You Probably Don't Own Your IP. Should You?

Universities own researchers' IP & control the patenting of federally-funded research innovations. But this might be stifling creativity and productivity instead of accelerating it.

Unless you’re a Swedish academician, your employer probably owns your Intellectual Property (IP). Your discoveries and innovations are theirs. In most university systems, this goes one step further, by also leaving the power of patenting with the administration.

Although this is often considered beneficial to researchers since they are provided assistance throughout the patenting and development process, it also has potential disadvantages. This system can result in unethical power struggles, like the recent case with Katalin Karikó whose research was patented by the University of Pennsylvania (which consequently profited $1.2 billion from it), while Karikó herself was forced out of the decision-making process and institution.

Not only are these policies questioned by the community on ethical grounds, they may also have bigger implications for scientific productivity overall, both within and beyond academia.

In this issue, we dive into the current issues and drivers of IP and innovation in universities, what it means for researchers, and what solutions loom on the horizon.

The Karikó Case

Katalin Karikó’s work and contributions on mRNA was critical to the creation of the mRNA vaccines ultimately used to save countless lives against the SARS-CoV-2 virus during the global pandemic. Although she is well-recognized for this achievement, the events and subsequent profiting from her achievements are widely recognized as unethical.

Karikó and a colleague developed modified RNA (that would ultimately lead to the mRNA COVID vaccine and a Nobel Prize) in 2005, without much recognition at the time. It wasn’t until the pandemic that these results would come into the global spotlight. Before then, this work really wasn’t recognized. In fact, Karikó was demoted four times at Penn. The real kicker is that the university held the rights to Karikó’s work, and later controlled the patent process. Even when Karikó and her colleagues wanted to purchase the patent for their own work themselves, they couldn’t. The university already entered a licensing arrangement with Cellscript. The result? In 2022, Penn profited over USD$1.2 billion from the Pfizer-BioNTech Vax, long after Karikó had been pushed out of the university.

The Karikó case is complex, but even at a cursory glance, it’s clear the unfortunate and unethical loopholes that exist in the current system. With universities owning both the IP and patenting power for their researchers’ work, they can profit from their achievements without rewarding their contributors appropriately.

Katalin Karikó’s Nobel Prize speech for her and Professor Drew Weissman’s work that led to the development of COVID-19 mRNA vaccines (source here).

How did we get here?

Back in the 1950s, a significant portion of innovative and ground-breaking research actually was in the hands of private companies. In the 1960s, for example, DuPont (a big chemical company) published more than MIT in the Journal of the American Chemical Society. Strong anti-monopoly laws at the time meant businesses couldn’t just acquire each other’s inventions, and so many invested into research and development. As these policies loosened in the 70s and 80s, along with an increase in university presence, this kind of research shifted back towards academia. Today, there are less companies investing the same resources into research, with biotech and tech firms being the general exception to the rule.

The 1980s saw another important change, the passing of the Bayh-Dole Act of 1980, which sought to protect the “inventions made by nonprofit organizations…”. This, combined with the fact that universities generally own their researchers’ IPs, means they have the patenting power. It’s this act, although well-intentioned, that can cause ethically questionable cases like Karikó’s.

However, this shift of patenting power to academic institutions may have even bigger consequences outside of academia. Some argue that it stifles industry-driven innovation, reduces corporate R&D, limits access to scientific knowledge, and pushes universities away from foundational science. Academic institutions may compromise their position as being the only entities flexible enough to pursue theoretical and basic science, which industry programs can’t afford to do.

Although this discussion focuses largely on the United States, similar trends can be seen in other parts of the world. China has a similar Bayh-Dole Act in place, and Norway, among other European countries, recently made this shift in the early 2000s. In the case of Norway, some studies find that there was a significant drop in startup and patenting activity from university researchers, largely attributed to the change. Thus, issues appear to surface from both sides: universities aren’t helping researchers patent enough, but successful patenting inevitably competes with industry innovation.

Startup rates for university vs non-university employees in Norway. One study found a 50% decline in both entrepreneurship and patenting rates by university researchers after Norway ended “Professor Privilege” policies in 2003 (Study here, image here).

Where do we go from here?

Some argue that researchers should have the right to patent their own discoveries. They can maintain the ability to work with their university’s Technology Transfer Office, but by their own choice. Currently, researchers are required to go through these entities, which manage the IP and patent process, and help transfer discoveries into industry.

Some remorse the loss of “Professor’s Privilege” systems. These systems left IP and patenting rights in the hands of professors, not institutions, but have largely been abolished. One study found a “decline in the technological importance and the value of the patents owned and managed by universities in the countries abolishing the professor’s privilege.” Sweden is one of the few countries left that still maintains the policy, and seems to have a higher rate of academic entrepreneurship as a result. But, bringing Professor’s Privilege policies back into the mainstream is likely not feasible. Most universities have already moved away from the system (Italy, for example, just abandoned it last year) and some argue that institutions owe it to their taxpayers to oversee the innovation of federally funded research.

Another solution in this area focuses on enhancing collaborations between academia and industry to help close the innovative gaps between the two. For example, Roche’s new Institute of Human Biology serves to bring together scientists from both academia and industry in order to conduct research more effectively. In fact, it’s an investment on Roche’s part in “useful scientific knowledge”, rather than creating new drugs. Universities are also often eager to foster more industry collaboration’s, like University of Wisconsin’s new program which will make it easier to build industry partnerships. Of course, these programs still don’t address the individual researcher’s IP rights to their own work, but may help increase innovation in both industry and academia.

Although “enhancing collaborations” doesn’t sound exciting, it may be an essential factor in ensuring future innovation. In the last few decades, universities and public research institutes produce most scientific knowledge, but the withdrawal of companies from their own research means they are less able to understand and use the advancements in public science. That might partially explain why big companies are more reluctant to invest in university-driven discoveries. Instead, spin-offs tend to go towards small or medium-sized companies. Thus, fostering better collaborations is a key step in ensuring the success of both entities.

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So, should you own your IP?

Although some believe scientists should own their own IP and have patenting power, there are many connected issues in and outside of academia that could be impacted by such a change. One thing is clear: something needs to change. Cases like Katalin Karikó’s illustrate the loopholes in the existing system that can unethically exclude researchers while profiting their institutions.

There are various indicators that patenting power in the hands of universities may contribute to various issues: waning innovation, decreased academic entrepreneurship, less disruptive research, and declining productivity in higher ed. But this is a deeply-connected system, with researchers’ IP, patenting and licensing regulations, university influence, industry investments and even open science all in play. Influencing one of these may impact other parts of the system in potentially unexpected and unintentional ways.

Do you think researchers at universities should own their own IP? Why or why not? Share your thoughts with us below!

Resources

Why Are We Screwing Over Researchers Who Make Innovative Discoveries?, Feb 2024

The Ecosystem: patent licensing makes way for partnerships in university tech transfer, Feb 2024

Universities are failing to boost economic growth, Feb 2024

The Effect of Public Science on Corporate R&D, 2023

ACADEMIC TO ENTREPRENEUR, Unlocking the Potential of UK Spinouts, 2023

Papers and patents are becoming less disruptive over time (Nature), 2023

‘Disruptive’ science has declined — and no one knows why (Nature), 2023

Sweden ‘can teach US about inclusive innovation’, 2022

University Innovation and the Professor's Privilege (Norway), 2018

University innovation and the ‘professor’s privilege’, 2016