IP Hall of Fame

The cream of the crop

individuals who have helped to establish Becoming an IP Hall of Fame intellectual property as one of the key inductee is no easy thing. That’s business assets of the 21st century. The why those who have made it this aim is not only to acknowledge the vital role played by these innovators in year are all acknowledged leaders fostering today's vibrant IP environment in their respective fields and ensuring its continued health, but also to show how central IP is to the global economy and to the wellbeing of people By Sara-Jayne Adams and Joff Wild across the world. In addition, it is a way for the global IP community to thank The five individuals to be inducted into those who have helped create a thriving the IP Hall of Fame for 2008 were industry and one which, as is discussed announced at the end of September. They elsewhere in this magazine, is set to are Jane Ginsburg, Francis Gurry, Dolores become even more important over the Hanna, Michael Kirk, and Niels Reimers. coming years (see “A flight to quality”, They have all won plaudits throughout pages 41-53). their careers and their induction to the IP On 22nd June 2009, this year’s Hall of Fame recognises the tremendous inductees into the IP Hall of Fame contribution each has made to the will be honoured at a gala dinner that development of the global intellectual will take place in Chicago. This is being property system. held as part of the IP Business Congress The five were chosen by the 40-plus 2009 (www.ipbusinesscongress.com) and members of the IP Hall of Fame Academy promises to be a memorable event. following a selection process that began Soon afterwards, the process to find 2009’s on 1st May 2008. It was then that inductees will begin. The support the IP members of the global IP community were Hall of Fame receives from IP professionals invited to nominate individuals who they across the world has been hugely felt had “made an outstanding gratifying. Long may it continue. contribution to the development of intellectual property law and practice”, and to supply supporting paragraphs giving their reasons. All nominations were sent to Academy members. To give you an idea of the work that Academy members You can find the names of all put into making their final decisions, the previous inductees into the IP nomination document was 78 pages long, Hall of Fame, as well as photos ran to over 24,000 words and contained and profiles, at the IP Hall of more than 200 nominations. Such facts Fame website. There is also a also demonstrate quite what an achievement it is to be voted into the IP list of the current members of Hall of Fame – a lot of very well-known the IP Hall of Fame Academy. names did not make it. www.iphalloffame.com The IP Hall of Fame seeks to identify www.iam-magazine.com Intellectual Asset Management January/February 2009 57 IP Hall of Fame

Jane Ginsburg – international copyright expertise

“I didn’t have any preconceptions about her co-authorship with Sam Ricketson of the copyright law and was totally ignorant when highly regarded International Copyright and I got to law school,” admits Jane Ginsburg, Neighbouring Rights: The Berne Convention professor of literary and artistic property law and Beyond, published by Oxford University at Columbia University School of Law in the Press in 1996. Ricketson had written what US. “I opted for the course because the many considered to be the definitive book teacher offering it was the best I’d had in my on copyright law in 1987 and, when looking first year of law school.” Finding the subject to publish this second volume, asked engaging, she pursued studies in intellectual Ginsburg to collaborate. The book provides property and received her JD from Harvard an analysis of major international in 1980. conventions on copyright and also considers After law school, Ginsburg spent a year how international copyright laws apply to the clerking for the Honourable John J Gibbons digital age. of the United States Court of Appeals for the Since Ginsburg began her career in IP, Third Circuit before spending three years as rapid developments in technology, such as an associate with New York law firm Cowan, the advent of the internet, have created Liebowitz & Latman PC. It was following this increased opportunities for infringement. period in private practice that, in 1984, Consequently, the laws that govern the Ginsburg won a scholarship to study for a protection of rights – and the rights says. Not only have these cases brought diplôme d’études approfondies (DEA) in themselves – have come under close scrutiny. negative attention to the copyright cause, intellectual property law at the University of Debate over whether consumers should pay Ginsburg claims, but it is questionable how Paris II. “The official reason for wanting to for the use of a protected work and, if so, effective they have been. “The rights holders study in Paris was my anticipation that how much rages on. “It really is a case of hoped that the prospect of getting caught international intellectual property would greed on both sides,” Ginsburg sums up. would deter file sharers and encourage them become increasingly important and that as a “There is a perception that copyright owners to subscribe to paying services,” she common law-trained lawyer it would be are trying to squeeze every last dollar for explains. “But it’s not clear that the lawsuits desirable to learn a civil system’s copyright every possible use of the work on the one have proved a successful deterrent.” law,” Ginsburg recalls. The unofficial reason hand; and on the other there is the propensity Ginsburg suggests that alternative means was somewhat different. “The study of ordinary people just to take stuff.” of deriving revenue from copyrighted programme legitimised my aesthetic Moves by large copyright owners and materials should be considered. “It’s pretty yearning to live in Paris,” she laughs. associations, such as the Recording Industry clear at this point that it’s very hard to Ginsburg has written extensively on Association of America (RIAA), to take action prevent people making unauthorised copies,” French copyright law and believes that her against individual infringers have, according she states. Various alternative revenue time spent in has been crucial as her to Ginsburg, not helped to improve public streams have been proposed, including the career has progressed. “I think I owe my job perception of copyright law in the US. “The suggestion that copyrighted materials to having studied in France,” she affirms. general public associates copyright with big become free for internet users while internet “My speculation that international IP would corporations such as Disney and doesn’t providers pay a percentage of their fees into be important turned out to be correct. The really think about individual authors,” she a pool to be divided among producers and year spent in a French law school proved very formative not just for learning IP, but for understanding other approaches to law in general.” There is a perception that copyright Ginsburg has taught French and US copyright law, as well as US legal methods owners are trying to squeeze every last and contracts law, at the University of Paris. She has also held the Arthur L Goodhart dollar for every possible use of the work Visiting Chair of Legal Science at the law faculty of Cambridge University and she has on the one hand; and on the other there returned there as a Herbert Smith Fellow during Michaelmas term 2008. is the propensity of ordinary people just To date, Ginsburg has penned over 100 articles and numerous books on copyright to take stuff and trademark law. She is widely regarded as one of the world’s foremost authorities on international copyright issues. One contribution of which she is most proud is

58 Intellectual Asset Management January/February 2009 www.iam-magazine.com IP Hall of Fame

Francis Gurry – rebuilding WIPO’s shattered reputation

authors. But such an approach has one fatal With a career at the World Intellectual “People were very frightened of flaw, suggests Ginsburg. “To turn all of Property Organisation (WIPO) that has regulation for several valid reasons,” says copyright into one enormous compulsory spanned more than 23 years to date, there is Gurry. “They feared a multiplicity of licence is very controversial. Copyright is not no doubting Francis Gurry’s qualification for inconsistent international laws which was no only the right to get paid, but also the right to the director-general job he formally assumed good for a global medium, and that the say no.” at the beginning of October 2008. growth of the internet as a social and The internet has opened the door to a Born in in 1951, Gurry technological phenomenon would be stifled new breed of amateur authors who, graduated from the by regulation.” With time, however, WIPO Ginsburg feels, often have little awareness of with a in 1976. Before joining was able to demonstrate the benefits of their rights and how best to make use of WIPO in 1985, Gurry spent time in private these services – including their speed and them. This inspired the creation of practice at Australian firms Arthur Robinson relative low cost when compared to litigation www.keepyourcopyright.org, launched by & Company and Freehills, and as a senior – and ensure their success. Yet Gurry is Columbia University last year. “The website lecturer in law at the University of Melbourne. under no illusion that ADR holds all the is designed to provide individual creators It was while studying for a doctorate in the answers. “I don’t think that it is a complete with information on how to deal with legal and economic analysis of trade secrets substitute for litigation, but it’s a very useful publishers or others to whom they are asked that Gurry’s interest in IP was piqued. “This complement,” he states. “ADR can provide a to grant some or all of their rights,” Ginsburg led me to consider whether, from the neutral forum in the context of international explains. While the website does not offer viewpoint of economic policy, we should transactions and can involve less legal advice, it translates the terms of a have a law that protected secrecy and at the confrontational procedures for resolving contract into plain English. “The website has same time have a law that business disputes where the two parties a database of contracts indexed with a encourages disclosure,” Gurry recalls. “And have to remain in contact.” rating system,” Ginsburg says. “The ratings also to consider what is the compatibility of While climbing the WIPO ladder, Gurry range from a green thumbs-up for author- these two things.” was at one time responsible for traditional friendly contracts to a large red claw for Gurry’s career with WIPO began in the knowledge and cultural expressions, and the incredibly over-reaching contracts. Development Cooperation and External need for a balanced agenda at WIPO that Unfortunately the largest number of Relations Bureau for Asia and the Pacific. addresses the intellectual property needs of examples we have are in the latter category.” He went on to head the Industrial Property both the developed and developing world is The internet has undoubtedly changed Law Section before joining the Office of the something he understands. That the position the landscape in which copyright law must Director-General. It was while there that Gurry of director-general went to someone from a function. Ginsburg sums it up: “The was instrumental in establishing the WIPO developed nation with a strong IP tradition, difference between the new technology and Arbitration and Mediation Center. Created in rather than a nominee from a developing what has come before is that end users are 1994 to offer alternative dispute resolution country, raised a few eyebrows in the IP engaging in acts which previously were (ADR) options for international commercial world. Yet Gurry insists that any fears or engaged in only by commercial disputes between private parties, the centre accusations that his background would intermediaries.” And it will require some launched WIPO’s Domain Name Dispute mean he favours a developed world agenda creative thinking about how to make the law Resolution Policy (UDRP). The UDRP, which are unfounded. “I think that it’s not possible work better for both the consumer and the was adopted by the Internet Corporation for in a multilateral organisation to make rights holder. “Figuring out how such a Assigned Names and Numbers (ICANN) in progress on one agenda alone, whether it’s pervasive copyright system should work August 1999, enables trademark holders who may require devising a more flexible feel that a domain name infringes on their copyright regime than the one designed for mark to file a case with a resolution service commercial intermediaries,” she says. She is provider, such as the Arbitration and under no illusion that reaching a solution will Mediation Center. be easy and appreciates that theory does Despite the eventual success of both of not always translate into practice. “In the these initiatives, they did not initially meet utopian view, the internet makes it possible with a warm reception. “The biggest for all authors to find a public who will not challenge we faced when setting up the only consume, but also – where the author arbitration centre was to establish trust and so requests – pay for their works,” Ginsburg credibility for a new institution in the world of explains. dispute resolution, because obviously “At the moment, the technology enables enterprises do not want to put their disputes authors to attain the first objective, but the with an institution that is untried,” explains second requires both the technological Gurry. As for the UDRP, there was initially innovations to implement easy means of much resistance from those that believed that payment and a willingness on the part of it would conflict with the widespread culture the public to pay.” of non-regulation on the internet.

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Francis Gurry continued

developed or developing countries,” he • The corporate culture of the surrounding intellectual property rights have suggests. However, while he is not naïve organisation, focusing on issues such as changed in recent years. “Many of the things enough to dismiss the concerns of the customer orientation. we confront now concern the use of IP as developing world, he believes that the • The efficiency of WIPO’s administration opposed to the issue or the grant of a title,” he debate is more complex than many suggest. processes internally and efforts to re- says. “We have all these issues out there now “Of course, I understand that there are vast, engineer them. about how IP is used – whether they concern very real differences across the world,” says • Restructuring the secretariat to make it litigation, trolls, licensing, the intersection of Gurry. “But as far as IP is concerned, it is too more responsive to new strategic goals the effect of on access to medicines, simplistic a view to say that all IP is held by and the objectives that the organisation the effect of technology in areas of climate the countries of the north (or the developed is supposed to be meeting. change and so on.” Going forward, Gurry countries) and that they exploit the countries recognises that WIPO must keep up. “We shall of the south.” Taking these steps, Gurry hopes, will focus increasingly on how IP serves innovation It was, he believes, because of his clear help to remind the IP world why it needs and creativity, and on the underlying social intentions to re-establish WIPO as an WIPO. For his part, Gurry is clear about the purpose for which we have intellectual organisation that people could have faith in – reasons: “Global issues and multilateral property,” he states. and not because of his nationality – that he solutions.” As international economic and It is as the rejuvenator of WIPO that won the position of DG. “In general, people trade barriers continue to break down, Gurry Francis Gurry wants his stint as director- wanted to see WIPO progress and that believes that WIPO’s role will become general to be remembered. “The objective is desire overcame political allegiances evermore vital to the continued success and progress on all fronts: a balanced agenda narrowly construed,” maintains Gurry. “The development of intellectual property. where everybody will be able to identify overwhelming desire was to see the “Because our consumption of technology is themselves in part of the programme and as organisation back on its feet again and increasingly global, many of the issues we part of the solution.” It is an ambitious aim making progress, and that led people to look confront in the area of IP are global in nature. and one that will ask a lot of an organisation at candidacies without necessarily holding to For those issues, any single country cannot that has spent many years mired in fixed, preordained political positions.” provide an adequate solution,” he explains. controversy. The need to reaffirm WIPO as a “The solutions have to be increasingly But with a pedigree of success and an trustworthy, reliable institution comes after multilateral to work.” in-depth knowledge of IP, Gurry could just the controversy surrounding the premature Gurry appreciates that the IP world is pull it off. If he does, he will deserve all the departure of the immediate past director- rapidly evolving and that many of the concerns plaudits that he will inevitably receive. general, . This followed allegations that he misled WIPO about his age when applying for the post. There were also questions over the way in which Idris In general, people wanted to see managed staffing and financial issues at the organisation’s offices in Geneva. As a result, WIPO progress and that desire WIPO’s reputation has been severely damaged both internally and externally. overcame political allegiances narrowly Gurry is eager to get the office back on the right track with a three-point plan. “First construed. The overwhelming desire of all, we need to have a greater external focus. We have been very introverted and was to see the organisation back on its inward-looking in the last couple of years and we need to focus on the programmes feet again and making progress, and for the outside world that we’re meant to be delivering. Secondly, we have to focus on that led people to look at candidacies the organisation having a service orientation. We are there to serve – whether it’s member without necessarily holding to fixed, states, or the users of our registration systems, or the general public. Thirdly, we preordained political positions need to create dialogue and communication. We have been isolated and cut off and we need to restore lines of communication both within the organisation and with the outside world.” This plan, Gurry explains, will work alongside a process of strategic realignment within the organisation. This will cover:

60 Intellectual Asset Management January/February 2009 www.iam-magazine.com Dolores Hanna – a trademark pioneer

Dolores Hanna set the first of many organisations to which I belonged,” she precedents in her career directly after says. “I want the younger generation to graduating from Chicago Kent College of know they have the opportunity to move Law. It was then that she became the first ahead and succeed without feeling they woman ever hired by IP boutique Fitch, have to defer to me.” Through the work they do with the US public Even, Tabin & Flannery. But it was not a But defer they should. Hanna served as school system’s science fairs, members passion for intellectual property that led her the first female president of the International hope to help inspire a new generation to to take the position. “When I interviewed Trademark Association (INTA) from 1984 to develop their interests and ideas. with the firm I really didn’t know that much 1985 and holds the distinction of receiving The promotion of IP is a theme that has about trademarks or IP,” she admits. “So it INTA’s first President’s Award. Furthermore, run through Hanna’s career. It is currently was a case that the firm was taking a chance as president Hanna requested a new look at evident in her efforts to educate and mentor on me as a woman, and I was taking a US trademark law and consequently set in young lawyers and students. She has acted chance on them to see whether trademark motion the first significant review of the as a role model specifically for other women law was an area I enjoyed.” Lanham Act. “We wanted to see if significant looking to enter and progress within the The gamble paid off and before long changes were needed to make certain that industry. As president of INTA, Hanna was Hanna achieved partnership at the Chicago- businesses and the public were given all the intent on paving the way for more women to based firm. It was while working for Fitch, necessary assistance to make trademarks follow in her footsteps. “I made it a point that Even, Tabin & Flannery that Hanna was work as they were designed to do,” she women were included in the important head-hunted by one of its biggest clients, explains. The subsequent Trademark Review committees and in any work of real Kraft Inc, which was establishing its Commission was appointed by the consequence,” she explains. Hanna’s headquarters in the Windy City. “Kraft asked succeeding INTA president, William promotion of women in law did not stop with me to join them as trademark counsel but I Finkelstein, and Hanna was asked to chair it. INTA: during her career she also acted as resisted for about a year as I wasn’t sure I Having studied the 1946 Act in great president of the Women’s Bar Association of wanted to leave my firm,” Hanna explains. detail, Hanna cites Fritz Lanham as a Illinois and of the Women’s Bar Foundation. However, she was eventually persuaded personal IP hero whose work in the Hanna recognises that while progress and, having made the move, Hanna went on development of trademark law she most has been made in the number of women to work for Kraft until its acquisition in 1988 admires. And she is proud of what the 1988 entering and succeeding in law, continued by The Philip Morris Company. Trademark Law Revision Act achieved. “It vigilance is required. Her contribution in this It was then that Hanna’s career turned strengthened trademark law and gave area was recognised in the mid-1990s when back towards private practice. She was trademark owners great opportunities, and she received an award from the Chicago Bar special trademark counsel at law firm Hill & made sure that the interests of the consumer Association’s Alliance for Women Simpson for several years before its were well protected,” she states. According Committee. “I feel I did make a difference in dissolution in 2000. Hanna then moved to to Hanna, one of the greatest achievements the organisations I joined, in that woman Bell Boyd & Lloyd where she headed up its of the Act was the adoption of the intent to have been recognised and are able to trademark group until, to their use application system. This enables those pursue an interest in those organisations,” disappointment, she retired in 2006. “I who have not yet used a trademark she says. And now that Hanna has laid the thought about retiring for about a three-year commercially, but plan to do so in the future, foundations, she is happy to stand back as a period, but every time I would approach the to have their mark protected until they are new generation of trademark professionals matter with management they would talk me ready to use it and apply for registration. build on her achievements. out of it,” she says. Hanna’s desire to see the rights of IP Hanna’s contribution to the trademark owners and consumers protected inspired community has meant that many have her to become a leading force in the regretted her recent withdrawal from day-to- establishment of the Chicago Intellectual I feel I did make day involvement in it. In fact, after advising Property Alliance in 2004. “We thought it the Public Interest Law Initiative – a would be very useful to have an area of the a difference in the Chicago-based organisation that creates country that could become recognised for opportunities for law students and lawyers to promoting and protecting intellectual organisations I provide public interest law and pro bono property,” she explains. “We wanted to be services to the disadvantaged – that she different from those organisations that simply joined would be retiring, its members subsequently explained the law: we wanted to work made her a life director. This ensured her together with businesses and organisations continued, albeit reduced, input. But Hanna to help them understand what IP is and how believes that it is time to enjoy her retirement it could enhance our way of life.” And the and give others the opportunity to make their Alliance intends to spread this message mark. “Since my retirement I have done my further than the business world by dedicating best to withdraw from most of the time to interaction with the wider community.

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Mike Kirk – a lifetime of service

If Mike Kirk had not been a soldier, the happen again soon and so when I got a call chances are that he would never have got from the then-president of the AIPLA to see involved with intellectual property. But while whether I wanted to take up the executive he was serving in the US army, he took on a director’s position, it set me thinking.” role that involved liaising between engineers Three weeks later, after being part of a to believe you. I can even see their influence and scientists at a research base in USPTO delegation celebrating the 10th in the Supreme Court’s decision in the KSR Maryland and patent attorneys working in anniversary of the Chinese patent law in case, written by Justice Kennedy.” Washington DC. Beijing, Kirk got on a plane to Japan to High-tech companies, he continues, are Kirk, who had trained as an engineer represent the AIPLA at a meeting in Tokyo. seeking to portray patent reform as a battle before joining up, enjoyed the work and And so began his 16 years at the head of involving just themselves and the life decided to learn more when he returned to what is probably the biggest national IP sciences industries. “They want to make out the civilian world. He found himself a job as organisation in the world. that this is a struggle between companies a patent examiner at the USPTO and studied With 17,000 members, two-thirds of that provide the technology products for a law degree in the evenings at whom come from private practice and one everyone enjoys and the big, bad pharma Georgetown Law School. He then went to third from industry, Kirk admits that it was multinationals,” Kirk explains. “But this is not work in the general counsel’s office at NASA, always important to balance the interests of the case. It is not pills versus chips; it is the before being called back to Washington DC different sections of the AIPLA. But, he feels, high-tech industry and some in financial and the USPTO when ex-NASA colleague by and large this was done successfully services against pretty much everyone else.” (and IP Hall of Fame inductee) Gerald during his tenure. “We got the American Although the legislation is stalled, Kirk Mossinghoff was appointed as head of the Inventors Protection Act, which brought in expects it to be reintroduced early in 2009 by office by Ronald Reagan in 1981. It was then things such as the publication of patent Patrick Leahy, its most prominent supporter in that Kirk’s career really began to take off. applications and inter partes re- the Senate. “The real issue is what will then “I got involved in the early 80s in a examinations, and we worked with the happen. It could be that should the same number of bilateral discussions between the Federal Trade Commission and National problems appear again, Leahy will decide he US and other countries – mostly in the Far Academy of Science to build support for wants to forget patent reform and do East – about linking IP and trade issues,” he further changes in the law,” he says. There something more productive instead.” explains. This was something that both the was also a series of amicus briefs filed in a Away from domestic US issues, Kirk is Reagan administration and American wide range of cases heard in US courts, very excited by the appointment of Francis industry supported – especially as there was including both patent and trademark cases Gurry as the new WIPO director-general. “I growing dissatisfaction with WIPO’s failure that came before the Supreme Court. In the am hopeful that he will return the to persuade countries to improve their months before Kirk’s retirement at the end of organisation to its rightful position as a world enforcement regimes. Born from these August 2008, the organisation filed a brief opinion leader,” he says. “I just hope that frustrations was a desire to take a new look against the USPTO (in Tafas v Dudas on people understand he cannot do it overnight at IP on the international stage; and so the proposed new claims and continuations – after all, it took 11 years to get into today’s TRIPs negotiations as part of the Uruguay rules) for the first time in its history. “I am not situation. But Gurry is the best qualified man Round came into being. saying the AIPLA could not have done a to sort it out.” Kirk believes that with Gurry at By the early 1990s, Kirk was heading up better job, but I think we acquitted ourselves the helm, there is a possibility that there may the international operation at the USPTO and rather well there,” says Kirk, who points out be positive moves towards greater he assumed the lead negotiating role as the that the organisation was the only bar harmonisation of the global patent system, TRIPs discussions entered their final, crucial association to have been involved in the especially if the new director of the USPTO – year. What eventually emerged was the most Tafas case in that way. who will be appointed by Barack Obama – comprehensive package of IP-related Now that he has left the AIPLA, Kirk is makes it a priority. “That could set something provisions ever seen in an international trade doing part-time consultancy work for the in motion. Quality patents internationally are agreement. For the first time, minimum Coalition for 21st Century Reform, a group in everyone’s interests.” standards of enforcement and protection that represents a number of companies that Kirk was at the recent meeting of the were to be obligatory for all those wishing to are opposed to the Patent Reform Act in its Trilateral Authorities in The Hague and was join the World Trade Organisation present incarnation. He has strong words for an active participant in the debates that took (established by the Uruguay Round) so as to those businesses that have been pushing for place there. International IP politics, it seems, obtain beneficial access to the markets of the Act to be passed by Congress. “I do not remains a passion for the man who has given other member states. Post-TRIPs, countries think that wanting to do something about a lifetime of service to the US IP community. would no longer be able to get away with issues such as damages and permanent And you get the feeling that, retirement or words; instead, they would be judged on injunctions is the problem,” he argues. “It’s not, if progress is to be made on international their actions. “That was the high point of my the way they have sought to make their harmonisation, Mike Kirk will somehow be career up to then and a high point of global point. When you say that the patent system involved. The fact is, his experience is just respect for and protection of IP,” says Kirk. “I is broken and needs fixing or that it puts too valuable. He will not be allowed to walk knew that something like that would not innovation at risk, a lot of people are going away, even if he wanted to.

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Niels Reimers – the man behind the RDNA licensing programme

Having earned degrees in mechanical Subsequently, the OTL was approved as a exclusive licences with favourable terms engineering from both Stanford and Oregon university programme with one director and were offered to industry with a deadline of State University, Niels Reimers served in the one secretary/office manager. December that year. Over 70 companies US navy before beginning his career in the Despite Reimers’ success in running the signed up and with the first year minimum aerospace industry. programme, the university’s controller, payment two months later, Stanford had It was in 1968, while working for Ford Kenneth Creighton, wanted him to return to netted an impressive US$1.4 million. In total, Aerospace as a division director of contract his position in research administration. He the number of RDNA licences granted administration, that Reimers accepted the claimed that there was no career path in the reached 467. And by the licence expiration, position of associate director of Stanford’s OTL and that such a move could be OTL had 369 active licensees and had Sponsored Projects Office. “I soon found out detrimental to his career. Reimers response received cumulative royalty payments of over that contract management in the universities was that “if I could have five years of such fun, US$250 million. is less interesting than in industry as you’re that would be the career of a lifetime”. He was Throughout Reimers’ career at the not at all involved in the research and its named director of the Stanford OTL and for Stanford OTL, it was his practice to contact outcome,” Reimers reveals. And the licensing the first few years of its existence continued to companies directly after a disclosure and and collaboration process was far more work as its only licensing associate. without a confidential disclosure agreement protracted. “When I first joined Stanford, the While at the OTL, Reimers became (CDA). “I was not averse to signing CDAs – contract management office practice was to involved in the creation of the Bayh-Dole just to the time it would take (pre-email) send an invention disclosure to Research Act. This pivotal piece of US legislation gave going back and forth in the mail,” he Corporation in New York City” he explains. universities IP rights over inventions resulting explains. Without a CDA or patent “In about six months we would hear back from government-backed research and application on file, it was a pretty brave step, from them on whether or not they thought it stipulated that inventors should receive a but one which Reimers believes paid off. was worth their filing a patent application for share of the income from the discovery. The “My focus in marketing a technology was the purpose of licensing.” effect was that almost immediately, collaboration between the company and the At that time, Research Corporation was universities saw the number of invention university in bringing a new product or managing licensing for several hundred disclosures grow phenomenally. process to public use and benefit, not a universities, covering all patent and licensing To criticisms that the Bayh-Dole Act has focus on the claims of a patent,” he points expenses and sharing net royalty income incentivised universities to pursue only out. “If our collaboration was successful, our with the client university. Reimers was lucrative avenues of research Reimers mutual objective was achieved, regardless of interested to see whether there was a acknowledges that “some universities have whether a strong patent might issue or not.” quicker, more lucrative method of gone too far in the search for the dollar”, According to Reimers, and perhaps commercialising the university’s inventions. but argues that this is not standard practice. contrary to the zeitgeist, strong and “I called around a few other universities with “In my experience, the main objective of any immediate IP protection is not always independent licensing programmes to see faculty member is to publish their research necessary. “There’s no need to get hung up how they were being run,” he says. Having findings promptly and contribute to the waiting for a patent application to be filed – seen that they were predominantly managed development of science and technology,” he or even necessarily decide whether to file for by patent attorneys and, on the whole, were states. In fact, he continues, it is more often a patent – before contacting companies not generating impressive revenues, he true that the most significant discoveries about possible collaboration or settled on a different approach. “I decided to come from undirected basic research. “If a development,” he insists. focus my efforts in the direction of scientist begins to focus on more applied technology marketing so that we would be research in chase of commercially useful on the front end of tech transfers,” Reimers outcomes, any discoveries tend to be only explains. This meant that rather than waiting incremental advances in the state of the art to secure a patent and then license an and less valuable from a licensing perspective; invention, marketing began on the and, frankly, less likely to receive peer technology promptly after its disclosure. recognition and research funding.” Having explained the merits of this The discovery which was to lead to approach to Stanford’s management, perhaps Reimers’ most celebrated Reimers was granted limited funding for a achievement during his career in university one-year pilot Office of Technology Licensing technology transfer licensing, the (OTL) programme to begin in 1969. “The pilot recombinant DNA (RDNA) licensing OTL was just me on a part-time basis,” he programme, was made in 1974. Having read recalls. But during this trial period Reimers about a new technique called gene-splicing brought in over US$55,000 for the university: invented by professors Stanley Cohen of more than 10 times what Stanford had Stanford and Herbert Boyer of University of generated in total in the prior 15 years of California, Reimers persuaded the scientists working with an external licensing agent. to let him patent their invention. Non-

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