The battle for rights to ideas

June 16, 1995

Who should own intellectual property, the researcher, their university or the funder? John Davies reports. If you are a postgraduate research student and discover something that can be exploited commercially, will that discovery belong to you? Who will be entitled to any profits: you, the university, or a third party that has funded you? What intellectual property rights (IPR) should a higher education institution have?

One answer comes from a recommendation in a 1991 Committee of Vice Chancellors and Principals paper, which says that "ownership of intellectual property arising from research projects should be vested in the university". Another comes from Philip Wright of the CBI's Inter-Company Academic Relations Group (ICARG): "There are some companies who require assignment of IPR from any postgraduate student they fund."

Then there is the opening sentence of the policy recently agreed by the National Postgraduate Committee (NPC): "All rights to any intellectual property generated by a student in the course of their studies will rest with the student," although the policy does include conditions. At Cambridge, Richard Jennings, director of the university's industrial liaison and technology transfer office, agrees. "We would say that copyright in theses belongs to students rather than the university. But external obligations to sponsors have to be carefully taken into consideration."

And Wright emphasises that "companies do not just rip out the intellectual property without rewarding universities. We encourage partnership. I think all companies would recognise that the prime purpose of a PhD is education, and students are producing a thesis at the end of the day".

Nevertheless, universities are increasingly asking their students, when they matriculate, to sign agreements that limit their IPR. Take London's Imperial College. David Thomas, pro rector for research contracts and chief executive of its technology transfer company, says: "A student signing on here agrees to abide by the regulations, one of which is that if he or she invents anything that generates any intellectual property of commercial value, he or she is under an obligation to assign that to the college." In exchange, the college agrees to treat that student on a par with members of staff when it comes to royalty-sharing.

"We're not taking anything away from students. We're making it easier for their IP to get to the marketplace. If a student and his academic - or maybe the student on his own - were very keen to go and start up a company, and it was judged he was the right sort of management material, we would not object to that."

At Oxford the policy is similar. James Hiddleston is managing director of Isis Innovation, which is wholly owned by the university. "The university has a licence from the research councils to exploit work funded by them. Isis Innovation carries on that exploitation. Students and academics get a reasonable percentage of revenue after Isis Innovation has deducted patenting and other costs and its own share," he says.

Legally a student owns the copyright of a thesis and any IP arising from it, says Alexander Carter-Silk, IPR specialist with the London solicitors Edward Lewis: "The only way to transfer it is by legal assignment."

But assignment is increasingly what universities are seeking. Proposals "to reward students on a managed basis" are going through committees at Essex, according to academic registrar Moira Collett. Other universities' rules, she says, "vary between incredibly complicated and incredibly brief. We're going for the brief side".

But some postgraduates are uneasy. Richard Conroy, the NPC's academic secretary, is a PhD student in physics. He has a research council award topped up by an annual Pounds 2,000 from a company that has signed a licensing agreement with his university.

"The agreement said that basically we would make our work available to the company, and they would have a say, for example, on whether we publish it or not," says Conroy. "But when I got this award the full conditions were not spelled out."

Despite his fears, the company has not yet objected to his presenting papers at conferences.

Problems could arise if the body claiming the IPR to a student's research wants to file for a patent: if an invention has already been disclosed to a third party, it will not be given a patent.

A commercial sponsor might ask a researcher to delay publication of a paper about a discovery until after a patent is filed for it. But London University rules that nobody can enter into a contract with it that would hold up publication for longer than two years. Imperial College's Thomas says: "We go for not more than six months to a year. If a company said 'We don't want to patent this, we want to keep it absolutely secret,' we couldn't do deals with it. We're an academic institution and that's our lifeblood."

Patenting is usually quicker than publishing an academic paper, says Jennings. Hiddleston says: "Sometimes we have embargoed a thesis lodged in the Bodleian library. This ensures that it's not a published document, and therefore we can file a patent application."

Universities have not always proceeded so carefully. As well as handling Jo Barr's grievance (see right), Alexander Carter-Silk has taken up the case of a former PhD chemistry student who, ten years ago, "produced a clearly patentable idea". His chance of taking out a patent was wiped out when his college published his discovery without his permission. Subsequently, the idea went on to make a lot of money for the company that developed it but none for him.

"We have advised that the college owes a duty of care to its students not to destroy a patent," says Carter-Silk. "We are seeking compensation for what the researcher would have earned in royalties."

This inequality between researcher and institution worries Conroy. As a postgraduate student, he says, "you can't negotiate your position with a university. You have to agree to their rules and regulations if you want to get in in the first place".

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