“To own, or not to own?” A comparison of IP policies
Comments on an article by Halilem et al. published in 2017.
The original article
Halilem, N., Amara, N., Olmos-Peñuela, J. and Mohiuddin, M. (2017) ‘“To own, or not to own?” A multilevel analysis of intellectual property right policies’ on academic entrepreneurship’, Research Policy, 46(8), pp. 1479–1489. doi: 10.1016/j.respol.2017.07.002.
Halilem et al. tested the influence of three aspects of IP policy on the likelihood of researchers being involved in formal or informal commercially-oriented activities. The three tested aspects were:
Automatically assigning IP ownership to the university vs. to the inventor.
The obligation to disclose inventions and the length of the university’s option to commercialise an invention.
Income-sharing schemes when commercialised by a) the university, b) the academic.
More detailed comments
Unlike the USA, Canada does not have an equivalent to the Bayh–Dole Act. Each Canadian university sets its own rules regarding invention ownership and commercialisation. With this in mind, Halilem et al. studied 27 universities in Canada to investigate the way in which differences in commercialisation policy influence behaviours of academics. Specifically, the study looked at the likelihood of researchers being involved in two types of commercially-oriented activity:
Formal commercialisation, which means applying for a patent or forming a spin-off. Formal commercialisation implies forming a legal instrument such as IP and may generate revenue for the university. Formal commercialisation involves the university’s “knowledge and technology transfer” (KTT) office.
Informal commercialisation, which means knowledge transfer through a consultancy or other contractual agreement or between a researcher and a private actor. Informal commercialisation may not involve the KTT office and is therefore less traceable than formal commercialisation in terms of impacts on the economy and society.
1. Ownership of IP: university ownership vs inventor ownership
In some of the studied universities, IP rights are automatically owned by the university, while in others, IP rights are owned by the inventors by default. Does the ownership of IP rights affect the likelihood of academics being involved in formal or informal commercialisation? No significant effect was found in the study.
2. University control over inventions
Does the level of control exerted by universities over inventions affect the likelihood of academics being involved in formal or informal commercialisation? Two types of control were considered:
an obligation for academics to disclose inventions to the university
the period of time in which the university has an option to commercialise an invention.
Both factors were found to significantly reduce the probability of applying for a patent. It seems that a perceived loss of discretion in relation to patenting has the effect of discouraging researchers from disclosing and patenting their inventions. In other words, a greater level of academic freedom translates into greater levels of formal and informal commercialisation.
Perhaps researchers would be more willing to disclose inventions when they are confident in the university’s ability to commercialise inventions in a reasonable timeframe, but the study did not investigate this issue.
3. Income sharing
When an invention is commercialised, does the share of income received by the university influence the likelihood of academics being involved in formal or informal commercialisation? The study looked at two commercialisation scenarios:
a) When an invention is commercialised by the university (not a researcher): a higher share of income for the university reduces researchers’ engagement in formal commercialisation. Therefore, increasing a researcher’s share of income increases the academic’s willingness to patent.
b) When an invention is commercialised by a researcher (not the university): the share of income for the university does not affect patenting but significantly increases informal commercialisation through consulting. The more the university earns from patents, the more the researcher will prefer to do consulting instead of patenting.
Therefore, in both cases, increasing a researcher’s share of income increases the academic’s willingness to patent.
Data used in the study
Halilem et al. studied 2230 professors in 27 Canadian universities, funded 2003-2007 by the Natural Sciences and Engineering Research Council of Canada.