National Academies Board on Science, Technology and Economic Policy Committee on Intellectual Property Rights in the Knowledge-Based Economy Workshop on Academic IP: Effects of University Patenting and Licensing on Commercialization and Research April 17, 2001 National Academies Main Building 2100 C Street, NW Washington DC 8:00 AM, Continental Breakfast. 8:30 AM, Session I: Issues in University Patenting and Licensing: View from Academia and Industry. This session will explore concerns and interests of the academic community and industry related to the patenting and licensing of technology by universities and the transfer of technology among universities and between universities and companies. The session will conclude with a brief review the latest data on patent applications, patent grants, licenses, revenues, corporate spin-offs, and equity holdings in corporate start-ups based on academic IP, both nationwide and in selected institutions that are receiving close attention from researchers. Moderator: Richard Nelson, George Blumenthal Professor of International and Public Affairs, Columbia University IP and Technology Transfer from the Academic Perspective Robert L. Barchi, Provost, The University of Pennsylvania Bringing Innovation to Market Daniel McCurdy, President, Intellectual Property Business, Lucent Technologies Trends in Patenting, Licensing and the Role of Equity at Selected U.S. Universities David Mowery, Professor, Haas School of Business, University of California, Berkeley Maryann Feldman, Research Scientist, Institute for Policy Studies, Johns Hopkins University 10:40 AM: Break. 11:00 AM, Session II: Effects of Patenting and Technology Transfer on Commercialization. The panel will consider first the effects on innovation inputs (information and human capital flows) and second the effects on commercial application of public sector technology. The session is organized to explore how experience with all main channels of technology transfer varies among research fields and industrial sectors. Questions include the following: • Information: Does patenting of public sector technology increase or decrease or more narrowly channel the flow of information into commercial enterprises? How does this vary by technology and institution? Does open publication or free access to information, such as DNA sequence data and software code, increase or decrease innovation in related fields? • Personnel: Does the ability to patent and license research findings affect corporate recruiting at universities? Is there a bigger and/or better talent pool in universities because of potential for monetary gains through royalties? Do academic innovators, motivated by the desire for monetary gain, interfere with the commercialization of their innovations? • Institutional Behavior: Are the actions of universities aimed at generating income or achieving the Bayh-Dole objectives as set forth in 35 U.S.C. §200? Do the actions of university technology licensing offices reflect the wishes and/or needs of the academic community, particularly the governing body or university head? • Commercialization: Is there evidence of success? What are the characteristics of commercially valuable public sector inventions? Through what mechanisms (licensing, R&D partnerships, equity investments, spin-offs, etc.) are they commercialized or do they contribute to commercial innovation? What kinds of firms make up the licensing population (large or small, established or start-up)? Does the profile of participants or the effectiveness of different mechanisms vary by technology? Does IP protection and commercialization of upstream inventions (e.g., gene sequences) help or hinder the development of downstream commercial products? Moderator: Bronwyn Hall, Professor of Economics, University of California, Berkeley Panelists: Donald Siegel, Professor of Industrial Economics, University of Nottingham Katharine Ku, Director, Office of Technology Licensing, Stanford University Don Felch, Manager, Growth and External Collaborations, UOP,Inc. Jack L. Tribble, Patent Counsel, Merck & Co. Inc. 1:00 PM, Lunch 1:45 PM, Session III: Effects of Patenting and Licensing on Research. This session will examine five potential impacts of patenting and licensing activity involving the results of Academic research. It will consider whether any effects vary across types of institutions. • Financial resources: How effective are patenting and licensing in generating revenues that are allocated to research rather than administration? What kinds of research are supported in this fashion? Are there cases where the costs of these activities (e.g., technology transfer staff, public relations expenses, IP defense and litigation expenses) are actually a drain on research funding? • Information and other resources: Are researchers able to access the tools and data needed to carry out their research? What has been the effect of the NIH guidelines on ease of access to research tools? Does patenting and licensing affect the flow of information, data, and materials from industry to academia? • Personnel: In what circumstances do increased interactions with industry help or hinder efforts to recruit and retain good faculty members? To what extent has entrepreneurial activity become a criterion in hiring, promotion, and tenure decisions? Do administrative processes involved in acquiring, exercising, and defending IP rights draw time away from research? Is the ability to form start-ups with university support taking talent away from research and teaching? • Communication: Is information flow in the academic community reduced or delayed by proprietary considerations? Are data more frequently retained as proprietary information and not published than was the case prior to 1980? With what consequences? • Character of research: Have patenting and licensing forced decisions to avoid pursuing lines of research because of potential infringement considerations? If so, why and with what frequency? Is there evidence of a shift on the part of some institutions, departments, or investigators from curiosity-driven fundamental research to research with shorter-term practical applications or from fields less conducive to patenting and licensing to fields affording more such opportunity? Whether or not there is currently evidence of such effects, how could they be monitored? Moderator: Wes Cohen, Professor of Economics and Social Sciences, Heinz School of Public Policy & Management, Carnegie Mellon University Panelists: Marie Thursby, Burton D. Morgan Professor, Krannert School of Management, Purdue University Eugene Bauer, MD, Vice President for the Medical Center and Dean of the Medical School, Stanford University Joan Leonard, Vice President and General Counsel, Howard Hughes Medical Institute 3:30 PM, Break. 3:45 PM, Session IV: The Implications of State Immunity. This session will examine the ramifications of the Supreme Court’s sovereign immunity decisions. Questions to be examined include: • Are state universities claiming immunity? • Is there any evidence of infringement? • Does legal immunity affect industry attitudes toward research collaboration or licensing arrangements with public institutions? • Is there a need to restore a level playing field? • What are options for doing so – e.g., federal legislation, state waiver legislation, institutional waivers, etc.? • What data, if any, are needed to determine if a remedy is needed? Moderator: John Barton, George E. Osborne Professor of Law, Stanford University Panelists: Julie Katzman, Democratic Counsel, Senate Judiciary Committee Justin Hughes, Office of Legislative and International Affairs, USPTO James F. Shekleton, General Counsel, South Dakota Board of Regents 5:15 PM, Wrap-up Discussion This session will begin with a statement summarizing what we do and do not know, what are the research needs and priorities, and what are promising approaches for further addressing the issues. 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