Is it fair to criticise universities for protecting their intellectual property (IP)?

I recently read an article (here) arguing that US universities lose millions of dollars chasing patents and suggesting that many universities should simply stop filing patents. Although the author was specifically referring to US universities, it could be implied that they were suggesting that their findings were more widely applicable and not just directed at US universities.

Before providing my comments, for full disclosure, I am a patent attorney who works with many universities in the UK and Europe, providing strategic IP advice, and filing and prosecuting patent applications. I also prosecute patent applications in Europe and the UK that are filed by US universities. Hence, some readers may consider that I have a vested interest in advocating for what universities are trying to do.  That said, I feel it is appropriate to comment on some of the points raised in the article, to provide a counter-balance to some of the views expressed.

The article refers to earlier research suggesting that university technology transfer offices (TTO) are costly to run and that under half of the TTOs pay for themselves. I certainly do not disagree that TTOs are likely to be a significant expense for a university, but would argue that one cannot simply place the value of a TTO on licensing revenue from intellectual property (IP) alone. Whilst university TTOs are certainly concerned with IP management and revenue generation therefrom, they are also concerned with facilitating industrial and third-sector partnerships; education and training of academics and students on commercialisation activities (and all staff and alumni in some institutions); supporting spin-out formation and securing financing; applying for translational research funding (which may not be available through traditional grant funding routes); and have a broader role in promoting the innovation ecosystem internally and externally for wider public benefit. Thus, whilst one metric of a TTO's value to a university may be based on licensing revenue, it is too simplistic to suggest that this represents the only value.

The article also suggests that every hour a professor spends on patenting is an hour not spent writing grant proposals. Again, this is a rather blunt statement. The author does not appear to consider how much time an academic would actually spend during the patenting process, or the value this could provide. More often than not, when an academic comes to me with a new patentable invention, I will ask them for a formal write-up of their invention and a draft scientific paper, or a new grant proposal is often an ideal starting point. Writing scientific papers or grant proposals is often a team effort and so the time spent is shared among the authors. Moreover, whilst any patent application should be filed before any work is published, the patent drafting and filing process does not generally hold this up and encourages academics to draft a paper or write a new grant proposal in the first place. Arguably, the most important objective of a research academic (other than teaching) is to generate impact from their research and whilst publishing can achieve that to some extent, IP protection gives academics more routes to impact, including via commercialisation. 

Many academics now have an entrepreneurial mindset and so want to engage with a university's TTO, looking to commercialise IP and generate societal impact from their research.  These academics need to be encouraged to follow such goals and not simply told to go and write more grant applications. Furthermore, grant funders increasingly require IP protection and an IP strategy to be in place and so academics need to consider IP and the important role it can provide in terms of furthering their research. It is unlikely that any companies looking to collaborate with any academic research team would engage with universities that ignore the IP system. Arguably, there would be too much risk and not enough potential reward for any company working with a university not looking to protect their IP. 

It is also important to appreciate that discussing academic work with a patent attorney can help crystallise and develop the scope of protection in a broader way than originally envisaged by the academic team. This can open up new areas for the work and lead to funding proposals the academics may not have previously considered. 

As the article suggests, academics generate income through tuition and research grants. It is therefore important to retain the best academics and support them if they want to protect any IP generated. As mentioned above, many academics now have an entrepreneurial spirit and if their university does not support this, they may consider simply moving to another university more willing to support their endeavours, at what ultimate cost to the university? Research grants generally go to the academics and if they leave a university, then the research grant often goes with them. Universities that foster the best environments for their academics, including managing their IP, will benefit most.  

As mentioned above, spin-out formation is an important role of many TTOs, but initial licensing fees from the spin-out may be small. However, the university will generally have a stake in the spin-out and hence want them to succeed. Moreover, as a spin-out grows, this creates new jobs and opportunities for revenue generation. Once any product or process is commercialised, or the spin-out sold, royalties or monies from the sale may return to the university, with many institutions disbursing a significant proportion (up to 80%) to academic inventors. Thus, whilst spin-outs may be seen as risky, the potential returns to a university and its academics can be considerable. Moreover, many large corporations have subsumed, or were themselves originally, university spin-outs. If a university had not originally patented the IP and licensed it to the spin-out, then no revenue from the IP would have returned to the university. Therefore, the value of any patent applications filed may be difficult to quantify initially, and their true value may only be realised many years down the line. 

I hope that my comments above provide an alternative view to the value of patenting to a university. It is certainly the case that any applicant, not just a university, needs to consider the potential value of patenting, but it is not always something that can easily be quantified simply in terms of a monetary gain.