STIC members call for standardized IP framework; expert warns against blanket policy

By Debbie Lawes

Two members of Canada's influential Science and Technology Innovation Council (STIC) say it's time to consider a standardized framework for intellectual property (IP) across universities as a way to improve the country's lackluster commercialization performance. Speaking at the Canadian Science Policy Conference October 21, STIC vice-chairman Robert Prichard said he hears complaints all the time from companies saying it's too difficult and costly to deal with different institutions with different IP policies. It's time, he said, for Canada to "break through" on this issue.

"We need a dramatic national statement attached to federal research support that would see us have a standardized, easy and extremely open regime to encourage the interplay between the academic research sector and the commercial sector," said Prichard, past president/CEO of Torstar Corp and president emeritus of the Univ of Toronto.

His comments were echoed by fellow STIC member and McGill Univ president Dr Heather Munroe-Blum, who said having a common IP framework would make it easier for small and medium companies to collaborate with academia. While not always a supporter of standardized IP policies, she says she has since "come 180 degrees on this issue".

"The free flow of ideas and talent are critical to Canada's success," she told delegates at the Montreal conference. "I am confident that we can have a common framework across Canada for university IP."

Munroe-Blum also raised the IP issue during a Fulbright lecture in Boston last month, saying that the new innovation era demands expanded notions of technology transfer models that support open innovation.

"Rather than taking endless time to rigorously protect IP, maybe we should focus on how to enable more liberal flows of information between universities and their partners," she said.

Beware one-size-fits-all policies

One of Canada's foremost experts on IP, Dr Richard Gold, says he supports a national review of the country's patchwork of IP policies, but cautions against a one-size-fits-all solution. For example, the Univ of Waterloo's policy of allowing researchers to own the IP has made it one of the most successful tech transfer institutions in the country.

"It would be wrong to impose on Waterloo a university-owned policy," says Gold, president of The Innovation Partnership and associate professor of Law and Medicine, McGill Univ. "For years, they've recruited researchers on the basis that the researcher will own the IP. If you change the rules and have the university owning the IP, researchers will simply fail to disclose their inventions."

Likewise, at universities where the institution owns the IP, researchers may resist having an entrepreneurial culture imposed on them, not to mention the added workload of having to negotiate IP licences, notes Gold.

"I would join the call for a harmonized framework but I would concentrate on process and that includes separating issues of ownership from issues of negotiating and trying to simplify that process."

— Dr Richard Gold, president, The Innovation Partnership, McGill University

Companies often lament the lack of consistency and clarity in university IP policies, which vary from university to university and sometimes from agreement to agreement within the same institution. But Gold says there is no evidence that industry collaborates less with universities because of IP policies.

"Industries will complain about IP policies but it's not so much the difference of IP policy than the clarity. A lot of university IP policies are badly drafted and vague so it's unclear to a third party, am I supposed to negotiate with the university or with the researcher? It's more of a process problem than a 'who owns it' problem," says Gold, who supports researchers owning the IP.

Having a central contact becomes more important given that a growing number of projects are multi-institutional, he adds. That's where the federal granting councils can play a role.

"They could require that the universities establish a single point of contact for licensing. There needn't be uniformity," says Gold. "What you need is for the researchers and the universities to agree that this is the person you will negotiate with."

Some research funders are moving in this direction. Last year, the Natural Sciences and Engineering Research Council adopted a new IP policy as part of its Strategy for Partnerships and Innovation which it describes as "a more liberal, business-friendly policy that gives more flexible access to IP developed as a result of NSERC funding." NSERC officials have said they hope the change, along with other elements of its strategy, will encourage industry to invest an additional $250 million in cash annually towards university collaborations, and increase NSERC's industry participation rate from 7% to 15%.

The tri-councils are also encouraging industry to get involved earlier in the research process so that IP issues are resolved well before a technology is spun out.

For example, the Centres of Excellence for Research and Commercialization and the Business-Led Networks of Centres of Excellence have management boards and/or scientific management committees where stakeholders work out IP arrangements before a project gets underway. A similar approach is taken at Genome Canada where Science Management Executive Committees are established to oversee the scientific and financial management of each project.

Other CECRs, such as GreenCentre Canada and MaRS Innovation, act as patent brokers, accepting technology disclosures from researchers, shoring up the IP, bundling related technologies and then negotiating with industry to use them.

While Gold supports STIC's potential interest in reviewing IP, he stresses that it will be the universities themselves — particularly university presidents — who must take the lead. "And the discussion has to go beyond the narrow issue as presented by the federal government, which is a focus on increasing the transfer of knowledge from universities to industry. That assumes we already have the research ready to be transferred. We have to set up the appropriate networks early on in research so that the knowledge that comes out is in a form that's usable and responds to the concerns of industry, as well as governments, hospitals, NGOs and so on."

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