Stanford to researchers – you don’t get squat.

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I’m working on a semiconductor startup right now, and so intellectual property is a very important part of our value proposition. Throughout my career patents have always been a significantly involved in the startup process, they are much more important in this semiconductor context. Certainly more than in web software, but as the Nortel Patent portfolio’s sale this week attests its important in all tech sectors. 

My learning curve on this front has been pretty insane and I try and keep abreast of the Laws and ever changing definitions of prior art in the U.S.. Beyond that I also get a sense of the broken system that is IP law in the USA. As an innovator you want clear and concise was to protect you inventions. And if you’re a researcher you want an opportunity to make money off them. 

In the USA, as in Canada a lot of federal funding goes into Research in university and government labs. The governments of both countries have created laws that say they hold no right for any innovations that come out of their funding – they are owned by the patent holders. Essentially, they want the technology to be clear and free to be commercialized and they’ll win through taxes if it works out. Its a public good thesis – and this clear statement of the ownership of what their research dollars produce is meant to make investors comfortable. 

Stanford University is trying to muddy the waters on this front and as this is a significant part the innovation ecosystem I’m surprised the blogoshpere isn’t watching this case more closely. 

Stanford is suing a former researcher who worked part time at their offices and part time on a private company. Stanford is suing that since the researcher used some of Stanford’s research funding they should own the entirety of the resulting innovation. All emphasis my own:

In support of Stanford, the Association of University Technology Managers (AUTM) and several large research universities claim that the federal Bayh-Dole Act automatically overrides otherwise valid contracts. AUTM argues that universities automatically receive 100% of all rights to all inventions arising in any part from federally funded research. AUTM argues that an inventor’s intellectual property transfers with no requirement for any written assignment, without notice or due process, without inventor compensation. According to AUTM, the Act alone vests 100% exclusive title and patent rights, total authority and sole discretion to make license decisions, solely in the university; even when the patent includes inventions formerly owned in the private sector.

As anyone who knows how difficult it is to work with Tech Transfer office can attest – making that process more difficult will kill the commercialization cycle with universities involving federal dollars.. pretty much the goal of federal research grant to universities. 

And while we might sit here thinking this doesn’t have any relevance to Canadian tech – RIM and numerous other companies provide R&D funding in conjunction to federal funding down south. The biotech research that goes on in the US and Canada is even more integrated with joint research initiatives, with federal dollars from both countries. Are we now to believe that Canadian tax payers helping to fund joint research between Canadian and US institutions (where some US fed grants have come forward) have given up all of the IP derived from the work. I don’t think so.

Hopefully Stanford gets smacked down, this silliness is from the school where two of their research graduates – using federal funding – started Google.  

 

 

The Author

Hi. My name is Matt Roberts, you can find me at www.mattroberts.com.

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