Who owns what?
Intellectual property issues
in our universities
by Martha Crago
ntellectual property is important in our
universities but it sometimes raises thorny
issues. Unlike the United States, which has
the Bayh-Dole Act (legislation governing
intellectual property generated by federally
funded research), Canadian universities are free
to have their own individual IP arrangements.
The Bayh-Dole Act permits 50 percent of the IP
to be assigned to the researcher and another 50
percent to the university. This act presumes that
the universities will play a role in the protection
and commercialization of the IP. Certain institutions, such as MIT, contribute a certain portion
of their share back to the researcher.
In Canada, universities assign IP in their own
individual ways, with most resembling the
arrangements made in the U.S. There are only
two to my knowledge that assign 100 percent of
the IP to the inventor. They are the University
of Waterloo and Dalhousie University. This type
of arrangement presumes that the inventors
themselves will look after the protection of their
IP and move it to commercialization on their
own with less than full support from the university. In the case of Dalhousie, if substantial support is provided to the inventor, the IP is split
with the university.
This, then, raises the issue of who the inven-
tor is. There can be several different types of
individuals involved in the research that leads
to an invention. For instance, is it the professor
alone or is it the professor with one or more stu-
dents, one or more postdocs and/or one or more
non-student research employees? Students, both
graduate and undergraduate, may be engaged in
several ways, for example, as employees if they
are research assistants or undergraduates doing
a work term. Or they may be involved as a re-
searcher doing a thesis or senior project/honors
project, or in some cases perhaps as part of a
Many universities’ policies do not address all
of these types of involvement in a clear manner.
This can create a complex and potentially con-flictual situation because principal investigators
may not realize that the IP generated in such
relationships should be shared with the students.
Non-student research employees working with
a principal investigator may also have a share in
developing the IP. They, too, need to be covered
in our policies.
The importance and complexity of such IP
issues means that all of our universities need
solid, well-articulated and transparent policies
as well as guidelines for best practices about how
to arrive at an IP agreement. Ideally, guidelines
should describe how the involved parties will
have clear explanations and draw up agreements
in writing at the outset of a relationship. IP
agreements should be made clear to our students,
postdocs and non-student research employees
before they accept their positions, stipends or
salaries. Problematic intellectual property issues
tend to arise “after the fact” whether they are
with a company, student, employee or postdoc.
Explanations and decisions about IP should
occur in the presence of a well-informed third
party. Professors, by their very positions, may
have undue influence over students, postdocs
and employees. There is considerable variation
in people’s knowledge about IP. Some professors
are well-informed about IP. Unfortunately, this
can sometimes lead them to use their knowledge
to their own advantage when dealing with train-
ees or employees who do not understand what
they should be agreeing to. Other professors
have a more superficial understanding and lack
the guidance or best practices to deal with their
trainees’ or employees’ involvement in IP.
There are also some professors who do not
see any value in IP. This may result in certain
opportunities being denied to their trainees. For
these reasons, universities need to provide ongoing and clear information through a variety of
channels to their professors, students and
research employees about exactly what intellectual property is and what policies their university has that govern it.
Finally, IP policies and best practice guidelines need to be clear on the arrangements that
will be acceptable for theses defenses and for
embargoes of publications involving shared IP.
Universities need procedures for non-disclosure
agreements at certain thesis defenses and students need to be extremely clear about how long
their thesis or other publications can be held up
due to IP agreements. Our universities make
many important intellectual and economic contributions to society. We need to be sure that the
intellectual property generated by them is handled in a respectful, well-informed, equitable,
fair and transparent manner.
Martha Crago is vice-president,
research, at Dalhousie
University. Her column
appears in every second issue
of University Affairs.
“ There can be several
different types of individuals
involved in the research
that leads to an invention.”
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