It has always been a challenge to make sure that an ever-revolving roster of faculty researchers fully understands an institution’s IP policies. However, in recent years, as undergrads have become increasingly engaged in entrepreneurial activities, this challenge has intensified, and institutions must now make sure that students are fully apprised about these matters as well.
While earlier engagement in innovation is clearly a positive, this evolution has shined a spotlight on a patchwork of student IP ownership policies, many of which rely on vague or problematic terms, leaving students and even technology managers, in some instances, scratching their heads over the question of who owns the IP under what circumstances.
With such murky language, it is no wonder that innovative students have begun to make noise on the matter, arguing that universities see millennials as the next cash cow, and that they’re seeking unfair IP advantages to make sure they don’t lose out on the next Facebook or Twitter. While such views may be overstating the situation just a tad, policy experts warn that the backlash could have a stifling effect on student innovation — the opposite of what most research institutions want to see.
How do you avoid such problems? Well thought-out policy revisions pertaining to student IP may be a good starting point, but TTOs also must redouble their efforts to communicate their policies to student innovators.
The issue of who owns student-generated IP has attracted considerable press in Colorado where Caleb Carr, a student innovator at the University of Colorado (CU), has taken all the universities in the state to task over policies he says are unfair. Carr, who worked with student colleagues to develop a hoist system for rescue helicopters and has launched a start-up to help bring the innovation to market, thinks student innovators should own their
IP outright. But Carr maintains that he hasn’t been able to get any clear answers on the issue from his school’s TTO.
Carr notes that the debate always boils down to what constitutes “substantial use of university resources” in generating the IP, a point that isn’t clearly delineated in the IP policy. “That is kind of the loophole that every university uses so that they can claim IP,” says Carr. “What we have been trying to do is work with the university to define that and what it means, and every time we have spoken to the university, we get told it is a gray area and that it depends on the situation. Well, that doesn’t provide any answers to students.”
Kate Tallman, the associate vice president for technology transfer for CU’s four campuses, counters that the language used in the CU IP policy is modeled after Yale’s IP policy, which she considers to be a best practice. “We work very hard to partner with the faculty and the administrators who are involved with those students to make it clear that the university is not going to own their IP,” she explains. (See the policy at http://www.cu.edu/ope/aps/1013)
However, Tallman notes that some ambiguity in the policy is needed so that the university can make judgment calls in certain circumstances. For instance, she notes that Carr and a student advocacy group he formed want the university to state the specific circumstances under which the institution will claim ownership of student IP. “For example, they want us to say if a student is paid to work on a federally sponsored research program and makes a discovery in the course of their employment collaboratively with the faculty member in that circumstance, the university will claim ownership of the IP,” notes Tallman.
“What gray area does that leave out? That leaves out the circumstance where an unpaid student is invited into a faculty lab to get exposure to a very early-stage research program,” explains Tallman. “The student may get involved and may have an idea that contributes to a research program where 90% of the idea comes from the faculty and paid graduate students.”
“They want us to commit that we are not going to claim ownership unless a student is paid,” she says. “So what is this going to do? This is going to create a chilling effect on the open academic environment at CU. We are going to have to work with the faculty who are accepting corporate research contracts to educate them on the implications of letting an unpaid student come into the lab.”
Tallman notes that the university would also have to assure its industry research sponsors that it has a system in place to protect their interests, and that it won’t allow students to access the lab where the collaborative work is taking place. “That is not the kind of environment we want to have on campus, but that is what having a clear policy to the level that [Carr’s group] is asking for [would mean],” observes Tallman.
An in-depth article on university policies regarding student IP appears in the April issue of Technology Transfer Tactics. To subscribe and access the complete article, along with the publication’s 8+ year archive filled with hundreds of case studies and best practices for TTOs, CLICK HERE.