Intellectual Property Management
Challenges Facing Business and Academia

Dave Tyrrell, Vertex Intellectual Property Strategies Inc.

Business and academic fraternities have quite different objectives when it comes to the initiation, development and application of intellectual property, and the management of proprietary technologies and knowledge.

In the business world, intellectual property decisions are ultimately based on the desire to generate profit and to strengthen the long-term viability of the business. Technology-oriented big businesses generally budget for patent activities, including policing of the rights. They often have multidisciplinary committees and mechanisms in place to review patentable inventions, set strategies, file patent applications, submit patent maintenance fees and direct enforcement of their patent rights. Small and medium size businesses generally do not have a formal patent process. These businesses tend to manage their intellectual property on an ad-hoc and opportunistic basis.

On the other hand, the academics are driven by the desire to expand knowledge, gain recognition for their work and enhance the prestige of their institution. The age-old maxim has been 'Publish or Perish'. During the 1980s and 1990s, Canadian universities started to consider and apply an alternative approach to capitalize on their knowledge. University-industry partnerships were established to help move new discoveries and technologies produced at the universities to the market place. In Canada, business funding now accounts for approximately 20% of all university research funding.

The industrial partner's need to secure a competitive business position makes it highly desirable that university developed inventions and technologies can be protected through patenting. As a result, industrial partners are more interested in working with university researchers who have kept their work confidential and who are willing and able to assist the industrial partner obtain patent protection on commercially viable technologies. When research is done in collaboration with industry, it is industry that generally wants to dictate how intellectual property rights will be handled and shared with the researcher and the university.

As we enter this new millennium, Canadian universities are being forced to be accountable for effectively utilizing government support, which accounts for more than 50% of all university research funding. In fact, some government funding programs, such as those administered by organizations such as MMO, require that the faculty engage corporate technology commercialization partners. Industrial partnerships that effectively commercialize university-developed technologies serve to create jobs, wealth and often provide other intangible benefits. The realization of these benefits will assist governments to demonstrate the wisdom of continuing the existing funding programs.

Although the major thrust of the academic fraternity continues to be the publishing of development results that may be patentable, businesses are having an ever-increasing influence on researchers' decisions to patent rather than publish. As a condition of providing research funding, researchers are often required to keep their work confidential in order to create a business advantage. Researchers are required to limit their publications to timely, non-business conflicting, and non-business sensitive disclosures.
The challenge currently facing businesses wishing to fund work at universities as a means to access new leading-edge technologies is how to structure agreements with the university and its researchers. The arrangements must provide the researchers with a suitable financial reward for their efforts while at the same time assuring that the commercial value of the intellectual property is clearly understood, addressed and protected.

On the other hand, university professors must weigh the value of the prestige and recognition attained through publishing versus the financial rewards available by collaborating with industry. The maxim of the university professor may soon become 'Patent or Perish'.

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