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Tuesday, 21 October 2003. A Discussion was held in the Senate-House of the following Report:
The Report of the RPC Working Group on Ownership of Intellectual Property Rights (IPRs) (Reporter, 2002-03, p. 1286)
Professor W. R. CORNISH:
Madame Deputy Vice-Chancellor, I chaired the Working Group of the Research Policy Committee (RPC) on Ownership of Intellectual Property in the University. Our Report was published at the behest of the General Board and the Council in the Reporter of 6 August 2003. It is in the nature of a White Paper, rather than a Bill for enactment and today's Discussion aims to canvass reactions to its proposals before the Council decides whether to proceed to detailed drafting. If and when that stage is reached, as our Report emphasizes, any IPR policy should be the subject of a Grace which will be embodied in Statutes and Ordinances and become a term of employment - a term which, moreover, will apply only to IPRs that are granted or come into existence thereafter. The policy should apply to all categories of staff, and should preferably be co-ordinated with arrangements operating for College-employed researchers and be linked to appropriate arrangements for students.
To understand what we are recommending, one has to have in mind the history of the IPR question in the University. In very brief outline, in 1977 Cambridge refused to join the general rush of higher educational institutions to assert their ownership of patent rights in the results of research by their staff. Subsequently the University was obliged to take power to do so where the funding was from a Research Council. This policy was contained in a Notice published in 1987. Its effect was broadened by Grace 6 of 21 March 2001, in light of similar conditions being required by research charities and industry. In that Grace, where research funding was external, University ownership was asserted not only of patents but in an additional range of IPRs. Revenue from the technology transfer was to be shared on the basis specified in the Grace.
Various justifications for this development can be offered: first, a publicly-funded university must ensure that commercial prospects which flow from its research are realized, rather than neglected, both for the public good in general and because it must tap all reasonable sources of financing itself. Secondly, the university's interest arises because it provides both academic opportunities and physical facilities for the research. Thirdly, venture capitalists and industrial exploiters need a management body in the university to which to turn in order to arrange for exploitation of novel technology and they expect that body to be able to deliver assignments or licences of IPRs. The establishment in 2000 of the University's Research Services Division (with its Technology Transfer Office), in place of earlier arrangements, gave recognition to these concerns. How far the concerns are justified is inevitably controversial and doubtless always will be.
Grace 6 of 21 March 2001 put in place a division of the ownership of IPRs which turned on whether the research in question was financed from outside or was conducted by a researcher as part of a general obligation to undertake research or contribute to it. Some found this a raw distinction and the Joint Proposal of Council and General Board of 24 July 2002 sought to eliminate that division by applying the University ownership rules to research results, whatever the basis of their funding. The upshot was a memorable debate in this House on 22 and 29 October last year. Thereupon the RPC established our Working Group.
We were asked to estimate whether, with modifications and safeguards, the policy proposed in 2002 could become acceptable to the University. With that remit in mind, the Group sent out a consultative document (Reporter, 19 March 2003) to Faculty Boards, Departments, and Schools, as well as to individuals. This invited comments without limitation but directed attention to a considerable list of issues. In order to divine what might be 'acceptable to the University', we took account of both the views expressed in the October 2002 Discussion and the responses to our solicitation of opinions. The issue is one on which there are deeply felt, but divergent, positions and we certainly did not assume that the proposed policy of 2002 should remain the norm from which divergence had to be justified. We did however start from two premises. First, in our view, there is widespread acceptance that the University should have a share in revenue from commercialization of technological research conducted here, whether or not it is funded by outside grant. There must therefore be some system of accounting for it. Arrangements of this kind already apply to research falling within Grace 6 of 21 March 2001.
Secondly, outside funders will continue to insist upon access to at least patentable IPR (through ownership or licences). So it is highly likely that a Technology Transfer Office will remain as the organizational vehicle. The University would therefore do well to allow it to develop in as efficient and co-operative a manner as possible. It is this which leads us to propose a balanced set of arrangements over ownership of IPRs and the realization of potential exploitation in ways that take account of the wishes and involvement of all the academics and other staff concerned. There is a need to ensure that researchers have an adequate place in decisions over how and with whom exploitation should take place. It is vital to establish a climate that will encourage the whole cycle of acquiring rights, finding venture capital to support product development, and eventual production and marketing.
What, then, are our main recommendations?
1. I start from a necessary condition. The ability to place research results in the public domain embodies a basic academic value. Ownership of IPRs must be subordinate to the fundamental freedoms of academics to pursue intellectual inquiry, and to publish the results. Therefore it has to be for the researchers to decide whether or not material should be released free or should be commercialized.
2. If the researchers' decision is in favour of commercialization, then we draw a distinction between those IPRs which require a formal registration process (often, as with patents, involving technical examination and the assistance of patent agents) and those which come into existence without that, as in the case of copyright and confidential information. Where grant or registration is necessary, there are a significant number of decisions and associated costs. It should therefore be the University which is accorded the right to apply for the grant. However, where the researchers wish it, they must be involved in consequential decisions about the channels through which exploitation will occur. We see this objective as being secured in three main ways:
(i) The arrangements will have to take account of the fact that rights in copyright material and confidential know-how will remain with the member of staff. (We have preferred this approach to joint ownership of any patent on the research, because joint ownership is inevitably complicated. )
(ii) A presumption that exploitation arrangements proposed by the researchers concerned will be adopted if they appear reasonable.
(iii) A scheme for resolving disputes concerning IPRs and their exploitation between researchers and the Technology Transfer Office, and among researchers, by placing them before a panel of Referees for decision. The constitution and membership of this panel will be important. The details have still to be worked out.
3. Our third main recommendation is this: as far as concerns informal IPRs - notably copyright and confidential information (database rights deserve special consideration) - the Working Group draws attention to the Report of the Joint Working Party on Copyright, written in 1999 and eventually published in 2001, which I also chaired. That Report recommended that copyright in research results should belong initially to the researchers, save in limited special cases. It emphasized not just our long-established practice in the matter, but equally its vital importance as a guarantee of freedom of academic expression. These recommendations continue to attract the sympathy of many in the University, as was made plain in the Discussion of October 2002. In our Report now under discussion, we confirm that basic approach. Researchers' copyright in general, including the writing up of research, should be their own. There should therefore be no need to draw a line between what should and what should not be regarded as being produced 'in the course of employment', as copyright legislation expresses it. The only circumstances in which copyright should be defined in terms of employment as belonging to the University are (i) those which relate to its administrative business and to such student-related matters as the setting of examinations; and (ii) those where courses are prepared for special projects (such as distance learning) in which the University is involved as a participant (a situation which in any case needs to be governed by contractual arrangements that define many matters of detail at the outset of the project). There also need to be arrangements about the use of course materials prepared for regular University teaching, but these are best made at departmental level.
As to obligations to keep information confidential, Grace 6 of 21 March 2001 goes further than we are recommending in giving the University a claim over secret material. There are many situations in which academics decide, more or less formally, to pass information to colleagues and other experts confidentially where it would be cumbersome and wasteful to require that first they obtain the University's consent as 'owner' of the information. Here again, it ought primarily to be for researchers to decide what communications they make to others about their work. The need is not for ownership to be accorded to the University but for researchers to be made aware of the consequences of passing information to others without providing a clear record that the communication is confidential.
Our Report deals with a number of further topics. These include IPRs in software, which we consider should be governed by the same rules as for IPRs in other material; the position where there are consultancies with industry; block-forward selling or similar arrangements covering a Departmental IPR portfolio (which the Research Policy Committee has already agreed to be unacceptable); and a general review of Research Services (which is now being announced). These I leave for comment by others.
What we are proposing is not some magical solution that will eliminate all uncertainties over the exploitation of IPRs resulting from University research. In any solution there will be an element of compromise and a certain arbitrariness at the boundaries. Our recommendations seek to avoid the considerable awkwardness currently resulting from policies which determine the allocation of IPRs by reference to the source of funding. Our approach creates a balance of interests between researchers and the University designed to encourage collaboration where technology is at issue and its transfer to outside exploiters is a complex business that warrants an early settlement of both proprietary and other aspects between the researchers and the Technology Transfer Office. There will still be cases where outside funders require different terms about ownership as a condition of research grants or later capital assistance. These will have to be worked out case by case. In our assessment the differences will not be as apparent as under the current policies, which in our view call for substantial revision.
Dr T. J. MEAD (REGISTRARY):
Madam Deputy Vice-Chancellor, I would like to comment briefly on the recommendation in Professor Cornish's Report that there should be a review of the Research Services Division in the next five years.
Some time ago, on my proposal, the Council agreed to undertake a series of reviews of parts of the Unified Administrative Service on a rolling basis. The Service has recently undergone extensive reorganization and restructuring and has benefited from additional resources provided for its strengthening and development. I believe it is now much stronger, professionally based, and delivering services which are necessary if the University is to achieve its academic goals. My colleagues are committed, hardworking professionals who take pride in what they do and in their part in the University's continuing high levels of academic performance. However, it is appropriate now to take stock of what has been achieved, of what remains to be done and of how, in a constantly changing environment, the Service should continue to change and to develop. We also need to ensure that the resources, which are considerable, allocated to the Service are spent on proper priorities. Accordingly, Dr Secher, the Director of the Research Services Division, and I welcome Professor Cornish's proposal and I have agreed with the Vice-Chancellor and with Dr Secher that a review of the Research Services Division should be undertaken in the first half of 2004 led by the Pro-Vice-Chancellor (Research) who is expected to be appointed later this term from 1 January. The detailed arrangements for the review, including its terms of reference have still to be agreed by the Council but they will include all aspects of the Division, including Cambridge Enterprise, and they will involve seeking the views of both internal users and of external funding partners. The review will also be asked to look at international comparitors, particularly US institutions.
I thought it might be helpful to inform members of the University of these arrangements now. In doing so I can also inform members of the University that I shall be asking the Council to agree arrangements for the second such review, of the Personnel Division and its services, to be undertaken probably in the second half of 2004.
My colleagues and I, as professional managers and administrators, look forward to these reviews and through them to engaging in constructive dialogue with persons both within and external to the University about the development of these key central University functions.
Professor G. R. EVANS:
Madam Deputy Vice-Chancellor, there is widespread agreement that this is a great improvement on the infamous Report which caused all the ructions last year. The most sinister feature is the revelation that the question the Working Group was asked to address was not what would be a good and fair IPR policy for the University, but whether it could come up with anything which would survive a vote of an angry and rebellious Regent House (summary of recommendations, 5.1). It is also worthy of note that it did not include in its membership in a proportionate way the leaders of the IPR revolt of Michaelmas 2002. This University has been slow to learn the elementary lesson that the 'energetically mistrustful' can be useful if you listen to them and do not systematically exclude them from the deliberations of the central bodies. That only leads to trouble later.
For we now face a crisis of trust. Good though these proposals are in the main, they are bound to be picked over suspiciously for traps and hidden agendas in a way which bodes ill for their success.
Professor Cornish's working party has reminded the University that it cannot force existing academics to accept any change which diminishes their rights (3.1.2) and that any policy change ought to require a Grace (3.1.2). The conditions of employment of officers have for too long been the subject of that sidestepping of constitutional requirements deplored by the Board of Scrutiny in its Eighth Report (Reporter, 2002-03, p. 1280). One hopes that new or promoted or upgraded officers now fully understand that they do not have to sign those 1998 contracts, or any other contract, and should enter into office by signing the book in the Old Schools under Statute D, I, 4. That affects any attempted provision that new employees are 'bound' to 'conditions concerning intellectual property rights as prescribed by the University from time to time in policies' (1.3), unless we do make changes by Grace. I am pleased to see that 'freedom of academic expression' is central to the Report and that persons other than academic staff are to be included under its protection (22.214.171.124-3.1.6), but of course what I have just said will not protect those who are not officers, for they do have to sign contracts.
All academic staff are contractually obliged to conduct research (126.96.36.199). They are not only not contractually obliged to 'seek commercial outcomes for their research results', but if they do so they are surely acting outside the conditions of tenure of their University offices under Statute D, since those are confined to the quartet of the 1877 Oxford and Cambridge Act (the fostering of religion, education, learning, and research). The absence of commerce from that list is not an accident.
I am not sure that paragraph 188.8.131.52 is watertight with reference to the use of University equipment and facilities, either. Are arts and humanities researchers who happen currently to be employees to set off to the British Library and the Bodleian to read books they could read in our University Library in order to preserve themselves from future grabs at their IPR? Many of us have a lifetime right to use the University Library independently of our employment status. This is a very important paragraph indeed, especially when it is set beside paras. 184.108.40.206 and 220.127.116.11 (the obligation of staff to disclose, and confidentiality), so it is essential to get it right.
Vivid debate on the newsgroup ucam.change.governance in the last few days, has included the topic of declaration of interests. I would like to get on the record the view that declaration of interests has to do with propriety not property. The Higher Education Funding Council is not pleased with us over our delay in getting proper comprehensive declaration of interests requirements running in the University. This goes much more widely than the reference in para. 18.104.22.168 to the avoidance of conflicts of interest when undertaking consultancy work. Those who get involved in commercial contracts, or who begin discussions with a view to doing so, are also entering into a relationship with persons or entities whose interests may not coincide with those of the University. They may even be dividing their own persons into two conflicting actors in the drama, one an employee of the University, one an entrepreneur or consultant or adviser to its potential competitors.
The fact of that potential conflict of interest must be recorded, and on an openly accessible list. This must form the context for paras. 22.214.171.124-9. To be open about what we are doing is the only protection of the pursuit of truth in a world where the publication of results and discoveries waits upon patent protection or upon the approval of a commercial partner. I do not suggest that the work itself should be exposed to scrutiny until the moment for publication arrives (and the provisos which attend upon that are of course complex). But the fact that it is being done for, or at the behest of, more than the 'free' academic should be clearly visible.
And I hope we shall not lose sight of the important question whether academic freedom, which I would naturally defend to the death, is identical with the freedom for an academic to do or say what he or she pleases in the University's name. When John Wyclif had his academic freedom cut off at the knees by William Barton, the Chancellor of Oxford in the fourteenth century, it was partly because he had seriously damaged the University's reputation (haec universitas mater nostra non mediocriter diffamatur), because he was perceived to have said what he had said in its name.1 At the least this takes us into questions about the use of the University's notepaper when one is setting up one's spin-out company.
I am not at all sure that 126.96.36.199, with its compressed sentences, will make it obvious to everyone involved how important it is for every researcher to get a grasp of IPR issues. Paragraph 188.8.131.52 rightly underlines the need for training of academics so that they understand the subsequent IPR implications of the decision to give a paper at a conference, but there is much more than that which everyone needs to understand for him or herself.
Technology Transfer Referees (184.108.40.206; 3.1.10; 3.1.11). It is extremely important that this proposal is properly thought through, and especially that there should be an avenue of appeal from any decision made by an individual 'referee'. If this is to be a form of 'mediation' the parties would have to agree on their 'referee'. It could not be for the Research Services Division to choose. Let me declare an interest at once, in the projected new OxCHEPS Higher Education mediation service (Guardian, 2 September, and Times Higher Education Supplement, 17 October), while pointing out that since mediation does not commit the parties to accepting the outcome and since it may not be easy to say who the parties are anyway, or to get the 'outside' ones round the table, mediation may not be the right option. Alternative Dispute Resolution can take many forms. 'These issues should be investigated after the principle is accepted', will not do while we have no clear idea what the 'principle' is to be.
In sum, a much better try. But still some loose ends which, if energetically and mistrustfully tugged, could unravel the whole thing. One of these is the question for what purposes Heads of Department should be free to use money generated by researchers in their Departments and falling to the University under the new arrangements. There is an assumption there that an officer's research - as distinct from his or her teaching - is at the disposal of a Department or Faculty. That surely needs a hard look. Another is the position of students. Read p. 1302 (UCL's seizure of some students' intellectual property as a 'requirement' of their being allowed to complete their course). No Cambridge IPR policy should be agreed until we have included a full discussion of the implications for our own students. Remember the episode of those free Vodafones in return for the handing over of student ideas to the generous benefactor? That happened because we had not begun to think those implications through.
A promising White Paper, but what shall we want in the Bill? And yes please to an even-handed review of the Research Services Division. Thank you, Registrary, for the tone of your remarks.
1 Fasciculi Zizaniorum, ed. W. W. Shirley, Rolls Series (London, 1858), p. 111.
Dr M. R. CLARK:
Madam Deputy Vice-Chancellor, as many will be aware, I have voiced considerable concerns over the University's proposed policies on intellectual property rights, in particular over how changes in policy might impact in a detrimental way on our academic freedoms and on our personal rights (Reporter, 5901, p. 16). On reading the Report of the RPC Working Group on IPRs (Reporter, 5933, p. 1286), I welcome the fact that many of the issues of concern have been acknowledged as having validity. I also note, perhaps by way of a response to the considerable criticism of the proposed policy, that the major focus of the recommendations in this report have now shifted towards concentrating on a restricted set of intellectual property rights, in particular property rights surrounding 'patents and inventions'. This is an area where I have many years of practical experience and thus I hope that I can offer some insight to the Regent House.
You will see from the Report under discussion that I made two submissions to the working group, and that the second submission included copies of documents which I submitted in confidence. These documents related to the commercialization of patents and inventions in which I am an inventor. Whilst keeping the precise details of these documents confidential I would like to make the Regent House aware of what I regard are some crucial matters of concern regarding the implementation of the University policy on IPR by our administrative services.
As many are aware, I have nearly 20 years of experience of commercial collaboration between University and industry in the applications of monoclonal antibodies to human diagnostics and therapy, with approximately ten different inventions currently in commercial development. These inventions are currently bringing in over £500,000 a year to the University. I thus have detailed practical experience of how the University policy was operated for many years by the Wolfson Industrial Liaison Office (WILO) and also more recent experience of the Research Services Division (RSD) and the Technology Transfer Office (TTO). What I can say immediately is that there has been a profound philosophical change in the way that the TTO operates when compared to the WILO, particularly with regard to the involvement of University academics in the discussions over commercial exploitation of their IPR. Despite the promises and reassuring statements made in the published Reports on the IPR policy, and the public pronouncements by senior members of the University, and of the administration, that the academic inventors will be fully involved in discussions, I can testify from experience that the operating practice of the TTO has often been to take crucial decisions without full consultation with the inventor. These changes in working practice seem to have been sanctioned by the Director of the RSD.
During my many years of dealings with WILO, I cannot think of a single occasion when I was not kept fully informed of the progress of any legal negotiations. By fully informed, I mean that draft copies of deeds and contracts were routinely copied to me, usually because I had ownership rights in the IP, but also even if there was no legal requirement for my signature. Any constructive or critical comments I made about the documents were taken into account, and I was often able to use my technical understanding of the inventions to predict or correct possible oversights and misunderstandings. If meetings took place with prospective commercial partners I was invited to participate. That situation changed dramatically with the recent reforms of the IPR policy in which WILO was dissolved and the Technology Transfer Office created within the RSD, and coincident with the other reforms in the University IPR policy. It is the consequences of these changes in policy which I want to discuss.
The confidential documents I submitted to the RPC Working Group on IPRs contained examples of several commercial agreements that had been negotiated by the new regime within the RSD. These agreements were negotiated without the involvement of the inventors and they were approved and signed by the Director of the Research Services Division. When I finally received copies of these agreements I was very surprised, even shocked, at their contents, particularly with regard to the promises and undertakings made on behalf of the University. Quite frankly, if I had been shown advance copies of these contracts I would have cautioned against them being agreed to without major modifications and revisions. Various promises and undertakings have been made on behalf of the University, and also other obligations were made on behalf of the inventors. It seems to me that RSD have negotiated completely inappropriate terms within these contracts and I very much doubt whether they would have the ability to ensure that the University could meet all of the obligations that the Director of RSD has signed up to.
For example in one of these agreements there are several technical errors regarding the description of the technology, and RSD have also granted a much broader licence than the inventors would have wished, which considerably undervalues the technology. But in addition RSD have also offered the unpaid services of just one of the three inventors, namely myself, for up to two days' work a year in the provision of 'know-how', and offered that if necessary I would be prepared to travel to the USA, yet this was arranged without myself having been a party to this agreement.
Of perhaps more concern is that in another and unrelated contract RSD have promised that for a period of three years from the date of the agreement RSD would offer my relevant publications for review 45 days in advance of any submission date, and that at the company's request I might either have to modify the publications or accept a possible delay of up to two months. However, I was not even told of the existence of this undertaking by RSD until 15 months after the agreement had been signed. On hearing of this undertaking I immediately asked to see copies of the agreements and upon reading them I noted that other serious and restrictive obligations on the University were also included. For example, the company also reserved the right to request the University to place any student thesis based on the patent under restricted access for a period of up to five years. The agreement includes other confidentiality clauses and further research restrictions on use of inventions that might fall within the scope of the patent, including restrictions on clinical research carried out on patients. These restrictions apply to the University as a whole, not just to the inventors of this patent. I should add by way of explanation that the scope of the invention is a generic improvement, and as such it might apply to different products used within the University, not just products arising from my own research.
It is obvious that these agreements are in direct conflict with academic freedoms and I would assert that they are unreasonable restrictions to place on University research, certainly when these restrictions are applied without the written and informed consent of the individuals that might be affected. Also I do not see how RSD could hope to monitor the situation to ensure that the terms of the agreement are complied with. We clearly do not have a system whereby RSD are able to review all experiments, or review all the proposed publications of the University, and neither do they in their own turn make generally known to the wider University the contents of commercial contracts and agreements that they have undertaken. Also RSD are not involved in the examination of theses submitted by research students. Neither are any of these things desirable.
What seems obvious to me about these problems which I have brought to your attention is that they have arisen because RSD feels able to negotiate the terms of deeds and contracts without reference to individual inventors, because they are operating under the assumption that the rights of ownership in IPR belong with the University and not with the inventors. These problems could not have arisen if at least some of the ownership of the IPR was explicitly held by individuals, because then they could not have been placed under obligations without their written consent. Equally individuals could not then give any explicit and general undertakings that might bind others within the University to an agreement over IPR.
I cannot accept the conclusion of the RPC Working Group (outlined within paragraph 220.127.116.11) that joint ownership of IPRs by inventors is not a suitable mechanism to protect both the rights of individuals and of the University. Certainly unless the University can assure me that my rights will in future be legally protected, I am very reluctant to comply with obligations such as those I outline above, and entered into against my agreement. I am in favour of technology transfer, and I certainly do not object to revenue sharing, or where appropriate to mutual agreements with the University, but I do object in the strongest terms to any policy that allows major restrictions on academic freedoms and a restriction on research and the suppression or delay in rights of publication, which are enforced without individual consent. I also object to any policy that does not give the inventors the express right to be involved with the detailed decisions over possible commercial exploitation of IPR arising from their work.
I am so concerned about the seriousness of these issues that in addition to my comments here in Discussion I give notice of my intention to copy in full the set of confidential documents which are in my possession to the Vice-Chancellor herself, so that she can ensure that a thorough review of these matters can be undertaken by the University Council. I also intend to copy the same documents in confidence to the Board of Scrutiny so that they too can make an informed judgement on behalf of the Regent House over the detailed practical workings of our current IPR policy as administered by RSD.
Dr R. J. ANDERSON:
Madam Deputy Vice-Chancellor, for many years, University Teaching Officers were measured by output rather than by input. Provided we kept up the flow of research papers and lectures, it was entirely up to us whether and how we supplemented our income. Historians wrote books; chemists patented new molecules; computer scientists started companies. Often these entrepreneurial activities were not for profit - for example, many colleagues and I have placed software and inventions in the public domain. But both our commercial and our altruistic activities benefited from the same open regime.
After the formation of Research Services Division, policy started to change. In January 2001, the Council and General Board published a policy on intellectual property which took effect in October that year and to which almost no-one paid attention at the time. This policy transferred to the University ownership of all patents, copyrights, and other intellectual property resulting from externally-funded research. Second, in July 2001, the University increased from 5% to 10% the commission that it charged on consulting income booked through CUTS. Third, University officers engaged with the Patent Office in pushing for more stringent guidelines on academic IP. Fourth, RSD started pushing aggressively for equity in startup companies where some University IP was involved, or where it had other leverage. Fifth, the view was promoted that the University could solve its financial problems by developing new income from IP and entrepreneurship; we were told that unless we handed over our IP there would be little prospect of better pay. Finally, in July 2002, we read in the Reporter that most of the intellectual property we generated - from patents on bright ideas to books written up from lecture notes - would belong to the University rather than their creator. This generated outrage, but it was merely the most egregious in a series of developments that this House should consider as a whole.
Since then, there have been further damaging developments. RSD has been extremely aggressive in demanding that our industrial sponsors not only hand over any IP resulting from research they fund, but also that they grant the University licences to their own background IP. This has resulted in significant research contract income being lost - well in excess of the million or so we earn each year from patent royalties. In short, RSD's policy is not solving our financial problems, but is contributing to our deficit. I declined to sign the Allocations Report this year because I do not believe that the income forecasts can be met if this policy continues.
The enquiry by Professor Cornish and his colleagues is a welcome first step back towards sanity. It is a truly damning indictment of the way RSD has been trying to run things.
However, it is not enough. As Professor Evans has pointed out, the terms of reference given to the Cornish committee were quite unsatisfactory. He was asked how much of the 2002 policy the University might get away with at this time. He should have been asked instead what was the best policy for the University, and for the economy as a whole.
His committee recommends that, in future, copyrights and similar rights should vest with their creators. That is welcome. However, he proposes that the University should take all our patents. I do not believe that the University should, or will, get away with this.
The Cornish proposals let much of the arts and humanities escape the 2002 policy, while leaving the physical sciences ensnared. Computer science is in the middle; we will no longer be able to patent our inventions, though we would be able to dispose as we see fit of any software we write. The biological sciences are also in the middle; my colleagues there will no longer be able to patent, but at least the University will no longer retain a claim over the database rights of genetic sequence data. However, when it comes to starting new businesses, we will be almost as badly off as under the 2002 proposals. So long as RSD owns some part of the portfolio of intellectual property that goes into a new startup, they will be able to shake us down for a slice of the equity.
The effects of this on innovation and entrepreneurship were aired at length in the Discussion on 15 and 22 October last year, and I do not propose to rehearse them in any detail. Let it suffice to say that the Cambridge Phenomenon remains in peril, and that it is already much more difficult for academics to drive the creation of spin-outs. RSD simply gets in the way. Enterprise is like sex in that it is an activity performed by individuals, not by bureaucracies. Once control passes from the individual to the organization, once it is no longer fun but 'our duty to the party', as Mrs Winston Smith put it, most of the drive is lost. And it must be said that RSD are widely seen as one of the least entrepreneurial and most bureaucratic organs of our Unified Administrative Service.
I would also like to touch on the truly shocking way in which my colleague Mike Clark was treated. RSD promised a company that he would submit all his papers to them for prior review, without asking his permission. By making such a promise, on which he had no power to deliver, the Director of the Research Services Division appears to have committed fraud. I call on the Director of the Finance Division to initiate the disciplinary procedures approved by the Finance Committee for such cases.
Madam Deputy Vice-Chancellor, the policy pursued recently by RSD is like a cancer in the body of the University. It has destroyed trust between the Regent House and the Old Schools; it has cost us millions of pounds in research contract income; and it has gravely threatened academic freedom. The proposed therapy will merely remove some of the most offensively discoloured skin. What is needed is a radical excision.
I welcome the Registrary's announcement of a review of RSD. However, I fear this will not be adequate. What I propose is as follows.
First, Research Services Division must be abolished. Of its component parts, the old research contracts department should be placed under the Academic Division, and should concentrate on administering research grants. The old industrial liaison unit - now grandly renamed 'Cambridge Enterprise' - should go to the Finance Division, and be treated just like any other financial investment.
The Research Policy Committee must also go. We should not have a research policy, but simply a research strategy - that 'We shall hire the brightest people we can, and let them do whatever turns them on.' We must ditch the foolish idea that research is a centrally planned, top-down activity conducted for organizational profit, and get back to curiosity-driven research that bubbles from the bottom up.
Second, the IP policy of 2001 must be repealed, returning us to the tried and tested policy of 1987. As this is done, the University must renounce the rights it has acquired meanwhile to the inventions and creations of contract staff.
This will place us in a position where academic staff control the ideas they create, but in many cases academic-related and contract staff may not. They may be employed on contracts funded by research councils or charities whose standard terms insist that the University own 'all IP', which will naturally include copyright. When, in two years' time, the Arts and Humanities Research Board becomes a Council, even our humanities colleagues may find that the University acquires, like it or not, the copyright in many of their books. My third recommendation is therefore that we enact policies to the effect that IP owned but not exploited by the University will revert to its creators after some suitable period of time, such as 90 days, and that the University will not exploit any IP without the creators' consent.
My fourth recommendation is that we end the present system under which two-thirds of patent royalties go to the University and one-third to the inventor. The gloss that this is 'one-third to the Chest and one-third to the Department' deceives no one, and falls to be reviewed anyway given the Resource Allocations Model's elimination of the distinction between Chest and non-Chest income. There is significant research about incentives and invention, which can be found linked from the home page of the Campaign for Cambridge Freedoms. Universities that are too greedy end up getting less. I therefore propose that, in those cases where the University does end up owning a patent as a result of a funder's stipulation and the royalty income falls to be divided between the University and the inventor, the split should be 50-50. This will put us in line with best practice in the UK, and being the relevant Nash equilibrium should maximize University income.
The final issue is our industrial research contracts. The University has been unable to resolve this issue centrally, and our Departments are in any case too diverse for a 'one-contract-fits-all' approach to be realistic. Given the move to decentralized financial management with the Resource Allocation Model, IP decisions should be decentralized too. If a research team wishes to create a patent pool, let them negotiate with their funders, and let the Head of Department or Chair of School approve any implicit subsidies that are built in.
Madam Deputy Vice-Chancellor, these simple proposals will cut out the rot that has affected research policy. They will restore the liberal policies that fostered the Cambridge Phenomenon; they will reassert academic autonomy; and they will lay the foundation for trust between the Old Schools and the Regent House to be rebuilt. Our new Vice-Chancellor has declared that to be one of her priorities. I agree wholeheartedly, and I hope that when it comes to the vote, this House that hired her will give her what she needs to do the job.
Professor A. B. HOLMES (read by Dr R. J. ANDERSON):
Madam Deputy Vice-Chancellor, I congratulate the working group under the chairmanship of Professor W. Cornish on having identified the key points of concern among the Cambridge academic community on the proposed changes in ownership of IPRs.
I support the recommendations of the working group that no changes should be retrospective.
It is important for the University to consider what is the best policy for exploitation of IP generated by academics and researchers working in this environment. I personally favour the greatest freedom of choice, as I believe that real motivation has to come from the inventor. I am not convinced that the revised policy will offer this choice, nor the motivation to maximize the benefit.
I also draw attention to the apparent lack of clarity on the best way forward for the formation of spin-out companies.
I urge the Council to consider these points with great care in taking forward the recommendations of the working party.
Ms D. C. LEEDER (read by Dr R. J. ANDERSON):
Madam Deputy Vice-Chancellor, any tightening of IP and copyright policy could have potentially disastrous effects on a high-profile national collaborative eLearning project based here at Cambridge, of which I am Director.
Universities' Collaboration in eLearning (UCeL) is a collective of academics and learning technologists from a number of different UK universities (each with their own views on IP). We are engaged in making and sharing high quality interactive multimedia for teaching and learning. The eLearning resources we produce are in the form of 'reusable learning objects' (RLOs). These are web-based, small, self-contained 'chunks' of learning to support a single concept or learning objective. We make them collectively because interactive multimedia is very expensive but can be made much more cost effective by sharing both the creation and the completed RLOs. Because of this, and in the interests of reusability, it is important that all the RLOs and their component parts can be freely used and shared.
The components are a variety of materials - images, video, animations, etc. - and texts, devised by collaborating subject experts. I hope it is self-evident that this has wide-ranging IPR implications, and it has become increasingly apparent to us that the 'old style' of handling copyright, typified by the lawyer's instinct to nail everything down so that it can't possibly move, is completely inappropriate and unworkable in this paradigm, where everything needs to be as freely reusable as possible.
This is a high-profile national project where all the collaborating partners are willing and happy to share their materials in the interests of enhanced teaching and learning resources. It is innovative, creative, and has generated enormous interest throughout the academic community - both here and worldwide. All of its methods and processes are entirely open source and free for all to use. It must not be scuppered by short-sighted measures which might prevent the open sharing of knowledge, resources, and media assets, which may have been devised in the past to protect individual and separate ivory towers, but which are completely inappropriate for these new ways of working.
Professor M. ASHBURNER:
Madam Deputy Vice-Chancellor, the current Report is the result of the extraordinary reception given to the General Board and the Council's Joint Report on IPR issues of July 2002. The reasons that Report had such a hostile reception when discussed here just twelve months ago were several, as was made clear in that Discussion.
The present Report from the Research Policy Committee's Working Group is far more modest in its aims. It is a document for discussion, rather than for immediate decision, and that is to be welcomed. The Working Group is also to be congratulated in very clearly setting out the issues and options that face us.
In the Discussion on the Joint Report twelve months ago I expressed four concerns. I now wish to revisit those concerns in the light of the RPC Working Group's Report, before us today.
1. The first was that the Joint Report was ambiguous with respect to my rights, as a University Teaching Officer, to submit experimental data to public databases, such as the global nucleic acid sequence database. The present Report (para. 3.1.2) 'considers it essential that the University should declare in its terms of employment that all are free to place research results in the public domain'. That seems pretty unambiguous to me, and I would support such a policy.
2. My second concern, as a designer, builder, and provider of public databases, was that the University could assert copyright over these products, despite the fact that they are funded with the explicit condition that they are public resources. The present Report (para. 3.1.6) suggests that 'there should be a clear statement endorsing the view that the University does not claim copyright in the works of the academic staff'. Since the title of this paragraph includes the words 'copyright and databases', this also makes me happy. Para. 3.1.9 of the Working Group's Report reinforces this view. Following the Royal Society's Needham Report on IPR our right to make databases publicly available is asserted.
3. My third concern was that the effect of the Joint Report - had its recommendations been implemented - would have been to inhibit the release of software under an Open Source licence. Here the Working Group's Report is less clear (para. 18.104.22.168), although reference back to para. 3.1.3 would indicate that as long as I do not wish to patent software then I can freely disclose it, without, as implied by our last Vice-Chancellor, requiring the Research Services Division to 'oversee' this disclosure. That too is to be welcomed.
Other lessons have been learned since the publication of the Joint Report on IPR in July 2002. This Working Group have tackled head-on some of the concerns that were in the air twelve months ago; we now have clear statements that the forward-selling of blocks of intellectual property rights by the University is now no longer on the cards.
This Report has, therefore, done much to clear the air. It is also welcome to see in black and white that any change in IPR policy must be approved by the Regent House, and not merely subjected to a Notice. This Report does, of course, reaffirm one major proposal of the Joint Report, that all patent rights on research, regardless of funding, be vested in the University. I am, personally, less exercised by this proposal than some of my colleagues. This is not to say that I do not have concerns. I take seriously the concerns expressed in the Discussion last year that this may actually lead to the opposite effect to that wished - that it may lead to a reduction in the exploitation of inventions, a reduction in the public good that should result from our research. I am also concerned that, as expressed by others, Cambridge is not learning from very extensive experience of technology transfer in the US and I too welcome the Registrary's statement today that the forthcoming review of the Research Services Division will include comparisons with analogous bodies in the US.
Mr B. J. BRINDED:
Madam Deputy Vice-Chancellor, I am here today as a representative of Cambridge University Students' Union, and would like to raise some of the issues which are of concern to many students in this University.
Students held a debate about the July 2002 IPR proposals at a CUSU Council in Michaelmas Term last year. Student representatives voted by overwhelming majority to mandate the CUSU President and Executive to urge student members of the Council of the Senate to 'resist and vote against any motions put which claim ownership of IPR from employees and students of the University'. Many students were concerned that the 2002 IPR proposals might cause academics to leave, reduce incentives for quality commissioned work (lecture notes, books, etc.), and have a negative impact on academic freedom.
The patent proposals presented in the Report of the RPC Working Group on Ownership of Intellectual Property are a large improvement over the July 2002 paper, but there is still much uncertainty over academic freedom and the openness in teaching and research involving students. Academics will inevitably be encouraged to exploit patent options as part of their academic career in a manner not seen at Cambridge in the past. Of primary concern to students is section 22.214.171.124 of the Report, which states that 'there will be circumstances in which students should be required by specific agreement to assign IPRs to the University to the same extent as is required of academic staff by their employment contracts'.
If the recommendations of the Report of the RPC Working Group on Ownership of Intellectual Property are adopted, much work needs to be done to ensure that students are not adversely affected by the new patent policy. Issues include: participation in a confidential project should be truly optional; there should be a wide-range of open, patent-free projects for both undergraduate and graduate students. Students should be warned of any possible confidentiality clauses with projects as early as possible; in no circumstances should this occur after a project has commenced. Participation in confidential research should not affect assessment of academic performance. Contracts with students should ensure absolute equality with University employees, including a fair share of any royalty payments and a limit to ensure only patent rights are assigned to the University by the student; the copyright of any computer program or documentation produced by the student should remain with them to license or transfer as they see fit (as is the case for University employees under the proposals).
A student's future career should not be limited because they choose to work in a confidential research area. The Research Services Division is already getting some students to sign waivers to their IPR rights when working with patentable ideas involving University employees. Having a formal agreed structure on how to deal with this issue is of the utmost importance whatever the University decides to do about patent rights of University employees.
Dr N. J. HOLMES:
Madam Deputy Vice Chancellor, I want to express my thanks to Professor Cornish and his colleagues for producing such a clear and well thought-through Report. There is much in this Report and its recommendations that I agree with. Although such comparisons may be invidious, it is immeasurably superior to the 2002 Report which we discussed in this house almost exactly one year ago. There are some specific points I want to make.
I strongly applaud Recommendations 7-9 that the ownership of intellectual property is a matter which should only be altered by Grace of the Regent House and that such a policy should be effective only after incorporation into Statutes and Ordinances.
In addition, I welcome the implicit recognition that the 2001 policy, which applied to all externally funded work, did not contain sufficient safeguards to academic freedom. Specifically that the overriding right to place results in the public domain and the rights of staff to retain ownership of their own confidential knowhow, notes etc. were not explicitly protected. I strongly favour the idea that a new policy should apply to externally funded work.
There are two issues that I want to comment further on. The first is the question, referred to in paragraph 126.96.36.199 of whether ownership of patents should be joint between the inventors and the University. I was one of several respondents who urged the consideration of joint ownership. I disagree that the desirable objectives embodied in this idea are difficult to achieve by this mechanism. On the contrary, it is a sure and certain way to guarantee the very rights of inventors that the Working Party regard as important such as involvement in decisions on exploitation. I accept that it creates some difficulties such as assignment of rights and administrative burdens, but I do not accept that these are insuperable or even more difficult to solve than the contrary problem of ensuring, in the absence of joint ownership, real consultation with the inventors over exploitation for example. Indeed from 1987 to 2001 our sole policy on IPR depended on rights to assignment.
By way of nice irony, I think the idea of referees (para. 3.1.11) to resolve disputes between the University and inventors an attractive one. However, this will be a difficult one to make work in practice.
As I pointed out last year, a principal defect of the 2002 proposals was that the annex which contained the actual policy was extraordinarily broad in its claims and indeed clearly failed to incorporate most of the restrictions to ownership claims spoken of in the accompanying Report. This Report does not yet constitute specific proposals and the actual wording of the proposed Ordinance will be crucial. It needs to be explicit and complete and therefore regrettably long. Let us hope that it is as admirably clear as the present Report. However the wording is so critical that when the draft Ordinance is published it must be the subject of consultation and comment. For this purpose an invitation to comment in writing, at a draft stage, would be more effective than a Discussion only. Although it may be improper, I cannot help expressing the hope that the Council will ask Professor Cornish to draft the Ordinance.
Finally I want to turn to the bigger picture. What does the University wish to achieve in formulating a policy on IPR? Clearly in the case of the 1987 and 2001 policies the aim was to respond to pressures from research funders. Paragraph 1.4 of the present Report mentions Government concern about economic benefits. I am aware that there are differences between disciplines but I can tell the Regent House that many, perhaps the majority, of the exploitation deals struck in my own area are with multinational or overseas companies. So patenting and commercialization may not directly benefit the British economy. However, if the aim is to improve the effectiveness of technology transfer then I think unfettered publication will sometimes be the most efficient means. In the course of my career there have been two 'inventions' made in Cambridge which have had major impacts on my field; they were polymerase methods of DNA sequencing and the hybridoma method for making monoclonal antibodies. Neither were made by University staff but nevermind. In both cases these novel methodologies were not patented but placed freely in the public domain. By this means these new technologies were transferred incredibly effectively to thousands of laboratories in a short time. Both have led to major advances in academic and industrial science. I do not claim that had they been patented by the MRC these technologies would not have been used. I do believe that their use in commercial research and development would have been slower and lessened - you would be surprised by how much re-invention goes on in companies to avoid patent royalties and infringements.
In summary, I want to give a warm welcome to this Report, coupled with a plea to think again about joint ownership and to pay most careful attention to the wording of our future policy based on the further development of these proposals.
Dr S. MAHAJAN:
Deputy Vice-Chancellor, the Working Group were 'asked to divine whether there is any modified version of the policy that would be likely to be accepted in a ballot'. A more useful, if more dangerous question is: 'What should the policy be?'
My answer is that all patents, copyrights, and trademarks (IPR) should be owned by the academic, unless he or she agrees to a funding arrangement with a specific provision stating otherwise. By the little-noticed Grace 6 of 21 March 2001, the University annexed most IPR from externally funded research. For many of us, only the heated and entertaining responses last October brought the Grace to our attention. We should use the opportunity now to correct our oversight in 2001: we should repeal the Grace and return the annexed IPR to ourselves.
As my case will illustrate, the 2001 policy impedes openness. I am a physics lecturer funded by the Gatsby Charitable Foundation to contribute to physics teaching. To that end, I shall publish a textbook under the GNU Free Documentation Licence (GFDL) (http://www.gnu.org/copyleft/fdl.html), a free-software licence designed for textbooks and manuals.
I will transfer all rights to a major American publisher, and they will publish the book under the free licence. This method of publication required approval from their managing director. The years of delicate negotiations fail if I do not have clear ownership of the copyright, and therefore the power to transfer it in exchange for publication under a free licence. Publication of patents under a free licence, one possibility recommended in the Working Group report, is similarly rendered useless if the ownership does not belong unequivocally to the academic. Patent litigation is ruinous: Few dare use a patent, even one released under a free licence, if its ownership has the slightest unclarity. Here is the advice of an expert, the French jurist Dalloy:
When ignorance reigns in society and disorder in the minds of men, laws are multiplied, legislation is expected to do everything, and each fresh law being a fresh miscalculation, men are continually led to demand from it what can proceed only from themselves, from their own education and their own morality.
A more Anglo-Saxon phrasing is the saying that 'The best laws ... were those which repealed the preceding ones.' Instead of Graces or Statutes annexing our creative work, let us encourage a culture where benefit to society is our goal as academics. We can move in that direction by declaring that our work belongs to us, and by trusting our fellow academics to use their discoveries and knowledge for social good.
Mr N. M. MACLAREN:
Madam Deputy Vice-Chancellor, this Report is the one that should have been produced in the first place. While there is always scope for dissension, it is obviously a careful attempt to address all of the issues and produce a fair deal for all parties. I agree with almost all of the recommendations, but shall not list those I regard as critical.
The principles are all very well, but putting them into practice is going to be quite another matter. There will be some very tricky drafting, and some subtle technical details (such as allowing the various types of 'public domain' licence) will need careful thought. As the Report makes very clear, the Intellectual Property Right Policy should be part of the Ordinances, and drafted with the appropriate level of care. It is critical that any modifications maintain the fairness and balance of this Report.
I am puzzled as to why paragraph 188.8.131.52 says that initial joint ownership would make things so much more difficult, and hope that Professor Cornish can explain the legal niceties. If there is a precisely defined procedure to decide how to exploit patents, assign rights, and (when appropriate) transfer ownership back to the inventor, as the Report recommends, why should that procedure not also include the assignment of ownership? The ownership would then be joint until that assignment is performed.
There is one point on copyright that I think has been omitted from this Report, though it is referred to in section 4.1 of the Report of the Joint Working Party on Copyright published in the Reporter of 17 October 2001. Very occasionally, someone causes inconvenience to colleagues by developing a set of lectures or a suite of software, leaving the University, and then refusing permission for them to be used. I believe that the University should have a perpetual, royalty-free, non-exclusive licence for copyright and similar IPR produced by staff in the course of their employment. Such a licence should be for non-commercial University use only, excluding such things as its use for external, charged courses, and the same conditions should apply to any derivative works.
A much harder problem is the process of turning this Report into a Grace. I believe that it should be done openly, with all drafts, minutes, and all non-confidential papers viewable by all staff of the University, at the very least, and that whatever group takes on the task should encourage and consider input from all reasonable sources. Despite frequent claims that this procedure is too time-consuming, it often saves time by avoiding predictable errors (as was not done in the case of CAPSA and several other failures) and allowing constructive rather than obstructive dissension.
Related to this, of course, is that the working group should include a reasonable balance of members, corresponding to the main viewpoints in the debate. This matter has got sufficiently out of hand that considerable effort will be needed to restore the level of trust needed to develop a suitable policy, to get the resulting Grace accepted and for the policy to operate effectively. It is better to have heated debates in a small group than another furore and a rejected Grace, let alone legal challenges to it. Drafting a good policy will not be easy, practically or politically, and I feel that it is important that all camps feel that their interests are being considered.
The Report notes that the School of Technology is concerned that the administrative structure of the Research Services Division is likely to lead to conflicts of interest. It seems difficult to see how this could not be the case, because Cambridge Enterprise will be judged on how much money it makes for the University, and this will not always be aligned with the interests of the inventor or even with the interests of University research in general. This conflict will make the tasks of the proposed Referees far more difficult than is necessary.
This confusing structure does not enhance trust in the administration, especially by researchers and others who have been badly treated by the Technology Transfer Office in the past. It is also worth noting that it makes it extremely hard to separate Cambridge Enterprise's costs from those of the rest of the Research Services Division. It would be far better to have Cambridge Enterprise properly separated, so the function of the Research Services Division is purely and simply to enhance the effectiveness of the University's research and to help its researchers, and Cambridge Enterprise's accounts can be evaluated properly.
Lastly, I reiterate my support for the Report's recommendations, and should welcome an Intellectual Property Right Policy that implements them being inserted into the Ordinances.
Professor D. M. G. NEWBERY:
Madam Deputy Vice-Chancellor, there is much to commend in the Cornish Report, specifically the recognition that the 'University's ownership of IPR is subordinate to the fundamental freedoms of academics to pursue intellectual inquiry, and to publish the results' (para. 3.1.3). We all no doubt applaud the principle that 'there should be a clear statement endorsing the view of the Copyright Working Party that the University does not claim copyright in the works of academic staff.' (para. 3.1.6) The emphasis on due process is also welcome - that changes should not be retrospective, changes should be graced, and not take effect until incorporated into Statutes and Ordinances, and then only in respect of inventions and other research results arising in the future (para. 3.1.2).
There are, however, still grounds for concern. Professor Evans has already drawn attention to the fact that the terms of reference were restricted to considering 'whether there was any modified version of the University's proposed policy on IPR which would be likely to be accepted in a ballot' (5.1). It would have been better if the aim had been to see whether the benefits to society and the University of changing the status quo as it was before 2001 were likely to exceed the costs, and if so, what changes would maximize the net social benefit. It is an accepted principle of good regulation (and one recognized by Oftel and Ofgem) that changes in governance or regulation should be based on a cost-benefit analysis. It is also a sound principle that the benefits should exceed the costs by a sufficient margin and with a sufficiently high probability, as change to governance is costly, and can undermine trust.
The costs include the very substantial cost of running the RSD, the alienation of those wishing (and previously entitled) to patent, and the reduction in the attractiveness of Cambridge University to prospective Faculty. The benefits are harder to identify and are likely to have been overestimated. The International Technology Service1 of the British Department of Trade and Industry has published a report entitled Key Lessons for Technology Transfer Offices: Viewpoints from Silicon Valley.2 We would expect that if technology transfer flourishes anywhere it would be in Silicon Valley. The report notes that the Bayh-Dole Act transfers IP rights to universities, so the findings of the report should have direct relevance to British universities. It is therefore salutary to find that 'All interviewees noted that TTOs, in the aggregate, did not recover their costs and that universities seeking to create TTOs should expect those offices to lose money or at best break even for the foreseeable future.' (p. 3) 'Royalty revenues from licensing do not typically exceed the total personnel, legal, and patenting costs associated with operating the TTO. Those TTOs that are consistently financially successful (e.g., Stanford, the National Institutes of Health) have more than twenty years of experience, which has led to substantial professional expertise as well as an extensive patent library. Universities seeking to create TTOs should expect those offices to lose money or at best break even for the foreseeable future.' (p. 6)
Given the difficult financial circumstances in which the University finds itself, it therefore seems almost reckless to invest more money in expanding the RSD, when even outstandingly innovative US universities only make money after 20 years of experience. The only conclusion is that it is likely to be expensive for the University to automatically own 'all patent rights in inventions made in the course of employment, which includes activity conducted under an employment obligation to carry out research' (paras. 184.108.40.206 and 220.127.116.11). To do so would place an obligation on the University to strengthen and support an expensive TTO, which, as we have seen, is a recipe for losing money for the first 20 years, and longer, unless we are very lucky.
If the proposed policy costs the University possibly large sums of money, does it have any redeeming virtues? Does it further the University's mission to promote and disseminate research? Even if it did so, and that must be questioned, does it make best use of our limited resources for that purpose? I would argue not. The pre-2001 policy would still allow sponsors (including research councils) to propose an allocation of patent rights for particular projects, and academics could decide whether they were willing to accept the limitations that might entail. The former policy would allow academics to seek the help of whichever organization, including RSD, would best advance any IP interests they had acquired. It therefore facilitates co-operation and appropriate technology transfer. In contrast, the Cornish Report's recommendation places an obligation on the University to pursue technology transfer that on the evidence would make us poorer and therefore less able to pursue our main goals of teaching and research.
I conclude that the recommendation that patents should belong to the University not only removes rights that we held until 2001, which itself is costly and damaging to our ability to compete in the academic market place, but has not been demonstrated to be in the University's financial interest. The Report does not provide the kind of evidence needed to justify a significant change in our terms and expectations of employment. I conclude that it has therefore failed in even its narrow remit to propose a modification of the University's policy on IPR that would be likely to be accepted in a ballot.
1 See http://www.globalwatchonline.com/
Dr S. J. COWLEY:
Deputy Vice-Chancellor, this Report is a significant improvement on the Joint Report of 2002. Many aspects of it are to be welcomed, e.g. the view that financial considerations should be subordinate to the fundamental academic freedom to publish, the proposal that policy should be incorporated in the Statutes and Ordinances rather than announced in Notices (or even not announced at all), the rejection of block forward-selling of any IPRs that the University might own, and the proposed review of the RSD.
I have three points that I wish to make.
Firstly, as with the 2002 Joint Report, I still find no convincing objective argument as to why the University should own patent rights or any other IPRs. A reasoned argument based on technology transfer and entrepreneurship is absent, although in acknowledging the uniqueness of the University's historical stance towards IPRs and 'the success of the Cambridge Phenomenon', the Report is close to enunciating a counter argument. Neither is an argument presented that a change in ownership would be in the University's financial interest. Where is the hard-nosed business plan that demonstrates that the significant increase in expenditure in the RSD will generate increased revenue over and above that which would result from continuation of the type of voluntary agreements that have been agreed in the past? A change in policy, followed by a review of the RSD and the preparation of a business plan, would seem to be in the wrong order. The strongest case that I can find in the Report for a change is the threat (I presume from HMG) that there 'may in future be a legal requirement that all IPR arising in the course of academic employment must be owned by the relevant university'. I do not understand the need for such an ideological legal requirement if it is going to inhibit technology transfer and entrepreneurship, and damage the financial position of the University. Does HMG not understand rational argument?
Secondly, the Report seems to be based on the assumption that academics and other employees can trust the University, but that the University does not trust its staff. The arguments presented in para. 2.2 for the University owning patent rights seem to be based on the assumption that members of staff cannot be trusted to act reasonably and negotiate in good faith. History, e.g. the introduction of new contracts of employment without even a Notice, suggests to me that, if anything, it is the University that in the recent past could not be trusted to act reasonably. Refreshingly, there are signs that there is change in the wind, with the central bodies attempting to earn our trust. However, there could always be another regime change. Thus what is proposed must be robust enough to protect the rights of staff after a change in power, or the next time a key academic takes a sabbatical. If the University trusts its staff, and a decision is made to assert a claim on a revenue stream, I see no reason why, in the case of exploitable results, Statutes and Ordinances should not state either that the University waves its patent rights and that there is a requirement for staff to offer a licence to the University, or that there is joint ownership of patent rights. Further, Statutes and Ordinances should make it explicit that the University is claiming a part of the revenue stream only for 'inventions made with substantial use of university equipment and facilities'; the failure to include such a clarifying statement might again suggest a lack of trust of staff.
Thirdly, personally I believe that we should preserve the status quo. There is evidence that it has worked in the past both from technology transfer and financial standpoints. It is based on the principle that the University can trust its staff to share revenue streams. It does not discriminate against scientists/technologists (who are more likely to come up with a patentable idea) compared with artists (who are more likely to have 'secondary' income streams protected by copyright). It does not discriminate against the source of an income stream for the same piece of academic work (e.g. income from patents rights or from a Nobel Prize, both of which might arise from the same research results). It does not lead us into the quagmire of deciding when an invention has been made in the course of employment, as opposed to, say, in one's own time or during consultancy. The latter in particular could well turn out to be a nasty quagmire. For instance, it so happens that both half-decent ideas I had this summer were whilst taking a shower in the morning (one on a Sunday in the UK, and one whilst 'consulting' in the USA). A case could be made that neither was the result of the substantial use of University equipment and facilities, so if they were exploitable who would own the patent rights? Ominously, I note that the new Mathematics building does have showers (so maybe the University has even got that one covered).
Professor S. F. DEAKIN:
Madam Deputy Vice-Chancellor, the Report of the RPC Working Group on the ownership of IPRs reasserts the cardinal principle that members of academic staff should be free to publish their research results. The issue which we have now to consider is whether this principle is truly compatible with the Working Group's recommendation that the University should have residual ownership of patent rights; or, more precisely, that the University 'should have the right to apply for a patent and thus to become proprietor of any patent granted on an invention made in the course of research conducted in fulfillment of the obligation in the employment contract to conduct research and in other circumstances covered by the Patents Act 1977, s. 39(1)' (para. 18.104.22.168). In addition, the Report suggests that certain forms of copyright should vest in the University as a matter of course, without the need for agreement to that effect: 'work specifically commissioned by the University' (para. 3.1.6).
As the Report accepts, the implication of such a step is that, once the University becomes the residual IPR holder, it could 'at any time make it a breach of contract for the academic to 'go public'' (para. 3.1.3). The Working Group therefore recommends that contracts of employment be amended so that, notwithstanding the allocation of certain residual IPRs to the University, a member of academic staff would always have the right to place research results in the public domain, even where the effect of doing so would be to eliminate the possibility that the University (or any third party) could then seek a patent in respect of the relevant invention. However, the Report contemplates an exception in cases where an academic makes a specific agreement with the University to keep certain information confidential, as part of an agreed process for commercializing it.
The first point to make about this recommendation is that, by reinstating, in effect, the individual academic's right of veto over the commercialization of research, it undermines one of the main objectives of those who favour University ownership, namely that 'individual negotiation about assignment of licensing of the rights by the academic can sometimes be long drawn out and costly' and that 'this can be so particularly when several inventors are involved' (para. 2.2). However, it would not be unreasonable to assume that the crucial issue in future will be the willingness of individual researchers to sign waiver forms contracting away their right to publish their work.
I referred in a previous Discussion to the letter written by the then Vice-Chancellor Alan Cottrell in 1977 to the CVCP, in which he asserted the academic's right to publish against claims then being put forward for centralized University ownership. He wrote:
Freedom of expression is fundamental to universities and the University would be unwilling to put any constraint on an individual who may wish to publish the results of his work on the grounds that the University rather than the researcher wished to explore the possibility of obtaining a patent, as is recommended by the [CVCP] Working Party
In my view, that policy would continue to serve us well today. If the Working Group's recommendations are accepted, the University should not simply ensure that contracts of employment fully respect the right to publish, it should go further and embody in a code of practice an undertaking that it will not go out of its way to encourage staff to sign waiver clauses, and, indeed, will only accept bars on normal academic publication under the most exceptional circumstances.
A more straightforward solution is for the University to maintain its current rule of allowing residual ownership of IPRs to vest in the individual employees who are responsible for the invention or creation in question. This is the best way in which to defend academic autonomy and ensure the maximum possible circulation of ideas and discoveries. The assumption in some parts of the University has been that the commercialization of research cannot take place unless residual ownership is transferred, but a comparative glance at the practice in other universities across the world suggests otherwise. According to this morning's Guardian newspaper, the current agenda of the University of Melbourne 'is big on commercialisation of intellectual property, improving biotechnology research, and exploring new business opportunities to complement receding levels of government funding'.1 One might assume from this that the University of Melbourne owns the residual IPR in employee inventions and creations. Yet the University of Melbourne's Statutes specify that 'the creator of intellectual property' - that is, the individual academic - 'will own and will have all [relevant] rights with respect to intellectual property' and that where the University would otherwise have ownership under the general law, it will transfer that ownership to the creator. In return (among other things), the University has certain rights commercially to exploit the IPR concerned for educational purposes, and to share in the revenues generated by commercialization.2 The University of Melbourne's position on this issue represents a compromise worked out over a period of time between a number of different interests including the University administration, commercial interests, and representatives of academic staff.
I mention this example because I believe that the legitimate objectives of commercialization are currently being met in many universities around the world without going to the lengths of depriving academic members of staff of the residual ownership rights which alone can protect the right to publish. Before taking the fundamental and not easily reversible step of transferring these rights to the University, we should explore other solutions.
Dr D. A. GALLETLY (read by Dr D. R. DE LACEY):
Madam Deputy Vice-Chancellor, one year ago, the Joint Report of the Council and the General Board on the ownership of intellectual property rights came before the Regent House for Discussion. Two long Tuesday afternoons of speeches later, it was clearly apparent that there were grave concerns about many aspects of the proposed policy in all quarters, and at all levels, of the University.
In response the Working Group whose Report is now in front of us for Discussion was set up. Its remit was, through no fault of its own, shamefully narrow, for it was 'asked to report to the [Research Policy] Committee and the General Board by the end of the Easter Term 2003 whether, with modifications and safeguards, the proposed policy would be acceptable to the University' and 'to divine whether there is any modified version of the policy that would be likely to be accepted in a ballot'. No possibility there of throwing the policy out wholesale, and starting from scratch to come up with a solution that might conceivably have been more coherent and sensible. That this was not an option allowed to the Working Group in its deliberations is a sad reflection on the current climate in the University.
The Working Group has done its best with what meagre freedom it was allowed. The Report now before us is a vast improvement on last year's effort, and appears to have taken full account of the contribution of this issue to the general feeling of distrust in this academic community. But there are concerns that have not been addressed fully - have been unable to be addressed fully - that need to be addressed. I shall mention only one, as other speakers will no doubt raise many of the other issues.
Paragraphs 3.2.1 and 3.2.2 touch on the issue that it is not only academics, and others within the University, who find the proposed policies on ownership of intellectual property rights difficult to work with and, at times, wholly preposterous. To my certain knowledge there has been at least one occasion on which a company has come to the Research Services Division to try to broker a new agreement, more favourable to the University than the one then in existence, and been rebuffed. This was a company which had itself generated the initial intellectual property in the area, and had come to the University and engaged in several collaborative research projects. The relationship between the company and the University researchers had been a close one, and the company eventually decided that a more formal arrangement, which would return a percentage of its profits to the University, would be more sensible and reasonable.
Unfortunately the Research Services Division did not, on this occasion, prove itself amenable to reason. They were unwilling to discuss any arrangement which would not end up with the University owning and controlling all intellectual property rights. After several meetings, the company gave up attempting to explain that in areas where intellectual property rights are already established, further work on that subject cannot transfer ownership of those rights. The company was left with the concern that, being a small company, it would be unable to fund all the work as research contracts and that future joint research projects might become impossible, or at the very least restricted.
Such a rigid approach is surely unhelpful to the very collaboration between industry and academia that the University and the Government are seeking to encourage. I therefore wholeheartedly support paragraph 27 in the summary of recommendations: 'The University should announce and pursue a more flexible policy in its negotiations with industrial partners in relation to ownership of IPR. Such a change could do much to enhance acceptance of what is being here proposed as could the announcement of arrangements for a review of the RSD'. This must now happen without delay; I am glad to hear from the Registrary's speech today that this will soon be forthcoming. The sort of problem I have outlined is something which must be resolved by any proposed policy, if exciting and innovative co-operative research between the University and small companies is to continue as it has heretofore.
Dr D. R. DE LACEY:
Madam Deputy Vice-Chancellor, 'The Working Group has been asked to divine whether there is any modified version of the policy that would be likely to be accepted in a ballot' (1.3). Thus the Working Group's terms of reference. So they are not concerned to establish a coherent IPR strategy so much as to see what can be rescued from the incoherent one of the Joint Report. Was the use of the word 'divine' intended to recall the Preface to the Authorised Version of the Bible? King James's Men sought not 'to make a new Translation, nor yet to make of a bad one a good one ... but to make a good one better'; Professor Cornish's men were charged with making a bad one tolerable. It is possible that they have succeeded, and that the Regents will accept this version, but it is a very great pity that the opportunity was not taken to do the job properly.
To one who has little of a sweet tooth, this result tastes much of Fudge. This may be better than the gall of Dragons which affrighted King James's Men, but it is not good enough. The Report argues for equal treatment (3.1.6), yet also for the exclusion of copyright. I can only see this as evidence that there are no clear guiding principles underlying the proposals. Dr Clark has indicated this afternoon how a creeping grasp over our copyright is already in operation.
Another issue evaded is the amount of our time owned by the University. In a recent Discussion, Professor Spencer mused on the fact that, by suitable definition, anything between 50 and 100% of 'University time' might be spent on actual University work (Reporter, 5912, 5 February 2003). Similar ambiguity pervades this document. It is well-known that scientists receive their inspiration in the bath (or, in Dr Cowley's case, the shower); this appears not to prevent RSD wishing to appropriate it. Is any of our time to be our own?
Others have raised the concern of how a Head of Department might choose to spend his subordinates' IPR income. The Report acknowledges that this will be even more significant if anything like the current RAM is introduced; however it fails to note that this fact should itself inform the reassessment of the RAM for which the Board of Scrutiny has called.
The Report begins with a veiled threat in 1.4. I assume that the rather gnomic statements there, 'there will be financial incentives to improve performance [in technology transfer]' and 'an exchange of views which included some discussion of the possible impact of Third Stream Funding' are to be taken as implying a major financial dis-incentive to refusing to toe a governmental line. Which itself entails moving from being a University to becoming a mere college of technology. Later in the Report we are told that a 'culture of entrepreneurship', encouraged in the Joint Report, will only come about through a growing acceptance of its value and relevance' (22.214.171.124) and while this is a great improvement over the Joint Report it still seems to presuppose that value and relevance are there to be perceived: Blue Skies research is Out.
Clearly if we are to make money out of our intellectual property, it should be done efficiently, and the Report acknowledges this. 'There is a clear need for expert management of the whole procedure, which involves both an official search and examination by patent office experts' (126.96.36.199). So far so good. But the Report continues 'To provide it RSD needs to know from the outset that the rights belong to the University'. What sort of 'service' to the academic community does this entail? At the least it hints at potential conflicts of interest between the service aspect (helping academics in their work) and the technology transfer aspect (exploiting their results) which reside together in the same Division. Certainly the only time I have tried to use RSD's services - in a copyright query - they were totally unhelpful when it was discovered that the copyright in question was not my own or the University's. My Faculties' Librarians are much more disinterested and - perhaps thereby - more useful. The report acknowledges that the School of Technology shares a concern over the conflict of interests. The concern needs addressing. An unspecified review at some unspecified future date (as suggested in 3.2.2) is unlikely of itself to allay it. The announcement of a date in the first half of 2004 is welcome, though the fact that it will be undertaken by a Pro-Vice-Chancellor only just installed in office is a little worrying We shall hope that the terms of reference will ascertain a bold grasp of this nettle.
This claim on behalf of RSD also ignores the possibility of joint ownership, and thus neatly evades the issue of IPR developed jointly by people working for different institutions - an e-mail exchange between scholars at different universities, for instance. Sole ownership might be convenient but that is not adequate reason for a far-reaching policy which will potentially affect all aspects of our University's work. 'Joint ownership is necessarily complicated', Professor Cornish repeated this afternoon. So are some aspects of quantum theory, some legal judgements, some commercial agreements. Is this an adequate basis for a solution which deprives the scholar of control over his inventions and is potentially at odds with a university's goals?
Professor I. M. LESLIE:
Madam Deputy Vice-Chancellor, I regret I must begin by commenting on the remarks made by Professor Evans concerning Vodafone.
1. No phones were given to students by Vodafone, just special access to new network facilities.
2. More significantly, no IPR was 'handed over to Vodafone'.
3. Professor Evans made the same allegations in a letter to the THES a few years ago when the collaboration with Vodafone was announced. I corrected her statements in letter of reply to the THES a week later.
Returning to the topic before us, I declare my relevant hats: I was a member of the Working Group, I am member of Council and of the Council of the School of Technology.
I would like to make three brief remarks.
First, I am pleased to see that the Registrary has announced the timetable for the review of RSD, and that it will be sooner rather than later. I don't believe the Regent House will accept a policy based on this Report if it cannot see how that policy will be implemented, and in particular how Cambridge Enterprise fits into the University. I am sure that this consideration will be part of the review.
Second, as a member of the Working Party I would like to address remarks that has been made regarding the remit of the Working Party. We interpreted our remit very broadly. The evidence for this is clear: the breadth of the consultation, the keeping of nonregistered rights in the hands of academics, the introduction of a referee, and the analysis of joint ownership. We were after the best policy for Cambridge.
Finally, I would pass along, partly because it is amusing, but mainly because it is relevant to the issue of joint ownership, what one large US corporation is considering as an approach to jointly developed intellectual property. They would agree with any partner an itemized list of jointly developed IPR, agree symmetric licensing terms, and then roll the dice to determine who gets to pick first from the list. The parties would then proceed to alternately select the items which each will exclusively own but license to the other. Considering how averse lawyers are to uncertainty in contracts, it shows what lengths people will go to in order to avoid joint ownership.
Dr N. A. DODGSON:
Madam Deputy Vice-Chancellor, I welcome this Report, which improves on the original proposal. I would like to highlight one particular difficulty which I hope will be addressed in the upcoming review of RSD. This 'difficulty' is that RSD currently seems to have the procrustean attitude that all research must fit the same model of exploitation. This cannot be correct. There are orders of magnitude difference between exploiting pharmacological IPR and computing IPR. In the former, you require millions of pounds of investment, years of development, and the co-operation of a major drug company. In the latter you require a shoestring budget and as few as two people and a dog, but you must get it going within weeks or months if you are to stay ahead of the competition. RSD give the impression that they believe that all IPR exploitation follows the pharmacology model rather than the computing model. The Computer Laboratory's experience leads to doubts about RSD's ability to work fast enough to allow the University to exploit any computing IPR efficiently or effectively. For example, a recent startup from the Computer Laboratory was held up for several months waiting for RSD to sign a single piece of paper; those months could make the difference between success and failure for the company. I would be much happier if the University allowed academics to choose to go the startup route alone, with full ownership of their IPR, without having to wait for University bureaucracy to grind its way through months of Kafkaesque procedures.
In particular, for these proposals to be workable, the 'specific time limits' mentioned in Recommendation 14 need to be on the order of a couple of months between disclosure of IPR to RSD and RSD's decision whether or not to proceed with exploitation.
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Cambridge University Reporter, 29 October 2003
Copyright © 2003 The Chancellor, Masters and Scholars of the University of Cambridge.