the question about the practical imprecise phrase ‘contrary to effects of a refusal of grant arises the dignity of man’ in order to where countries not party to the differentiate between forms of Convention have a different prac- genetic change which are, and tice. Researchers are most likely are not, to be regarded as to be influenced by the state of proper and, therefore, patent law in their home territ- patentable. The issues ories. Accordingly the greater addressed are likely to be readiness of American courts to subject to changing grant genetic patents sets a perceptions as the technology problem for European science advances and its potential for and industry. This may be one benefit and harm can be more reason for applying the ‘ordre completely assessed. The public or morality’ exception only formulation does no more than in a clear case, but it is not in indicate that some changes in our view a strong enough objec- genetic identity of humans tion to merit abandoning the must be accepted as beneficial, exception altogether. and, therefore, if inventive,

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SCOPE AND patentable; there is no general In the US, despite these OPERATION OF exclusion. We accept this, and factors, the relevant patent INTELLECTUAL likewise the proposition that was granted with despatch. In PROPERTY national or european authori- the EPO, the application was SYSTEMS ties should not grant patents initially rejected. But after an for inventions of this type appeal which referred the which are for morally un- matter back for further acceptable purposes. The consideration on somewhat grant of a patent is after all equivocal grounds, the patent not a neutral act. It confers a has been allowed to proceed to legal privilege which is grant. However, it is subject to specifically designed to opposition proceedings from a encourage both the making considerable number of and the exploitation of the determined opponents. protected invention. Patent systems cannot simply put the The proposed formula would question on one side for others express the factors which the concerned with medical and EPO has so far found relevant social ethics to decide within a in judging the moral propriety different framework of legal of the particular invention regulation. The language in claimed. We are sympathetic the Directive adequately to that approach and, there- expresses the intended fore, support the proposal. At purpose. the same time we appreciate that future cases are likely to 3. Processes for modifying the raise quite different moral genetic identity of animals. issues. These will push This distinction has come into tribunals back to consider- prominence because of the ations which are not expressed application by Harvard in the legislation in any form, University to patent its however, vague. The main ‘Oncomouse’ – the mouse danger of developing listed genetically manipulated to Distinctions is that they draw generate cancers readily for upon case-law of the time. So research purposes. To this long, however, as the list is not creation, two relatively specific taken to be absolute, this moral objections have been objection does not appear an raised: against the suffering overriding one. imposed upon animals genetically manipulated precisely so that they may 4.9 Genetic Material Patents develop cancer; and against When it comes to specific appli- potential environmental cation of the general exclusions hazards which could arise if from patentability, there is con- the animals were to escape. siderable scope for differences of

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view. It is then that the current difficulties, since those who SCOPE AND tendency towards expansion of uncover sub-sequences or OPERATION OF the system may exert itself. sequences will be under pressure INTELLECTUAL not to contribute them to rele- PROPERTY To take one prominent contro- vant databanks until they have SYSTEMS versy: the question of patenting investigated potential applica- has injected into the Human tions. The caution is neverthe- Genome Programme a disturbing less justified: patents should distraction which was ignored at not be allowed on discoveries the time when the original great because exclusive rights collaboration was put into oper- might well be conferred on a ation. Once the possibility was range of practical applica- addressed, patents were tions, the scale of which has arguably available (particularly not even begun to be uncov- within the US patent system) for ered. That is too large a risk the identification of short sub- to introduce, even though a sequences of DNA. Accordingly a patent might induce more number of applications were filed extensive work at greater – from the US for the research speed on the practical conse- undertaken for the National quences suggested by the Institutes of Health, and from discovery. the UK (by way of protective reaction) for results from Medical Research Council laboratories. In 4.10 Genetic Material: Alternative this instance the US Patent Protection Office indicated an initial reluc- Suggestions are currently being tance to accept the particular made that some lesser form of claims being proffered; and both protection should be introduced, the American and the British which would give limited rights sets of applications were subse- over the discovery of genetic quently withdrawn. But this has information, when that inform- only put the issue to one side for ation is subsequently put to com- the moment. mercial use. What is proposed appears to be a non-exclusive The scope of patent law on the right to equitable remuneration issue of genetic material has not for such an application of the been definitively settled in any information. Various descriptions country. We would hope that it have been offered: a ‘copyright’, a can be resolved soon. The pres- right subject to compulsory ent rule excluding mere dis- licence, and so on. coveries should be read as disallowing patents for DNA The purpose of the proposal is to sub-sequences which have no secure some return to those who known practical applications. have produced results from It is an approach not without its expensive experimentation, while

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SCOPE AND not putting them in a position to it reasonably likely that the OPERATION OF prevent practical deployment of researchers, or some organi- INTELLECTUAL the information. It is hoped sation connected with them, PROPERTY thereby, to induce researchers to will have the resources and SYSTEMS publish results, when otherwise determination to see to they would be tempted to keep enforcement? The law should them secret. The object is cer- not introduce rights in tainly meritorious and response to vague hopes of deserves further consider- action. If they are in practice ation. But before such a right ignored, respect for law in could be introduced, its prac- general suffers. ticality would have to be the subject of hard-headed examination. 4.11 Utility A distinct concept for limiting There are two obvious issues: the scope of patents to subject- matter which has a practical First, if the right is to be one application, though one closely for equitable remuneration, related to some of the exclu- it ought not to be necessary sionary categories just men- to have the level of royalty or tioned, is to require that utility other payment settled before be claimed for the invention in the information can be used. issue. The present US patent law Experience in this country with applies a test of practical useful- the compulsory licensing of ness. The EPC, however, is less patents (particularly of pharma- specific, since it requires only ceutical patents under the law that an invention be ‘susceptible before 1977) indicates that the of industrial application’. This need for preliminary permission may be read as indicating only can induce tactics aimed at long that any type of industry suf- delay and expense. Even if the fices, and that this includes agri- law requires a payment which culture (the Convention says so may be fixed after the event, specifically). there may be complex issues about the rate of royalty, if it is In our view a separate left to be settled case by case. It requirement of utility should would be important to arrive at be introduced into the EPC. simple formulae. As with the concept of ‘discovery’, one consequence of this would be Secondly, IPRs are only signifi- to leave in the sphere of basic cant to the extent that they discovery the isolation or are enforced; users then analysis of the structure of com- know that they must pay up pounds, including the basic or face the costs of successful structures of genes, so long as no proceedings against them. Is practical application of this

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knowledge can be demonstrated. 5.2 Self Pre-emption SCOPE AND The impact would be to confine It is from the requirement for OPERATION OF the sphere of patents to work novelty that the danger of ‘self INTELLECTUAL which had been carried far pre-emption’ arises. In academic PROPERTY enough to show practical results, circles in particular, the desire SYSTEMS for instance, by producing sub- and need to present research stances or establishing processes results to peer groups may lead for their production which have a to a presentation being made or a novel pharmaceutical use, paper being published before the including uses in testing and priority date of one or all of the analysis. This would preserve a patents which might relate to its reasonably acceptable line of content. This hazard will not demarcation at a position where arise if a presentation is made recently there has been consider- only to those who undertake to able doubt and serious concern. treat what they learn in confidence. But it is often complicated to ensure that all participants 5. PRIOR PUBLICATION: knew about this condition and ‘SELF PRE-EMPTION’ should have accepted it. If evi- dence of this cannot be produced 5.1 Novelty in Patent Law later, the consequent patents will It is a basic rule of patent laws be in jeopardy. And in any case, that the invention concerned the dilemma will remain, since must be novel. Novelty is meas- presentation to a restricted peer ured at the priority date of the group – especially under condi- patent, which will normally be tions of confidentiality – may well the date on which an application not establish priority in discovery is made for protection in a Paris from an academic perspective. Convention country. (To take advantage of the Convention’s provisions, it is necessary to 5.3 US Approach: Grace Period follow an initial application in In US patent law, the danger of one of the countries, by applica- self pre-emption is modified: tions in those other countries those who make inventions where protection is wanted, public and then apply within within a twelve month period.) twelve months to patent them Novelty is assessed, as is the are not treated as having jeopar- related requirement of an inven- dised their position. It is impor- tive step, by reference to ‘the tant to recall a complementary state of the art’. In many coun- factor in US law: that the patent tries, including Western Europe, goes to the first to invent, rather this means everything that is than the first to file an applica- published or publicly known (e.g. tion. One proposal currently through practical use) anywhere being discussed is for the intro- in the world at the priority date. duction of a grace period in European patent law. In part this

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SCOPE AND is a negotiating stance: a grace publication organised. This OPERATION OF period would only be adopted if would do much to reduce ten- INTELLECTUAL US law were amended so as to sions, though it cannot do PROPERTY introduce the more straightfor- everything. It should be pos- SYSTEMS ward first-to-file approach. sible in the interim period to submit material for consideration by journals. If it is 5.4 Pitfalls of Grace Period made clear that a submission A grace period has some attrac- is confidential, editorial tion as a moderating device in policy should be that mat- the academic sphere. But, it has erial is passed to reviewers been strongly argued that it only under equivalent terms would necessarily add to the of confidence. uncertainties and costs surrounding the business of patenting. If a person wants to 5.5 Need for Information about know whether he is free to make Legal Rules an article or use a process, an A grace period will not neces- adviser has to look not only at sarily cover those cases where the actual patents and applic- scientists move towards the solu- ations of others but also at tion of a problem by meeting to research reports from which discuss work in progress. It can patents might be generated of course happen that during within the grace period. such discussions a piece of information that later proves crucial Such an exception to the ordi- is revealed. It is hard for scien- nary requirement of novelty is tists to appreciate how, in the accordingly two edged and we tough commercial disputes which doubt whether it should be intro- surround successful patents, a duced as a way of dealing with chance remark (or whatever evi- difficulties over publication in dence is later available of a academic life. If a grace period chance remark) can assume cru- has to be introduced, then it cial significance before a patent should be limited in term to a tribunal. But objection to the few months at most. novelty of a patented invention may hang on a single instance of The best way of tackling the prior revelation, a rule which is academic problem is followed in order to avoid any undoubtedly to get efficient qualitative assessment of ‘suffi- machinery in position for cient’ revelation to others. acquiring patents. This should work through the ini- The patent law rule is unlikely to tial stages so rapidly that change and its consequences applications can be made in have to be faced. It will add to the time that it takes to get the reasons for less frank and

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collaborative attitudes in acad- the patent office before any SCOPE AND emic science. The best hope of grant can be made – a OPERATION OF accommodation lies in informing process which is at its INTELLECTUAL scientists about the need for con- toughest if the prior PROPERTY fidentiality in disclosures that examination deals not only SYSTEMS they make. If they can make it with novelty but also with clear that they are discussing inventive step. their work under conditions of secrecy, and they keep a clear record of what they said, they 6.2 Patent Plagues are likely to be able to preserve The US, the EPC and some their ability to patent later national systems in Western results. Europe have a pre-grant examination which extends to inventive step. But, as already noted, 6. LACK OF RIGOUR IN PATENT complaints are now widespread OFFICE EXAMINATION that nonetheless, on both sides of the Atlantic, patents are granted 6.1 Effect of Inadequate too readily. Examination If patents are too readily avail- In fields such as electronics, par- able, industries are beset with ticular technologies now swarm patentees who assert dubious with patents on very minor rights. Either the validity of advances. Industries find it diffi- their patents has to be chal- cult to handle such clouds of lenged in legal proceedings or prior rights and there is a great they have to be bought off. temptation to ignore them all and hope that no belligerent It has been in such periods in the emerges who is truly expensive past that business opinion has to buy off. hardened against patents. Contraction has then occurred If that is the difficulty in through various measures, of industry, then it poses an even which two stand out: graver threat for the academic sector as it seeks to turn its (i) there has been added to the applied work to commercial requirement of novelty a account. For it remains a world separate test of inventive at some remove from the cut- step, asking whether the and-thrust of industrial invest- alleged invention represents ment and it may prove relatively some unobvious advance easy for aggressive, but not nec- over the state of the art; essarily deserving, patentees to force academics into submission. (ii) a substantive examination of The European patent system applications takes place in was designed to provide

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SCOPE AND prompt and adequate place before the right is OPERATION OF screening of applications granted. INTELLECTUAL before grant. Patent offices PROPERTY and appellate tribunals must SYSTEMS ensure that this examination 6.4 Lack of Certainty process remains scrupulous. A second-tier right is thus cheaper and quicker to obtain; but the validity of any grant has 6.3 Second–Tier Protection: not been tested in advance. It is Recent Developments this lack of certainty which has There is an allied matter. been the principal reason why Various Western European states the British government, strongly have added to their patent sys- supported by much of British tems a separate, ‘second-tier’ industry, has not so far been form of protection for technical willing to introduce such a novelties. The protection, some- system for this country (even times labelled a petty patent, though a registered invention sometimes a utility model, varies system was suggested in the somewhat from country to Cabinet Office paper, Intellectual country. There is some such Property and Innovation scheme in all EC states except (Nicholson Report), 1983). three. Of these the Netherlands is contemplating a change, while only Great Britain and 6.5 An EU Second-Tier Right? Luxembourg so far are not. There is now a movement to create a second-tier right for the All the schemes have three EU as a whole. From the per- common characteristics: spective of the academic community, it is far from clear that its – protection is given for a interests overall will be fostered shorter term than for a normal by the appearance of a phalanx patent: typically for 6–10 of short-term, unexamined rights years from application; in alleged inventions. The effect can only be to add more claims to – registration is required, a part the growing range of rights being of which is the submission of a granted under patent systems. specification of the idea to be In our view, on balance, the protected, which will become interests of the academic public information; community would not be well served by the introduction of – no examination of the validity a second-tier system. of the subject-matter takes

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7. DISCLOSURE IN THE changes in the requirement SCOPE AND SPECIFICATION of disclosure so as to allow a OPERATION OF patentee merely to give INTELLECTUAL 7.1 Patent Law Requirement notice of the kind of inven- PROPERTY Patent systems at present tion which he has available. SYSTEMS require that the invention for The area of difficulty is not in which protection is sought should the ultimate requirement of be described in the patent specif- patent publication, but – as has ication so as to reveal its essen- already been discussed – in the tial elements. It must tell skilled initial need to keep even one’s research workers in the field in own inventions confidential question what they need to know until all patents have been in order to be able to make or applied for. carry out the invention themselves. They can be assumed to have considerable general knowl- 8. EXCLUSION FOR RESEARCH edge, but it is not only to the leaders of a forefront research 8.1 Patent Law Exception team that a specification is taken In UK patent law, and the laws to be addressed. of many Western European countries, it is not infringement of a patent to perform the protected 7.2 Patents as an Information invention for private, non-com- Source for Academics mercial purposes or for experimental purposes related to the Some academic researchers subject matter of the invention. derive considerable benefit The latter exception means that from monitoring new patent further research may be under- specifications, as do their taken by anyone without any counterparts in industry. licence from the patentee, pro- There is a case for examining vided that it is aimed at whether the need of the acad- extending scientific or technical emic community for access to knowledge in the sphere of the this material is adequately invention and is not, for met. Various networks now make instance, designed to enhance a great deal of patent information the experimenter’s use of the accessible: for instance the British invention itself once the patent Library’s Patent Express, the uni- expires. versities’ Janet/Superjanet network and commercial networks such as Dialogue. The question is, 8.2 Problems of Scope therefore, largely one of cost. Conditions in some spheres now raise considerable difficulties It would conflict with this about the scope of the above interest to introduce exception. For instance, in med-

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SCOPE AND ical research, if a patented sub- 9. ELECTRONIC TECHNOLOGY: OPERATION OF stance or composition is being COMPUTER SCIENCE, INTELLECTUAL examined for new therapeutic TELECOMMUNICATIONS PROPERTY applications, it will have, at SYSTEMS some stage, to be tested on 9.1 Role of Academic Science patients, perhaps on a substan- In the many spheres of elec- tial scale. tronics, technologies are advancing at remarkable speed. Is this form of testing an ‘exper- Academic research is playing a imental purpose?’ If it is not, significant role in this expansion. and, therefore, needs a patent There are myriad opportunities licence to make and administer for collaboration between non- it, should the full monopoly industrial researchers and potential of the patent be quali- industry at the forefront of devel- fied by making the situation one opment. It is in these fields that for which a compulsory licence much academic technology is is available on officially set being successfully transferred. terms? Some of it – particularly computing applications – can be Not surprisingly research-based undertaken with relatively low pharmaceutical companies con- levels of investment. This typi- sider this solution likely to be fies the sort of venture which counter-productive. It is spins off from universities into nonetheless a solution which science park enterprise. Equally, public authorities are likely to university ILOs find it relatively contemplate if it can be shown straightforward to market such that right-owners are using technology to industrial patent powers substantially to licensees. hinder useful research.

Particular instances could even 9.2 IP Problems today be tackled by way of a The extraordinary speed and reference to the Monopolies and range of current developments in Mergers Commission and conse- electronics are producing their quent action under The Patents own upsurge in claims to intel- Act 1977, s.51. If the practice lectual property. This is notice- were to become serious and able particularly in the growth of persistent we would support patents in those parts of the field an amendment to the law where this form of protection is extending the compulsory open. It is an area in which licensing powers under The many of the questions already Patents Act, s. 48. addressed in this Part of the Report are especially germane.

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Two particular problems will be property protection. In most sig- SCOPE AND raised here. The first concerns nificant countries, copyright laws OPERATION OF the recent development which have now been amended so as to INTELLECTUAL gives prime protection to com- include programs explicitly PROPERTY puter programs through copy- within the category of ‘literary SYSTEMS right. The second concerns the works’. This applies to the initia- increasing importance of data- tory, source-code stage of banks and the need to protect designing a program, when the the considerable investment work is readable by human per- which goes into their creation. ception and resembles mathematical and other logical For the future there may be a statements which have long been third problem, between the two regarded as ‘literary works’ for mentioned above – e.g. for the copyright purposes. process of navigation through a database that may be protectable It applies equally – and this is by patent (just as are algorithms all-important for material so for encryption of the material eminently copiable – to the final within the database). There may, object-code version, readable by then, be a case for stronger pro- the machine itself. The European tection of innovative techniques Community required this legal than by copyright alone. change and various consequen- tial amendments by a Directive issued to its Member states. 9.3 IP for Computer Programs The policy of treating computer The rights derive from the work programs as not sufficiently tech- of the authors who create the nological to warrant inclusion program (they may be many). within the patent system was The protection runs for a term fixed in Western European law from the death of the last sur- at an early stage in the develop- viving author which soon, ment of computing. It continues throughout the EU, is to become today for application programs. a further seventy years (see the Inventive operational programs, EC Directives on Copyright in which determine how a computer Computer Programs (1991) and or network functions, are now on the Term of Copyright (1993)). coming to be treated as Objections have been raised in patentable. principle to such a long period of protection for this subject-matter.

9.4 Copyright in Computer Programs 9.5 Computer Program For all types of program, copy- Copyright: Scope right has been deployed to pro- At present, while computing tech- vide the front line of intellectual nology is advancing at such speed,

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SCOPE AND the question of duration is not of (ii) that there could be OPERATION OF great significance (though it may infringement of a program INTELLECTUAL become so as the technology which produced screen PROPERTY slows). What is of particular con- images if merely its ‘look SYSTEMS cern within academic computing and feel’ were annexed (as is the extent to which programs in a computer game). can be examined, criticised and developed by others. To some degree the EC Directive addresses 9.7 Restricted Interpretation this issue, for it was the subject of The 1990s are witnessing more high dispute between different restrictive interpretation. US sectors of the computer industry judges began to call for copying during the negotiation of the text. at a level of greater detail (though not necessarily by using But the Directive did not address the same or ‘translated’ versions the most central question. This of the actual programming); and is: when Program II is in some excluding from the calculation sense derived from Program I, material already in the public what is to count as sufficient bor- domain and steps which from rowing to constitute infringe- some functional necessity had to ment of the copyright in Program follow a particular procedure. I? It is an issue on which it is inherently difficult to arrive at A balance is thus being any useful general formulation. reached which leaves a real (The Directive did not attempt to degree of freedom to develop do so.) It is left to courts to reach varied or improved programs solutions in particular instances. which may even act as a sub- stitute for an initial popu- lariser, provided that in all 9.6 Wide Interpretation essential steps the detailed Most of the case-law to date has working has been done afresh arisen in the US, and has shown and has not been borrowed some alarming divergences of under disguise. From the per- attitude among judges. During spective of academic the 1980s, highly protective judg- research, this evolving view ments appeared to accept: deserves to be strengthened and supported. The academic (i) that it would be copyright sphere is one in which adequate infringement to take the scope must be retained to build in general elements of essentially novel ways upon the structure and organisation achievements of others. There of a program, even if will of course be instances where virtually all the detailed that freedom is abused by work steps of programming which is essentially plagiaristic. were re-written; The two English judgements

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which so far explore the same tant lead. It has introduced a SCOPE AND territory indicate an awareness of limited exception into the copy- OPERATION OF the need for a similar balance, right laws of Member states INTELLECTUAL though the justifications used to which permits the interface spec- PROPERTY reach it differ. The gravest ifications of a first program to be SYSTEMS danger is that one or two atypical uncovered by the steps of reverse cases will flair up into litigation analysis commonly referred to as which settles the case-law into an ‘decompilation’. Any making of a undesirably restrictive pattern. copy during this process, to the extent that it is necessary for unearthing interfaces, does not 9.8 Interfaces require a copyright licence. The A particular issue, that arises in step can be taken with the aim of the further development of pro- producing a competing, as well grams, is that of electronic inter- as a complementary program, facing. One program cannot provided always that the new operate with another unless it program does not reproduce ele- can adopt the precise procedures ments, which anyway constitute of interface specification estab- infringement. lished in the latter (it is not necessary to copy the coding In our view, it is in the language, provided that the interest of the international structure of this specification can academic community that be taken). Where the second pro- this compromise formula gram copies substantial elements should be generally adopted of the first in addition to the and should be interpreted so interfaces, the copyright in the as to leave adequate scope first will be infringed. But where for continuing development. all that is taken is the interface, Copyright has been intro- in order to secure the inter-oper- duced as the normal means of ability of the two, this would not protecting computer proof itself constitute infringement. grams despite their essen- Otherwise the owner of a suc- tially technical character. cessful basic systems program This copyright applies will be able to prevent any unli- without having to attain any censed applications programs, level of inventiveness such as from being used with it: that is called for in the patent could confer very considerable system. Yet the patent system monopoly power on leading sys- has an established exception tems manufacturers. for experimental use. Scientific bodies have an interest to see that this new 9.9 Decompilation application of copyright law Concerning decompilation the contains suitably framed EC Directive has given an impor- exceptions designed to secure essentially the same freedom.

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SCOPE AND 9.10 Databases: Modes of tual property protection for a OPERATION OF Protection database as such, so that preju- INTELLECTUAL The growth of electronic inform- dicial acquisition of its contents PROPERTY ation sources already affects aca- can be prevented. SYSTEMS demic research in many ways, and we face an immense increase Urgency has been given to the in electronic publishing, which issue by the reluctance of courts will allow readers a range of in some countries (though not in access and an ability to choose the UK and other Common- what to take, and indeed what to wealth jurisdictions) to accord alter, on an entirely new scale. copyright in the compilations of information, at least where it is The costs of such services, in par- an accumulation of mundane ticular for academic commun- facts. Thus, the US Supreme ities, will be considerable. But Court has refused to find any since access will be by a telecom- sufficient authorial activity for munications link, records of there to be copyright in the com- material consulted and obtained pilation of a telephone directory; can be electronically compiled and the Dutch Supreme Court and it should, therefore, be pos- called for reconsideration of the sible to relate charges accurately same factor in respect of the list to the information used. If this is of words given entries in a so, the essential concept of copy- leading dictionary. right – that each act of copying and other prescribed use should In consequence the EU is con- be authorised by the copyright templating a harmonisation of owner – should be more readily copyright law, which will allow realisable than, for instance, at copyright in electronic data present, given current methods where there is sufficient personal of private copying. creativity in the assembly of the data; but where assembly is of straightforward facts, a separate 9.11 Policy for Databases and much more limited right The databases from which not against unfair abstraction of the only literary source material can contents of the database. be retrieved but other information can be consulted generally involve considerable investment. 9.12 Preferable Approach This investment can be directly The academic community assem- undermined if there are ways by bles many electronic collections which others can surreptitiously of data and has an interest to see copy the collection of source that there is adequate protection material and provide access to it of them against piracy. At the on a competitive basis. There is, same time access should not be accordingly, a need for intellec- unduly limited, as could occur,

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for instance, where those com- process can involve active part- SCOPE AND piling the data have been icipation by recipients. The OPERATION OF granted some unique opportunity prospects appear revolutionary INTELLECTUAL to collect it. and there is powerful support for PROPERTY the construction of data high- SYSTEMS The British and the Irish ways, such as the National have copyright laws which Information Infrastructure in the allow compilations of infor- US and the European mation to fall within the Information Society in the EU. scope of the law whenever they are not themselves just As this technology advances, it copies from elsewhere. In our will redound on many aspects of view, this country should academic work. The development seek to persuade other of electronic banks of scientific Community states to adopt a data, already referred to, is one similar approach; it is prefer- part of the process. To a signifi- able to the introduction of a cant extent – who can tell how separate and more limited completely – the book, the type of protection for data journal and the written record of collections which do not con- data will be replaced by inform- tain some higher measure of ation read on screen and held in intellectual activity. digital memory. Even today Attention could then be given scholars may engage in discus- to defining appropriate rules sions at a distance which have about access to databases, an immediacy on a wholly new deploying, if necessary, the scale, both in terms of speed and prospect of compulsory in range of contacts. Activities licensing. such as the Internet demonstrate these possibilities (and also some of the hazards – for instance the 9.13 Digitisation deliberate provision of misinfor- There is at present a rapid devel- mation). Opportunities for inter- opment in the electronic storage active learning will be much and transmission of information enhanced by the new potential, of many kinds in digital, as one aspect of which is the ability opposed to analogue, form. Text, to combine the use of materials in image and sound can be stored in different media and to manipu- the same format. The contents late them into new conjunctions. can be extracted in whole, or in part, and can then be manipu- As the digitisation revolution lated and rearranged in myriad progresses, there are likely to be ways. The results can be distrib- very substantial changes in the uted over new forms of network, organisation of information using on-line and broadcast supply; and the economic and channels; and this distribution social consequences are likely to

29 INTELLECTUAL PROPERTY AND THE ACADEMIC COMMUNITY

SCOPE AND pose a whole range of legal prob- tribute them to a whole complex OPERATION OF lems, from control over unaccept- of right-owners with an efficacy INTELLECTUAL able contents to the regulation of unknown in the distribution sys- PROPERTY dominant firms in the emergent tems which for the most part still SYSTEMS industry. Among these problems operate today. In practice, if not will be questions concerning the in law, rights will have to be nature, scope and enforcement of asserted through collecting soci- IPRs. At present, however, it is eties and the organisation and very difficult to predict what control of these societies will adaptation of IP laws will be nec- become a major issue. essary in order to fit a digitised world. Whatever else, one must There will be a need to preserve assume that it will not be a some material as confidential, world confined within national and this requires further work boundaries. Accordingly legal on encryption. There will be discussions will increasingly interests (of the kind currently have to be international in protected by the concept of moral impact. rights) in ensuring that the identification of authorship remains part of a work, even when its 9.14 IP Protection of Digitised form is adapted or altered, and Material in maintaining (at least in some It seems likely that copyright measure) the integrity of a work will be the form of IP most held within a network against involved in the development of unfair manipulation of its con- digitised information systems. tent. Academic authors will have Patents in computer functions as strong an interest as any may also come to play a strategic group in these last two factors. role. On current predictions, At this juncture it is difficult to many legal experts regard copy- say more than that, among the right (i.e. copyright of both the groups of experts who meet con- author’s right and neighbouring- stantly to review the problems, right types) as a sufficiently flex- these difficulties are recognised ible form of legal protection to and a search is under way to find adapt to the new media without acceptable solutions. Those solu- fundamental alteration. At the tions are most likely to operate same time, it is recognised that in relation to material that is much will depend on the develop- made electronically available on ment of technical means which a large, commercial scale. It may can track the extraction and be doubted whether collection restorage of digital material so and monitoring systems will as to monitor its use in accurate come into effect for informal sys- detail. Once this is achieved, and tems of consultation and additive made proof against those intent contribution which are a typical on piracy, it will be possible to feature of ‘bulletin boards’ and levy charges for use and to dis- the like. Academics are among

30 INTELLECTUAL PROPERTY AND THE ACADEMIC COMMUNITY

those who must learn, that if sory licences, which would have SCOPE AND they choose to place their the effect of keeping even the OPERATION OF ideas in electronic circul- patentee out of the local market. INTELLECTUAL ation, they may be commit- PROPERTY ting them to a public domain. SYSTEMS They will need to be aware 10.2 Pressures from Industrialised that this course of action has Countries its pitfalls as well as its In the ensuing years, industrial advantages. countries, led by the US, have shown their increasing concern over the piracy of protected prod- 10. TRANSFER OF ucts in a range of countries – and TECHNOLOGY TO in particular those advancing DEVELOPING COUNTRIES most rapidly towards industrialisation. As well as threats and 10.1 Role of IPRs retaliation through trade control Over the past three decades par- measures, there have been a ticularly, it has often been range of bilateral and regional asserted that IPRs contribute to agreements between states on the continuing dominance of levels of IP protection, and developing countries by the activ- highly significant negotiations at ities of the trans-national corpo- the international level. rations of the developed world – to a degree that is certainly sig- In the Uruguay Round for the nificant, even if it is not posi- revision of the General tively sinister. This became a Agreement on Tariffs and Trade strand in the demand for a new (GATT), a component has been international economic order. introduced covering Trade Related IPRs (the ‘TRIPS An early response, after complex Agreement’). With the eventual negotiations, was the introduc- success of the negotiations in tion into the two main intern- December 1993, TRIPS provides ational conventions on copyright a new basic accord on IPRs in (Berne Convention, Universal the international arena. Its Copyright Convention) of special implementation (to be spread qualifications on the exclusive over several years) must now be rights of authors in favour of a central preoccupation of diplo- developing countries. On the matic activity and commercial other hand, in 1982 the leading concern. industrial states preferred to abandon attempts to revise the TRIPS represents some consider- Paris Convention on Industrial able compromise upon the initial Property, rather than concede to starting point of its promoters, developing countries a special which was to insist that any right to grant exclusive compul- country wishing to have access to

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SCOPE AND the opened markets of the GATT overall, should also begin to OPERATION OF network must introduce and draw benefits from the protection INTELLECTUAL enforce IPRs of a standard equal of ideas generated in their own PROPERTY to that found in leading states countries, or made the source of SYSTEMS such as the US. Nonetheless, the production as part of industrial levels of protection required are organisation on a trans-national of a much higher order than pre- scale. Patents and other rights in viously pertained in much of the technical ideas after all provide a world community, and they are means of attracting the newest backed by the sanctioning system technologies to countries which which operates within the GATT are otherwise likely to be passed as a whole. The concessions for over as places for industrial many purposes allow developing investment. countries a five-year period in which to bring their laws into At this juncture, two things at compliance with TRIPS stan- least should be expected: that dards. For the least developed leading countries, such as the countries this tolerance is US, should now abandon unilat- extended to ten years. eral trade sanctions which are designed to insist upon even higher standards than those 10.3 IPRs under World Trade embodied in TRIPS; and that, if Sanctions in future higher levels of IP pro- IPRs now have a distinct weight tection are negotiated within in the balance of world trade TRIPS, they will be conceded advantages and disadvantages. only in return for improved Intellectual property will have to access to markets for developing be respected in developing coun- countries. tries and this will often add to the burdens being assumed by The impact of TRIPS on those countries as a price of developing countries should access to international markets. be carefully monitored. Those which derive most advantage from the new regime

32 PART III: EXPLOITATION OF IDEAS FROM EXPLOITATION ACADEMIC SCIENCE OF IDEAS FROM ACADEMIC 11. THE GROWTH OF project is on a grand international SCIENCE INDUSTRIAL LIAISON scale or is a small-scale pilot study. In consequence there 11.1 IP in Research Contracts has to be some significant In this Part of the Report, we modification of those freer turn to questions of means. notions of collaboration-cum- Universities and non-industrial competition, which have per- research organisations now seek vaded academic science in the to give much greater account to past. To avoid disputes over the commercial potential of rights there must be aware- research than happened in the ness of the need for agree- past. More and more of them ment from the outset on an have established Industrial acceptable approach to them, Liaison Offices (ILOs) or similar which must be expressed in a units, armed with a mission to properly drawn contract. uncover exploitable ideas and turn them to the commercial advantage of institutions and 11.2 Experimental Nature of individuals. There is active Development encouragement from government It must be stressed that the for IP exploitation plans, tech- development taking place is an nology audits, training in IPR experiment; it must not be con- management techniques, general flated in advance into a panacea. education on IP matters and sim- It is not the central aim of most ilar initiatives. We believe that academic science to produce com- this shift in emphasis is mercially exploitable results. If inescapable, but one which they come, it is by way of sec- deserves to be pursued only ondary consequence. Industry is to an extent that does not inherently more likely to produce compromise the essential the technology it needs from its value of academic research. own resources.

Pressures on research funding are The usefulness of industrial such that no institution can now liaison and technology transfer adopt an attitude which neglects may prove to lie not so much in any potential for commercial IPRs and royalty flows, as in the development, where that exists. strengthening of informal contacts Moreover, IPRs are essential between academics and industry, building blocks in that process. under which exchanges of infor- They cannot be left out of account mation may increase and per- in organising the course of sonnel may move more frequently research projects, whether the between the two sides. From this

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real benefits may flow, even if they science support will become EXPLOITATION are not easily quantifiable. sharper and increasing OF IDEAS FROM attention is likely to be paid ACADEMIC to commercial success as a SCIENCE 11.3 Concerns for the Future deciding factor. While this Looking to the future we would may stimulate the draw attention to three associ- marketing of research, it has ated dangers: long-term costs for the system as a whole. Besides (i) In the White Paper, the distorting effects on Realising Our Potential, the basic science, it is liable to Office of Science and erode the complex structure Technology has stressed its of mutual support among continuing commitment to individuals and institutions the support of basic research, which sustains the academic and to the importance of community. Even instit- maintaining this country’s utions which win out in this long-held position in the competition may find them- international development of selves the poorer when costs scientific knowledge. At the are counted in full. same time it is placing quite novel emphasis on the need (ii) At present there are to extract practical benefits optimistic, but essentially from academic work, and this untested, estimates of what cannot but have some ILOs may achieve (though it tendency to squeeze basic is at least recognised that science budgets at a host of they cannot be expected to points. The financial produce the short-term support from govern- returns that would make it ment, through the appropriate to designate Research Councils, for them independent cost basic research must centres: see Intellectual remain a crucial and Property in the Public Sector distinct priority. The Research Base, p. 31). Even increasing government the well-established and emphasis on practical successful US examples, benefits must not lead to such as the technology a creeping displacement transfer scheme at MIT, of basic science, much of produce income that is which, by its nature, is under 5% of annual research far removed from expenditure ($16 million on commercially successful $400 million in the MIT exploitation. case); UK universities are mostly at an even lower The competition for basic proportion (1–2% at best).

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An ILO may indeed be research, just as financial unsatisfactory if it fails to returns are one measure of EXPLOITATION identify and promote its success. So long as these OF IDEAS FROM opportunities for indicators are treated as ACADEMIC commercialisation. But how elements in assessing the SCIENCE often these chances will quality of the work as a occur must depend very whole, they have some place. much on the range of But patents are costly to research which the obtain and commercialisation institution undertakes, and depends on success in that must be affected by a finding business partners. If whole range of factors. The the figures are lifted from ‘performance’ of an their context, they may well academic institution’s be treated as measures of ILO should not be taken research ability, The as the measure of that acquisition of IP should institution’s science. The not be treated as an activities of an independent measure of institution must reflect a academic achievement judgment of what is most when all it demonstrates worthwhile to do; and is the scale of the re- that should not be tied search funding or the too closely to successes in willingness of an investor commercial promotion. to shoulder development risks. (iii) Significantly, the latest Research Assessment Exercise conducted by the 11.4 Informing the Academic Universities and Community Polytechnics Funding Councils asked for a tally Since the change in progress not only of patents acquired, must have a significant but even of copyrights. impact on attitudes of the Likewise the OST has called academic community, that for more emphasis in staff community needs to know appraisal, performance more about the commerciali- assessment and promotion sation process, and the role reviews to be attached to of the various IPRs within it patents filed, to licences – in particular, the conditions negotiated and royalties under which they are available, earned under them. the ways in which they underpin (Intellectual Property in the new product development and Public Sector Research Base, the limits to their effectiveness. p. 32). Of course applications It should be one role of ILOs and patents are one way of to increase academics’ aware- recording the results of ness of IPRs. Universities

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must also consider actively consequences and questions of its EXPLOITATION how far knowledge of intel- ownership have tended to be OF IDEAS FROM lectual property should neglected, at least where the ACADEMIC become part of undergrad- issue involves only the SCIENCE uate and graduate courses researcher and his/her institu- for scientists, engineers, man- tion. Where, on the other hand, agers and lawyers. there has been some form of collaboration with industry it used There is also scope for more to be common practice for any IP extensive training of those issues to be dealt with by the whose careers will be in sci- industrial participant; who not entific research and its only would make the necessary administration. For them, applications and see to enforce- intellectual property and its ment of the rights, but as a con- deployment should form an comitant would acquire assessed element in higher ownership and so have the power education courses. There to exploit itself and/or license seems to be considerable willing- others to do so. ness amongst professionals involved in intellectual property and its licensing to participate in 12.2 Rights Under The Patents Act such teaching, but training of IP ownership as between a uni- this kind is as yet very much in versity and its staff has not been its infancy. seriously examined. At least so far as concerns patents, general rules about employed inventors 12. IPRs WITHIN were laid down in The Patents INSTITUTIONS Act 1977. It is in consequence arguable that inventions made 12.1 Ownership Issues in the Past by university teachers, as much as those by research fellows and If institutions are to act, workers in non-industrial directly or indirectly, as research organisations, belong agents for commercial initially to the employing institu- exploitation of academic sci- tion. However, students, not ence, the basis of their power being employees, form an oppo- to do so, vis-a-vis the site case: they are entitled to researchers, has to be estab- patents for their inventions lished. Certainly the legal ques- unless there is a different agree- tion who owns the rights in any ment with their university. IP is part of that issue, though it is by no means the whole story. The important legal issue, however, is not the rule which would In the past academic scientists apply if there is no agreement have often ignored IP and its about ownership and sharing in

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returns, but what agreement inventions may go unrevealed, or there should be. It seems be taken off surreptitiously to EXPLOITATION widely to be accepted in the the private sector. OF IDEAS FROM UK – and it is a view which ACADEMIC we support – that public SCIENCE bodies which give grants and 12.3 Research Councils and otherwise provide research Charities facilities deserve to share in So far as research in universities revenue from patented inven- funded by Research Councils is tions with the researchers concerned, the terms of the grant (and, in universities, their now require acknowledgment departments). As a conse- that ownership is in the univer- quence, provided that the sity (or, for reasons to do with its body has proper facilities for charitable status, its technology organising protection and exploitation company) and that exploitation, it (or its royalties will be distributed in exploitation company) should accordance with an agreed plan, be the owner of patents and similar to those already men- related rights. There is a case tioned. These arrangements are, for explicit agreements giving the however, subject to scrutiny by university the rights in an inven- the joint Exploitation Scrutiny tion made by a student, subject Group set up by all the Councils. again to royalty sharing arrange- So far as research sponsored by ments. charities is concerned, the position is at present complicated by Various royalty sharing schemes their need not to jeopardise their now operate in universities: a charitable status (and risk tax common pattern is for all or a liabilities in consequence). There very high proportion of initial needs to be careful considera- returns to go to the inventor(s); tion of the position of donor with larger proportions there- charities in relation to intel- after going to the institution, lectual property generated by sometimes with a further research which they fund. tranche for the department con- Most charities are in no posi- cerned. There may be similar tion to enter upon the com- arrangements for shares in any plex business of managing spin-off company which may take rights, whereas academic over a promising venture. The institutions are building up justification for such an arrange- just this capacity. Charities, ment is that it spreads the incen- therefore, should not be tive effect of the patents, so that placed under any obligation both institution and individuals by the general law to take may appreciate the stimulus. assignments of IPRs. Indeed if the arrangements as a Ownership of the rights whole do not strike researchers should be left with the organ- as efficient, helpful and fair, isation, or person funded,

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where that is the efficient On the other side, industrialists EXPLOITATION way of ensuring that their point out that, by and large, the OF IDEAS FROM commercial potential is actu- cost of research is moderate in ACADEMIC ally realised. To what extent proportion to that of subsequent SCIENCE the charity should receive product development and mar- any share of returns from the keting: a ratio of 1:10 is often research exploitation is a sep- taken as a minimum. If they arate question and one that cannot have exclusive rights to should be left to the judgment exploit the inventions which they of the charity and the recip- sponsor, they may have justifi- ient institution. It is an issue able reason for refusing to go which may have complex tax- ahead with the collaboration. ation implications. From yet another perspective, there is concern that some who 13. IPRs IN ACADEMIC– staff ILOs at present lack the INDUSTRIAL knowledge and experience to rep- COLLABORATIONS resent their institutions adequately against acute 13.1 New Tensions businessmen. Yet they need in Technology transfer from acad- many instances to negotiate at emic institutions to industry can arm’s length not only with be organised at any stage from British firms but equally with the initial conception of the powerful organisations from research programme, through to overseas. licensing of IPRs already obtained by independent effort. The terms on which ILOs or other agents for 13.2 Pragmatic Solutions universities and government- The importance of these tensions funded institutions should strike has been reflected in official agreements have become the sub- deliberations. In 1989, the ject of a good deal of disquiet and Cooper Committee (Report of the debate, as the ILOs have begun to Interdepartmental Intellectual make their mark. Property Group, Intellectual Property Rights in Collaborative Some in industry have found R&D Ventures with Higher themselves forcefully informed Education Institutions) was that they can no longer expect to unable to prescribe any one solu- look on university research as a tion for the holding and exploita- public support programme for tion of IPRs which resulted from their private plans; and that they academic– industrial collabora- can, for instance, only expect tion. The circumstances were exclusive rights in resultant IP if considered too various. Terms they are prepared to meet the had to be negotiated case by full overheads of the project. case.

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While the Committee warned 13.3 Acquiring Licensing Skills against the impracticalities which The first necessity for universi- EXPLOITATION could flow from joint ownership of ties and research bodies is to OF IDEAS FROM IP, it stressed that ownership was acquire their own personnel or ACADEMIC not the only, or indeed the vital, outside professionals who can SCIENCE issue of itself. A set of interrelated bring the practical experience, or questions needed to be addressed: at least the business instinct, to What degree of confidentiality drive firm but reasonable bar- would be required of the gains. Investment in this, partic- researchers? Which party would ularly at the early stages, could take responsibility for enforcing make the difference between suc- the rights (and would, therefore, cess and failure. It may well be appropriately be registered as that the kind of expertise needed owner, or at least as exclusive for the tougher parts of the licensee)? What rights of exploita- process can only be provided tion would be given to the indus- from outside: through for trial partner and in particular instance an established player, would those rights be exclusive? such as the British Technology What background IP would also Group or a venture capital com- be licensed? What would happen pany. What may need to be on to IP resulting from modifications site is a small staff charged and improvements? How far with stimulating interest in would there be rights to use the commercialisation and its current invention for further mechanics, in working with research and as background for researchers on the practical later developments protected by potential in their work and their own IP? The OST’s Paper, generally in enhancing Intellectual Property in the Public knowledge of IPRs in the Sector Research Base, endorsed institution. Altogether, to these conclusions with only minor emphasise once more the additions. experimental nature of what is now happening, the devel- We support the conclusions of opment of ILOs needs careful the Cooper Committee which monitoring. reflect the kind of common- sense which any licensing executive acquires. This 13.4 Negotiating Positions includes knowledge of how In 1991, five leading research complex and difficult such institutions in the university relations can prove over sphere (Oxford, Cambridge, time. Accordingly what must Imperial and University be sought is an agreement Colleges, London and Warwick), which seems on balance fair established guidelines for collab- to each side – an agreement orative research with industry. which it is, therefore, better These propose a model for negoti- to honour than to undermine. ations which draws a prime dis-

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tinction between a sponsor which starting point for negotia- EXPLOITATION is prepared to fund the full costs tions. At the same time it has OF IDEAS FROM of the research, including all the to be recognised that they ACADEMIC university’s overheads, and a cannot always be strictly SCIENCE sponsor which will provide only a adhered to. The governing lesser level of support. concern should be that worthwhile research gets In the first case, the sponsor done and results are made should be entitled to exclusive publicly available as soon as rights in the IPR, subject to the practicable. payment of royalties to the university. But even then the university should examine whether 13.5 Enforcement of Rights the assessment of ownership, or It has to be remembered that the grant of an exclusive licence, actual value of rights depends would inhibit subsequent upon the financial ability and research and the exploitation of determination of owners and its results, possibly with a com- exclusive licensees to enforce petitor of the initial sponsor. In them against competitors who such a case, the university are not prepared to take a should seek to preserve its licence. In the past, when the freedom to pursue such research NRDC/BTG was the channel and retain the ability to decide through which government-spon- how it will then exploit it. In the sored research had to pass, the second case, the sponsor should very fact that a government expect only a non-exclusive organ was in charge made some licence, subject to royalty. (though not all) would-be infringers wary of becoming The Guidelines also recognise the involved in litigation. It is one possibility of granting the disadvantage of the BTG’s pri- sponsor exclusive rights without vatisation that it no longer pre- a royalty obligation. However sents this appearance, and it will this solution is appropriate only acquire an equivalent reputation where the sponsor is prepared to only if it builds powerful portfo- pay full costs plus additional lios of patents and other rights support in lieu of potential royal- and shows that it is not afraid to ties. The university would then assert them. have funds with which to com- pensate staff who otherwise Government should do all it would be left without royalty can to increase the avail- shares under the university’s ability and efficiency of court internal arrangements. process for the enforcement of IPRs. A beginning has We endorse these Guidelines been made with the establish- as providing an acceptable ment of the Patents County

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Court, but it still needs time against the costs of enforcement and resources for that court litigation. Universities should EXPLOITATION to become an institution of consider whether, individu- OF IDEAS FROM front-rank importance. ally or collectively, they ACADEMIC should have insurance of this SCIENCE On another front, insurance is type for their IP. available privately to IP owners

PART IV CONCLUSION CONCLUSION

14. THE WAY FORWARD 14.3 As to the immediate demands, we have identified the major 14.1 We would end by re-emphasising sources of tension, such as the the academic values which we need to keep inventions confiden- stressed in the Introduction. tial until the patenting arrange- Researchers outside the indus- ments are properly in train. It trial sector will continue to must be a major concern of attach major importance to their research administrations to contribution to scientific knowl- reduce these strains by effi- edge. This involves both a sub- cient management of stantial degree of freedom to patenting procedures and by present their ideas to their peers informing researchers of the and to conduct experiments legal requirements and their unfettered by conflicting rights. objects. There is much else that they can do, particularly In universities it should be in organising the various put beyond question that aca- forms of academic–industry demics retain ownership of collaboration, to help work copyright in their writings out fair solutions which will and other works, so that they diffuse potential conflict. may publish them when and where they wish, without control by their institutions. 14.4 Equally it is for government to recognise the contribution which wide-ranging and 14.2 As far as the practical appli- unhindered dissemination of cation of scientific ideas is con- research results through the cerned, universities are set on a academic community, makes course which encourages the to the long-term benefit of maximisation of commercial society. Government must value through patents and other play its part in ensuring that IPRs. It is important to recognise these values retain their own that this raises tensions, not just status, and are not eroded by because of the immediate the short-term pursuit of demands of the systems intro- commercial return at all duced to encourage commerciali- costs. For those costs could sation, but more generally from be immense. the change of direction itself.

43 44 APPENDIX I APPENDIX I

DESCRIPTIVE CATALOGUE OF INTELLECTUAL PROPERTY

1. PRELIMINARY

Competition and Intellectual Property Market economies are characterised by a general freedom accorded to all traders to offer products and services in competition.

Intellectual property rights (IPRs) constitute one exception to this general proposition, since they accord their owner an exclusive ability to act in given ways in the course of trade. This takes the form of a right to prevent others from doing the act in question.

IPRs are not a positive entitlement: they do not give the right-owner any licence to act in derogation of the rights of others.

National Basis of IPRs IPRs are granted when it is considered that legal protection will advance economic performance in particular spheres, or that the right is needed to secure conditions of fair competition for the right-holder.

The policy decisions over IPRs are determined by nation states and so IPRs are essentially national rather than international in character. Not all states grant the same types of IPR, and even when they do legal varia- tions remain between the rights in different states.

International Linkages International conventions exist which accord equal treatment to the participant states (mainly by reference to the nationality of persons to whom, or through whom, rights are accorded). To a limited extent these conventions also prescribe standards of protection (mostly minima) in the laws of participant states. The most important of these are:

Paris Industrial Property Convention (originally of 1883): covering in particular patents, petty patents, industrial designs, trade marks and unfair competition;

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Berne Convention (originally of 1886) and the Universal Copyright APPENDIX I Convention (originally of 1952): both covering authors’ rights aspects of copyright;

Rome Convention (1961): covering the neighbouring rights to copyright given to performers, record producers and broadcasting organisations.

European Linkages To a limited extent, there are also international and regional arrangements for the processing of some types of IPR, the object being to generate national rights in a number of states. Among these is the collaboration of 17 Western European countries in the European Patent Office (which has headquarters in Munich).

The European Community has projects for Community-wide IPRs, equivalent to the IPRs granted in political federations such as the US or Australia. Initially these will become available as alternatives to national rights in Member states. They are mentioned individually below.

Classifications of IPRs IPRs can conveniently be divided into two main groups: rights which protect certain classes of ideas (patents, copyrights, designs, etc.); and rights which protect elements in the marketing of goods and services (trade marks and names, get-up, etc.) This is the primary division which is followed below.

IPRs may also be divided into those which have as a pre-requisite that a grant or registration is obtained from a public body (e.g. patents, registered designs, registered trade marks); and those which are accorded without any such formality (e.g. copyrights, unregistered design rights, confidential information, unregistered trade marks and names when protected against passing off).

In the first group, the rights are granted against all others, i.e. they may be asserted even against those who independently devise the same idea or symbol. In the second group, the rights can for the most part be enforced against those who take the idea or symbol from the right-holder. These characteristics will be noted in relation to each type of right.

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2. IP IN IDEAS APPENDIX I i) Patents for Inventions

Purpose, entitlement, duration Patents are granted to encourage the making of practical inventions and their subsequent development into commercial products and processes, to increase public knowledge of inventions and also to reward inventors. Patents are granted for new and inventive products, substances and processes.

The protection is an exclusive right to prevent others exploiting the invention in its various forms, which is good even against those who make the invention independently. In most countries priority is given to the first to apply (though the US still adheres to a first-to-invent principle). The right lasts for a relatively short maximum term (under the European Patent Convention, for instance, for 20 years from application for the patent).

Validity A patent is valid only if the invention claimed is novel (not itself previously known); represents an inventive step (is ‘not obvious’) over the state of the art; and is capable of industrial application (is useful).

Patents must be applied for at a national patent office (or a regional alternative, such as the European Patent Office). In many countries, the sub- stance of the claim will be examined by that Office before grant. Whether or not this happens, the validity of any patent granted may be challenged throughout its subsequent life by those whom it affects.

Disclosure In return for the patent, the patentee must define his invention sufficiently in his patent specification for others with normal skills to be able to perform it.

Where a patent relates to microbiological material, and no adequate description can be given of how to acquire this material, a scheme now exists under which samples are deposited in specified culture collections in order that others may procure them. However, while the patent applications are still under consideration, only independent experts may be supplied with this material.

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Infringement APPENDIX I The scope of the right granted, which typically is defined by ‘claims’ set out in the specification, should be related to the degree of invention over the prior art. If a patent is to be of real commercial value, it is crucial to ensure that these claims are of sufficient breadth to prevent at least simple ‘inventing round’ the patent.

Settling the scope of a patent is one of the most perplexing aspects of the system. The drafting of claims calls for professional assistance.

Costs and Procedures The main routes for British inventors to acquire patents are now the following:

a) For an invention likely to be used only in the UK: application to the UK Patent Office. Official fees to grant – £285; from 4th year, annual renewal fees £110, rising to £450 for the 20th year; if a patent agent is used, professional fees depend on complexity and volume of work but probably will start at around £1,000.

b) For an invention likely to be used only in parts of Western Europe: application to the European Patent Office. Official fees to grant – in the region of £3,000–4,000, depending on the number of countries designated; plus professional fees and fees for translations into national languages. The result is a bundle of national patents for the designated countries. It is possible to make a preliminary application for protection to the British Office and within 12 months to proceed with a more complete application to the EPO.

c) For an invention with international value: application for patents in various countries world-wide is usually commenced by the Patent Cooperation Treaty (PCT) route. A single application through the British Patent Office leads to an international search, and, for many of the participant states (there are now some 70), to a preliminary examination at an international level. So far as Western Europe is concerned, a PCT application can lead on to processing in the EPO. A particular value of the PCT route is that it delays the date at which translations into national languages are needed. This allows the initial application to be made earlier and expenditure to be put off during a period when both technical and commercial assessments of the invention may be under active review. The costs of filing in, say, 50 countries are likely to be around £50,000 depending on the length of the specification.

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d) Litigation costs also are not low. In the US they can easily exceed £1,000,000. In the UK estimated averages are: in the High Court, APPENDIX I £100,000; in the Patents County Court, rather less; in the Court of Appeal, some £60,000. In continental Europe litigation costs are generally lower. ii) Petty Patents; Utility Models

Second–tier protection systems Some countries (the UK is not yet one of them) have an additional system for protecting technical advances on a simpler basis (in most cases there is no substantive examination before grant) than under the standard patent system; and for a shorter duration (typically 6–10 years). They are obtained by application to a government office and are good even against independent devisers (cf. design rights, below).

Differences In some countries these ‘petty patents’ or ‘utility models’ are available within the whole field of ‘invention’. In others protection is given to the extent to which an invention assumes a particular shape or set of shapes in (say) a machine part or apparatus. Again the various systems differ over the level of achievement which must be shown: some impose the same criteria of novelty and obviousness as for a full patent; others require only a lesser level of practical utility over and above what is already known.

EU Development There is a movement to introduce such a supplemental system on a EU- wide basis. All Member states, save the UK, Luxembourg and the Netherlands, already have protection of this general character at a national level, though the systems vary along the lines already indicated, and it is unclear what precise form a EU ‘second-tier’ protection would take. iii) Plant Variety Rights (PVRs); Animal ‘Varieties’

Systems of Protection In the US from 1930, and Western European and certain other countries after World War II, rights began to be granted for newly developed plant varieties. The form this takes in the UK bears some resemblance to a patent system, with an additional right in the name given to a new variety. Rights are granted once a scheme has been established for a species, and such matters as the duration of the right vary somewhat from scheme to scheme.

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UK Approach APPENDIX I Before grant, a new variety is subject to official trials to establish that it does have the necessary characteristics of distinctiveness, uniformity and stability. A sample of propagating material has, therefore, to be deposited, though it does not thereby become available to others. The right prevents all others from marketing seed and other propagative material for the variety. There is a ‘farmers’ exemption’ allowing them to produce their own seed and rootstock in certain instances. The variety may also be used in order to produce further varieties.

Relation to Patent System With the growth of genetic engineering of plants, there has been considerable pressure to by-pass this special, limited system, in favour of extending patent rights so that they may include some inventions relating to plants. In the EPO this is succeeding where the invention lies in altering the genetic structure to some greater or lesser extent than is involved in the production of a new ‘variety’.

International and EU There is an international Convention covering plant variety rights (the UPOV Convention, with 18 member countries), which has now been amended, so as to allow contracting states to protect varieties by patents and by special rights if they choose. It is possible that a EU-wide PVR will be established.

Animal ‘varieties’ No special system of intellectual property in new breeds of animal has been introduced, which would provide an equivalent to that for plant varieties. However patents for ‘animal varieties’ are excluded from the patent system, as are plant varieties. And as with plants, this exclusion is not being interpreted so as to prevent the patenting of inventive changes in the genetic structure of animals, provided at least that those changes affect them to some larger or smaller extent than amounts to the creation of a new animal ‘variety’ (an inapposite word).

iv) Trade Secrets

Nature and Scope Most developed countries grant protection to technical and commercial secrets in a manner which comes close to being a property right. Protection does not depend upon any formal act of deposit or registration of the

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secret. In most cases, liability stems from the fact that a person has had access to the secret information on a confidential basis (e.g. as an employee APPENDIX I or a licensee) and is acting or proposing to act in breach of that confidence.

Much industrial know-how is thus protected informally. But it is rarely simple to use legal rights to stop its leakage away. This helps to explain why many who wish to license rights in successful industrial products and processes prefer to have patents for the main concepts, while relying on trade secret protection for the surrounding know-how.

Differences Legal systems differ in their treatment of trade secrets over the following:

a) How far the protection extends to mere ‘ideas’, e.g. about useful, or sterile, paths for future research;

b) The extent to which indirect recipients are liable;

c) Whether the protection applies to spies who obtain the information surreptitiously, without having any relationship to the person holding it;

d) The degree to which employees must be left free to take information with them when they leave employment. v) Industrial Designs a) Registered Designs

Registration Systems Many countries (including the UK) grant rights covering the appearance of mass-produced articles, where a design element is incorporated which appeals to the eye, rather than for purely technical reasons. In the UK these rights are granted upon application to the Designs Registry of the Patent Office and are good against both copyists and independent designers.

Differences There is considerable variation in the details of registered designs law from one country to another. Typically the rights may run to a maximum of between 15 and 25 years. Countries belonging to the Paris Industrial Property Convention are obliged to protect industrial designs and to afford

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a measure of priority to applicants from other contracting states. The EU APPENDIX I is now proposing to introduce a EU-wide design right of this character, supported by a short-term, informal right against the copying of a design.

b) Unregistered Design Right

UK Lead The UK has already introduced a separate, informal type of protection for industrial design, which operates where the designed product does not qualify as an artistic work within copyright law. Being the subject of no registration procedure, it is available only against those who copy the product.

Scope Unregistered design right applies not to surface decoration but to the shape of industrial products and is available irrespective of whether the purpose and effect of the design is to appeal to the eye or to perform a technical function. It accordingly provides some informal equivalent both to a registered design (for the ‘eye appeal’ of a product) and to a petty patent where that is granted for the shape of an article.

Duration and Limitations This unregistered design right usually lasts for 10 years from first legitimate marketing of products embodying it, there being a power to impose compulsory licences in favour of competitors, mainly in the last 5 of those years.

There are in any case exceptions (notably the so-called ‘must fit’ and ‘must match’ exceptions) which aim to allow competitors to make spare parts for cars and other durables without seeking any design licence (virtually the same exceptions also apply to registered designs).

vi) Copyright and Neighbouring Rights

Authors’ Rights Traditionally copyright has been accorded to ‘authors’ (i.e. creators) of literary, dramatic, musical and artistic works. The right gives protection against copying in various forms, notably making reproductions and using the material in public performances, broadcasts and the like.

Infringement may occur when less than the whole work has been copied: the reproduction of a substantial part of the work as it is expressed will be actionable.

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Duration Authors’ copyright lasts for long periods – in most countries for the APPENDIX I author’s life and 50 years post mortem, if not longer. Under a EC Directive, the period throughout the EU is soon to be the author’s life plus 70 years. In some form there will also be protection of such moral rights as the right to be named as author and to have the work protected from derogatory treatment.

Neighbouring Rights A modern tendency has been to create similar rights against copying in favour of other persons, mainly in the spheres of culture, education and entertainment. These ‘neighbouring rights’ to authors’ rights differ from country to country. In the UK, they at present include copyrights given to the producers of films, videos and sound recordings (i.e. the investors who fund their making), to broadcasting organisations and to publishers against photocopying. In addition, protection is now given separately, to performers and those with exclusive rights in their performance. The rights endure for somewhat shorter periods than authors’ copyright.

Computer Programs Computer programs, whether in source or object code, have recently been protected by copyright, by deeming them to be works of literary authors. (To some extent, programs are also beginning to acquire patent protection, though this differs between countries.)

In most industrial and many industrialising countries copyright protection of programs has been introduced by special legislation. In some countries literary copyright has been adapted by special provisions, relating, for instance to the term of protection and the degree to which programs may be decompiled by others wishing to make their own developments. It is still far from clear what activities, other than exact reproduction, will constitute infringement of this copyright. vii) Semiconductor Chip Design

Separate Protection Against Copying Computer ‘firmware’, consisting in the layout of chip circuitry, has also been specially treated. Following a US model, the EC and other advanced countries have created a separate right in semiconductor chip design, which operates against copying of the design, and lasts for a 10 year period. It is subject to exceptions which allow reverse analysis and adaptation.

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viii) Unfair Extraction Right APPENDIX I Database Protection The rapidly increasing value of computerised databases is leading to demands for greater IP protection than is available in some countries. A particular difficulty arises in European countries which confine the scope of copyright law to cases where there is a real element of personal creativity in a work. This may make it hard to show copyright in a compilation of facts or other material from a variety of sources. To fill this lacuna, the European Commission has proposed the creation throughout the EU of an unfair extraction right, lasting for a short period, and subject to compulsory licensing in certain cases. At present there is considerable argument over whether this is a desirable development.

ix) Slavish Imitation of Products

Misappropriation of Ideas Many countries (though not the UK or countries which derive their law from it) have a general right of action against unfair competition. There has been a noticeable tendency to extend such unfair competition laws to all circumstances where products are simulated to a degree which can be labelled ‘slavish imitation’. It may not be easy to predict what will substan- tiate such an allegation.

The right forms a drag-net for cases where no specific form of IPR is available. The absence of this drag-net in British law has led to a tendency to increase the scope of specific rights, notably copyright and its attendant neighbouring rights.

3. IP IN MARKETING GOODWILL

i) Registered Trade and Service Marks

Registration Schemes Words, phrases, devices, logos, etc. are used as symbols to indicate the source from which goods and services come. They are crucial elements in differentiated, competitive markets and are prominently featured in adver- tising. Where practicable today, marks are protected against adoption by competitors (deliberately or innocently) through a system of official registration. In the UK this is at the Trade Marks Registry of the Patent Office.

The EU is poised to introduce the alternative of registering a Community Trade Mark enforceable by a single process throughout the Member states.

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Infringement Once a mark is registered, in most systems it can be protected against the APPENDIX I use of the same or a similar mark, on the same or similar goods, and for the same or similar services. Provided that renewal fees are paid, these rights can be extended as long as the mark remains in use.

Ease of Registration Countries vary in the details of their system for the registration of marks. Some encourage the registration of everything, so that there will be a complete listing of symbols in which rights are being claimed. Others allow registration only after an official investigation into inherent objections to registrability, and even (as in the case of the UK) into whether there are conflicting marks already on the register.

The coming EU system will confine official examination to inherent objections (that, e.g. the mark is descriptive of the product or is misleading); but competitors will be able to oppose registration in advance where they have a conflicting mark with a prior claim to protection. ii) Misleading Use of Marks, Get–up, etc.

Passing Off and Similar Conduct Misrepresentations in the course of actual trade may also give rise to legal protection. If one trader uses the mark or other symbol by which another is known to consumers, this conduct will be actionable in law. Some countries classify the right under a general law against unfair competition. Others, such as the UK, use somewhat more limited categories, such as the torts of passing off and injurious falsehood.

Usefulness These are rights which do not depend upon any formal act of registration and so are particularly important in countries where it may be difficult to acquire a trade-mark registration or where the administration is slow. They are also useful for protecting aspects of marketing which do not (in a particular country) fall within the scope of a registration system, such as the appearance of packaging or even product, disparagement in adver- tising, merchandising of characters and endorsement by celebrities.

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iii) Collective and Certification Marks APPENDIX I Shared Interests Significant goodwill may be shared by undertakings in a word or symbol which characterises some aspect of the goods or services which each of them separately produces.

This phenomenon includes those cases where products acquire some of their quality from the growing of materials and production methods in a particular place or region (‘champagne’, ‘sherry’, ‘stilton’). Other cases relate simply to the common description of a product (‘advocaat’; the ‘wool- mark’).

Registration Schemes Many industrial countries have an official registration system under which they afford protection to such ‘appellations of origin’ and ‘denominations of source’.

In some countries, special forms of joint trade mark exist for this purpose, in the form of a ‘collective’ or ‘certification’ mark or through some other specific type of registration. In addition, there is likely to be protection without any need to register, in cases where consumers are likely to be confused by use of the term. This liability will arise under a general law against unfair competition, or, in common law jurisdictions, because of passing-off.

56 APPENDIX II APPENDIX II

OWNERSHIP AND EXPLOITATION OF INTELLECTUAL PROPERTY GENERATED IN ACADEMIC INSTITUTIONS

Where the employment terms of academic and research staff lay down who is to own intellectual property generated by the employee, for the most part these express arrangements determine the issue. This is the main point made in Section 12.2 of this Report.

It does not matter whether these express terms are found in the original terms of employment or in any subsequent variation of the employment, provided that they are legally binding. What follows here is a statement of the rules which apply if no express agreement has been reached on the subject.

The purpose of this Appendix is:

i) to demonstrate that these (largely) presumptive rules do not apply with complete clarity to academic situations; and

ii) to suggest this reinforces the need for both sides, employers and employees, to give fair recognition to each other’s interests, when settling the express terms on the subject in employment contracts.

1. Initial Ownership of a Patent and the Right to Apply for it By UK law, where an invention is made by an employee in the course of employment, ownership lies initially in that person’s employer. This is defined as covering cases where the employee’s duties (i.e. his normal duties or duties specifically assigned) are such ‘that an invention might reasonably be expected to result from the carrying out of those duties.’ (Patents Act 1977, s. 39(1)).

Since the enactment of the 1977 Act, many universities have taken the position, also supported by the CVCP, that they are entitled to inventions made not only by purely research staff but equally by teaching staff in the course of academic research.

2. Compensation to the Employed Inventor for Outstanding Benefits Elaborate rules in The Patents Act 1977, ss. 40–43, seek to secure some measure of fair return to employee inventors from patents to which their

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employers are entitled either initially or by assignment. When the APPENDIX II employer is initially entitled to the patent and obtains an outstanding benefit from it, the inventor becomes entitled to compensation representing a fair share in the light of all the circumstances (a list of factors is given in s. 41(4)). While this statutory scheme can be displaced by a collective bar- gain, it cannot be altered by an individual agreement entered into before the invention was made.

These provisions have a compulsory effect; but the circumstances where they apply are not always easy to identify. Much may hinge on facts of which there is no adequate record. It is, therefore, highly desirable that an express arrangement is embodied in individual contracts and in relevant instances should be negotiated with an appropriate ‘trade union’ (the expression is widely defined).

The rules under Heads 1 and 2 together underpin the contractual practice which is today frequently an express provision in academic science employment. This provides:

i) that the employer should have initial ownership of patents, rights to apply for them, and similar rights in technology (e.g. petty patents (in other countries), plant variety rights, semi-conductor chip rights, etc.) Equally it makes broad sense to treat IPRs in computer programs on a similar basis, even though those rights take the form of copyright more frequently than of patents;

ii) that the employee should be entitled to a substantial share in royalty earnings from inventions, generally in accordance with a stepped or sliding scale which enhances the institution’s proportion as the returns increase.

3. Copyright in writings The underlying legal position relating to the copyright in writings is not the same as that affecting patents and related rights. For a start there is no statutory scheme requiring the payment of compensation for outstanding benefits to an employer.

The Copyright, Patents and Designs Act 1988, s. 11(2) lays down that ‘where a literary, dramatic, musical or artistic work is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary’.

Where the employer thus becomes entitled, the author’s moral right to be identified as such (s. 77) does not apply in relation to anything done with

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the copyright owner’s authority. Equally in such cases, the author’s moral right to object to derogatory treatment (s. 80) is reduced to a right, where APPENDIX II named, to insist upon a disclaimer.

Under these conditions, the question arises whether and, if so, when the writings of academic research employees belong initially to their employing institutions; and that is primarily a question of what is done ‘in the course of the employment’.

In this context there has been little interpretation by the courts of the phrase. But on one occasion, the Master of the Rolls, Lord Evershed, speaking of the cognate subject of the delivery of lectures by an academic, took the view that copyright in their text would nonetheless belong to the individual lecturer:

‘Lectures delivered, for example, by Professor Maitland to students have since become classical in the law. It is inconceivable that because Professor Maitland was in the service at the time of the University of Cambridge that anybody but himself, one would have thought, could have claimed the copyright in those lectures.’ (see (1952) 69 Reports of Patent Cases, p.18)

At least so far as regards academic staff in universities, it has not been the practice for their institutions to claim copyright in their writings. In the language of the statute, the production of copyright material has not been regarded as falling within ‘the course of the employment’. If the contrary were to apply, the institution would have the right to decide when the work should and should not be published, and (as noted above) the author would have no moral right of identification; and only a right to have his or her name dissociated where the work was improperly altered, e.g. by making cuts or insertions.

It would be wrong for institutions to claim such a right as a matter of general law, or indeed to take it by express contract, in a way which would deprive academic authors of essential powers to control how, when and where their work should or should not appear.

APPENDIX III APPENDIX III

LIST OF THOSE WHO CONTRIBUTED INFORMATION

The Working Party was greatly aided by the input of data and views from the following individuals and organisations.

3i plc ABPI Professor John N. Adams – University of Sheffield Sir Geoffery Allen – Kobe Steel Dr D. A. Anderson – CBDE Porton Down Asamura Patent Office, Tokyo Association of Medical Research Charities AUT BBSRC Professor Margaret A. Boden – School of Cognitive & Computing Science, University of Sussex Dr Jeremy Bray MP British Biotechnology Ltd British Library British Telecommunications Plc British Technology Group (BTG) Dr Noel Byrne – IP Law Unit Queen Mary & Westfield College CBI Chartered Institute of Patent Agents (CIPA) Ms June Clark – Oxford University Research Services Common Law Institute of Intellectual Property (CLIP) CVCP Professor Paul A. David – Department of Economics, Stanford University Professor Kay E. Davies – John Radcliffe Hospital Department of Trade and Industry Department of Transport Professor Gerald Dworkin – Department of Law, King’s College London Dr Norman F. Elmore – Independent Consultant ETRAC, University of Strathclyde European Patent Office Human Genome Organisation (HUGO) ICRF IMPEL Institute of Physics IPMS Mrs Vivien Irish – Murgitroyd & Co

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ISIS Innovations APPENDIX III Mr Justice Jacob – Chancery Division of the High Court Sir Aaron Klug, FRS – MRC Laboratory of Molecular Biology LSE Dr Hector L. MacQueen – The David Hume Institute MRC Dr Alan Munroe – Cantab Pharmaceuticals Professor K. Murray FRS – University of Edinburgh NATFHE NERC Nixon and Vanderhye PC, Arlington, Virginia Office of Science and Technology Professor Dawn Oliver – Law Department, UCL Patent Office Professor Marcus E. Pembrey – Institute of Child Health PICT, University of Edinburgh POST Rothwell, Figg, Ernst and Kurz, Washington D.C. SATSU, Anglia Polytechnic University Science Policy Support Group (SPSG) SERC Mr Andrew Serjeant – Serjeants Sir Trevor Skeet MP Smithkline Beecham Pharmaceuticals SPRU, University of Sussex Suzuye and Suzuye Patent Attorneys, Tokyo Dr David Thomas – Research Contracts Imperial College of Science, Technology and Medicine Trade Marks, Patents and Design Federation (TMPDF) UMIST Ventures Ltd University Directors of Industrial Liaison (UDIL) Professor James D. Watson, FRS – Cold Spring Harbor Laboratory Professor Sir David Weatherall FRS – John Radcliffe Hospital Wellcome Research Laboratories Wellcome Trust Professor R. Williamson – St Mary’s Hospital Medical School World Intellectual Property Organisation (WIPO) Zeneca Seeds Ltd

62 APPENDIX IV APPENDIX IV

INTELLECTUAL PROPERTY WORKING PARTY

Professor W. R. Cornish, FBA (Chairman) Magdalene College, University of Cambridge

Dr M. J. Crumpton, CBE, FRS Imperial Cancer Research Fund

Professor D. Grahame-Smith, FRCP MRC Clinical Pharmacology Unit, Radcliffe Infirmary

Professor C. Hilsum, CBE, FEng, FRS Corporate Research Adviser GEC plc

Professor J. M. Hollis, FBA Pro Vice-Chancellor, University of East Anglia

Mr M. P. Jackson former Head, Group Patents and Agreements, The Wellcome Foundation Ltd

Dr J. E. Thompson, FEng Chief Adviser Multimedia, BT Development & Procurement

Professor R. M. L. Winston, FRCOG Royal Postgraduate Medical School, Hammersmith Hospital

Professor J. M. Ziman, FRS former Chairman, Council for Science and Society

Mr A. J. Leaney (Secretary) Science Advice Section, The Royal Society

BIBLIOGRAPHY BIBLIOGRAPHY

Cabinet Office, Intellectual Property and Innovation (Nicholson Report) (Cmnd 9117, 1983).

Cabinet Office, Office of Science and Technology, Intellectual Property in the Public Sector Research Base (September 1992).

Convention for the Protection of Industrial Property (Paris 1883; latest revision, Stockholm 1967) – Paris Convention.

Convention for the Protection of Literary and Artistic Works (Berne 1886, latest revision, Paris 1971) – Berne Convention.

Convention for the Protection of New Varieties of Plants (Geneva 1961) – UPOV Convention.

Convention on the Grant of European Patents (Munich, 1973) – European Patent Convention.

Diamond v. Chakrabarty 65 Law Ed.2d. 144 (1980, US Supreme Court).

EC Council Directive on the Legal Protection of Computer Programs (No. 91/250/EEC, O.J. No. L 122, 17.4.91, p. 42).

EC Council Directive on the Term of Protection of Copyright and Certain Related Rights (No 93/98/EEC, O.J. No. L 290. 24.11.93, p.9).

General Agreement on Tariffs and Trade (Uruguay Round, completed Marrakesh 1994): Agreement on Trade-Related Aspects of Intellectual Property rights, including Trade in Counterfeit Goods.

Interdepartmental Intellectual Property Group, Report on Intellectual Property Rights in Collaborative R&D Ventures with Higher Education Institutions (Cooper Committee) (September 1989).

Patent Cooperation Treaty (Washington 1970).

Universal Copyright Convention (Geneva 1952, revision, Paris 1971).

White Paper, Realising our Potential: A Strategy for Science, Engineering and Technology (Cm 2250, May 1993)