Nation-wide, standardized approach needed to manage Canadian universities’ IP

By Alexandre Navarre

Vice Président, Numinor Conseil inc and Associé de recherche École de technologie supérieure (ÉTS) Université du Québec

Canadian universities’ approach to intellectual property should be standardized to benefit both researchers and industry. Canada’s chief scientist and the research granting councils could take the lead in this initiative.

Each university now has its own IP policies and protocols. A nation-wide, seamless approach to IP policies would make university-based innovation more coherent and integrated, since researchers from all disciplines – as well as funding sources – are able to move from one institution to another.

Canadian universities have adopted one of three types of IP policies:  1) university-owned; 2) inventor-owned; or 3) co-ownership.

Academic offices of technology transfer struggle with several complex issues created by so many different and often confusing IP policies. These include but aren’t limited to:

  • Do inventors need to assign their IP and patents?
  • Can the IP owner proceed without a severance agreement?
  • What is the rationale for the establishment of eventual profit sharing?
  • What claims are possible from students involved in the research?
  • Can researchers circumvent policies by dealing directly with industry?
  • How are results of multi-institutional projects handled?
  • How are results clarified in terms of equity between inventors?

Universities’ maze of IP policies have led to high-profile international disputes, including one involving Oxford University and a COVID vaccine license coveted by two biopharmaceutical firms, Astra Zeneca and Merck. Oxford’s policy is that all IP from academic staff belongs to the university, with equity distribution to inventors and royalty sharing between inventors and the university. The vaccine issue was entangled due to the presence of a spinoff company and two academics with large equity stakes. So the university’s administration and the inventors didn’t see eye-to-eye about the vaccine’s commercial development. Because of COVID, this disagreement raised the profile of universities’ approach to IP developments.

IP issues are often misunderstood by university officials and researchers. Also, the subject of IP is somewhat sensitive since it touches on collective agreements within universities.

When disagreements occur, universities tend to resolve them either by using their mighty influence backed by lawyers or through secret arrangements, including payments, to avoid bad press. The number of such IP disagreements, often related to IP policies, has significantly increased.

Origin and implications of IP policies

One of the first known references to IP protection dates from 500 BC, when chefs in the Greek colony of Sybaris were granted year-long monopolies for creating particular culinary delights.

In 1474, the Venetian Republic established the basis of the first lasting patent institution by recognizing inventors’ rights, offering incentive compensation and infringement fees. England mandated its Statute of Monopolies in 1624.

In the mid-1950s, consideration was given to freedom of expression suggesting IP was not to be tampered with, and therefore such protection was loosely inserted in universities’ collective agreements. However, freedom of expression is not akin to academic freedom.

It is only since the 1980s with the Bayh Dole Act in the US and a little later in Canada that the concept morphed into protectable IP derived from inventions. These were the years when patents became the backbone of some emerging industries and blockbuster companies. This raised the interest of researchers in relevant fields, as well as university administrators who thought IP could become a substantial funding source. Inventions and IP were introduced into collective agreement negotiations, each party dreaming about the potential benefits.

IP-sharing formulae and semantic interpretations became more complex in policy documents and legal interpretations as specialized teams emerged and grew within university offices of vice-presidents (research).

However, parties may have lost sight of the reality that few research projects yield inventions and very few such inventions become a modest commercial success, let alone blockbusters.

Contentious IP decision-making process needs resolving

It is in people’s nature to dream. Researchers perhaps wanted to keep profits for themselves, although their motivations are seldom just monetary. Many wished to maintain control over their “baby,” a rare outcome. IP protection, a costly and risky venture, therefore required a relative arbitrage process. The quid pro quo was that help was needed from institutions, but the decision process remains contentious.

Governments, the most recent being Quebec and Ontario, began to press university administrations to translate invention into economic benefit. Universities also identified risks they would eventually have to assume whenever researchers were left, in the absence of clear institutional policies, to deal directly with industry. So collective agreements became the source of fierce debates and negotiations regarding IP policies.

Resolving Canadian university IP issues should focus first on the ability of researchers to develop their invention alone, and then on the structure of revenue sharing if success is achieved, with or without the institution’s help.

Industry would prefer free access through negotiating directly with researchers rather than with competent offices of technology transfer. But industry above all would prefer a set of standard practices that would lower the requirement to adapt to a bewildering array of different policies when planning partnership projects or negotiating licenses from universities.

For the sake of international commercialization, Canadian university IP policies and protocols would benefit from becoming seamless from one institution to another. Governments, which fund these institutions, must step in and mandate such initiatives if universities can’t or won’t do it on their own.