Universities and Intellectual Property: A Minefield?
One of the things that I never understood at NYU is what are the rights that the university has on the work produced by the faculty members and students.
Following the intellectual properly law, there are four basic types of intellectual properly:
- Copyright
- Patents
- Trademarks
- Trade Secrets
For the work of faculty, I always felt that everything falls into a grey area. Most of the work is made public as soon as possible. Code is often released as open source, following some pretty liberal licensing scheme, or even released to the public domain. Papers are written and publicized without much, if any, vetting and the algorithms and methods described there are typically in the public domain. The only case where a university has some control over intellectual property is when a patent is filed and granted.
Now, the great confusion arises when the faculty wants to work with a corporation and the university allows faculty members to engage into consulting agreements. Who owns and controls the expertise and discoveries of the faculty member?
Let's say that myself, Panos, invented an algorithm in area X, wrote a paper, and published the code in an open source format. Corporation A, comes to me and asks me to consult them on area X. What is the control that my employer, NYU, has on my work? Yes, Corporation A wants to hire me because of the IP that I produced while at NYU. This IP though is publicly available, so I do not really transfer anything protected under copyright law.
I have asked this question to our own tech transfer office. Unfortunately, I did not get back a clear answer. They told me that I cannot transfer code and that any patent is owned by NYU. Correct, these are indeed intellectual property assets. (Although for the case of open source code, this is again confusing.) But what about the expertise that a faculty member develops? In corporations this is often protected using some no-compete clauses in the employment contract, effectively preventing employees from directly transferring know-how. In universities, there is no such provision.
I find this merging of academic and corporate worlds to be particularly confusing and I find this to be a potential minefield. Who owns what? Any ideas? Any experiences? How other universities treat the concept of tech transfer?
Ironically, in the NIH and NSF grants we, a private company, have written with universities, the universities have been more paranoid about IP than us and didn't want to freely open source software. In some ways, I think it's a shame that the government funds universities and then lets them keep the IP rights (that applies to us and the SBIR grants and DARPA grants we've gotten, too).
ReplyDeleteAt Bell Labs (and presumably at other large corporate research labs), the trick was to convince management what you were releasing couldn't possibly be monetized. Or that there'd be bigger benefits in sharing because it's not a core competency of the company.
What do you find confusing about NYU owning the rights to your code? You can't reassign copyright, but if the university approved an open source release that's out there, then anyone can use it according to the terms of that license.
Often universities give you a one-day-a-week option to consult without IP entanglement.
Companies usually let you own things you create that are not company related and not produced on company equipment (e.g. if I write open source games on a non-company-owned computer).
The story of Stanford and Google is interesting, but I'm not sure what Stanford owned of the IP:
http://www.matr.net/article-11816.html
Or why, given that much of the work was NSF funded.
I saw this a fair bit during my grad work at University of Ottawa back in the '90s; a number of grants were being paid by Nortel (back when they could do no wrong!), and it distressed me a fair bit how proprietary the result were.
ReplyDeleteIt seems to me that if you're doing research to attain a degree at a public university, then this research ought to be contributing to the public body of knowledge, with the result that the work has *got* to be released under some form of "free/libre" terms.
Notably, the thesis needs to be released to the university as well as (in my country) to the Public Archives of Canada, since the degree is granted under the auspices of the Government of Canada.
If the results of research are held "totally proprietary," then there seems something at least somewhat incompatible with this taking place at a university.
Bob, I would not find confusing if there was a policy for regulating the release of any intellectual property both for papers and for code. However, my understanding is that there is none. De facto, every faculty has the right to release any code, in the same way that faculty members assign the copyright to publishers for their papers.
ReplyDeleteLet me suggest a fictional scenario: Suppose that we work together in a university and we develop an algorithm, say for a recommender system. We realize that it works fantastically. We publish the algorithm in a conference and the associated code as open source.
After a couple of years, we realize that nobody is actually using the algorithm and we start a company to commercialize it. The algorithm was invented while both we were working for the university. One the other hand, everything is public. What does the university own, if anything?
The Google example is illustrating but there the system was running on Stanford hardware for a while and the code was not released as open source. Perhaps there were a couple of associated patents as well (?). Especially in the case of patents, I understand the notion of licensing. But without patents, I am still confused.
The NSF/NIH/DARPA/government funding issue is much bigger and I will agree with you that is absurd to have proprietary software generated through public funds. However, we have other types of government-funded private property (e.g., public housing turning private), so this seems to be a topic for a separate discussion.
Pano, at the UC we had a fairly liberal approach to commercialization of work that was published through the standard academic channels first. Go make money but please remember about that nice university that helped you to begin with.
ReplyDeleteThings are a bit different when it comes to licensing patented or otherwise protected technology.
The liberal policy of the UC has never been stress-tested: for example we never had something the caliber of Google coming out of the school, so I dont know how we would have reacted to such opportunities.
On the other hand, here's a sample of a specific IP policy that is neither too liberal nor too restrictive:
http://www.nova.edu/cwis/hrd/orientation/forms/copyright.pdf
My take is that universities shouldn't be playing the IP game because more often than not the government paid for it, and because it's not cost effective anyway.
ReplyDeleteThis is an interesting subject with great gaps between de jure and de facto. First, as a university employee, your IP belongs to the university. As such, it isn't really your decision to give away the university property. This obviously excludes the IP created for the corporations within appropriate consulting agreements as allowed by the university policy.
ReplyDeleteSecond, you have a duty to report to your university any IP that is worth protecting. This is usually written explicitly in the contract. The university must decide if they choose to protect it by filing a patent. Not only this is expensive, but it must be done *before* any publication to obtain maximum patent protection. If they apply for the patent after any public disclosure(within 1 year) they'll be able to get only a US patent, but not an international one.
In practice, researchers don't care about the patents unless they want to start a company to commercialize the product. It is rare that we (in CS) patent things before submitting them for publication. The schools would be quickly out of business if we tried to patent every single paper we publish. Some universities are very tight on their IP, while some schools are fairly relaxed.
At UIUC, there's an Office of Technology Management who is in charge of resolving these matters. For IP protection and software release one would contact them. To play it safe, you should explicitly ask the university, if it's ok to release code and under which license. I went through that with my Mech Turk image annotation tools and UIUC was really easy on that. They allowed to release it under BSD license to host on Google code.
The interesting part is whether universities should engage in patent protection at all. Quite obviously, patents often make money for the universities and help finance the further research and teaching. On the opposite side, the mission of the schools is to spread knowledge and encourage research and innovation. The patents formally create monopoly in the space of knowledge and create roadblocks for innovation. As such, patents are absolutely contradictory to the core values promoted by the universities.
As has already been mentioned, the research is often paid for by the public. In that light the university has a moral obligation to assign the knowledge it generates to the public domain without excluding anyone from using it.
I'm not entirely convinced of the "public paid for it" part, since (a) not all research is funded and (b) funding sometimes pays for the basic research but not whatever incremental effort is required to turn the results into a product.
ReplyDeleteMy institution (Michigan State University) has what I think are relatively clear guidelines on IP, and they tend (as far as I know) to permit the researcher to share in the rewards. (Disclaimer: I have no useful thoughts, so I have not tested the IP guidelines in any way.) As far as using the acquired expertise for pay, I think MSU's two main concerns are that I not compete directly with them, and that I not moonlight (we have limits on how much outside work for pay a faculty member can do).
I've been known to collaborate with faculty at other institutions on the using meaningless academic research. What I wonder sometimes is, if we accidentally came up with IP that could be made profitable, how would the respective institutions sort it out? Have the marching bands square off at a neutral site?
If you collaborate with someone, the invention is owned jointly, unless you have explicit agreements on that. This means lawsuits. Part of the problem is that it's better be safe than get into a legal battle with a university. The schools usually have unlimited resources compared to a small startup. Even the possibility of a bad lawsuit is devastating for the company, as it scares off the investors.
ReplyDeleteThe University is the Temple of Science. It is not Yet Another Market Participant! As such, it should (be forced to) unconditionally release all work, including code, PhDs etc. to the public domain.
ReplyDeleteSometimes, Universities are forced by law to "not give away the fruits of their research for free", because, it is argued, that would be investing tax money and not getting anything back for it. But this argument assumes that a University *must* make some "Return on Investment". This would be true if a University were Yet Another Market Participant - which it is NOT: it is the Temple of Science.
Asking license fees for work that was produced at the Temple of Science means nothing else but erecting tall market entry barriers to all those who paid for it (indirectly through tax money) and cannot afford the license fee. If, for example, in order to make some new and useful product (to "innovate" as we say), I need 10 pieces of software, produced at Universities, costing $10,000 in license fees each, then you can see that I will never manage to cross that barrier (of $100,000 height), unless I have big pockets.
We don't need to subsidize Yet Another Market Participant. We have the Market for Market Participants. Universities should be outside Markets. They are (they want to be, right?) Temples of Science.
And we need another Jesus to throw the merchants out of the Science Temples!
I recommend you read Management of Technological Innovation, written by Melissa Schilling, who I believe is a professor at NYU.
ReplyDeleteI might be mistaking it from another book I read, but I believe this one discusses a lot of the finer points about IP created by workers, university students, and others.