• Actively promote and attempt to commercialize the invention;

  • Not assign the rights to the technology, with a few exceptions;

  • Share royalties with the inventor;

  • Use any remaining income for education and research;

  • Give preference to U.S. industry and small business.

For research that is supported exclusively by nonfederal money, the title to any inventions resulting from those data is owned according to the conditions established by the funder. For instance, corporate employees must assign their intellectual property rights to their employer, even sometimes for work done outside the scope of their employment. When research in an academic institution is supported by corporate money, the conditions of ownership must be clearly specified. The conditions often include proprietary control over the outputs of that research. In the case of academic research that is supported by nonprofit organizations, control is established by the granting organization. One example is the Howard Hughes Medical Institute, which retains title to all inventions arising from its support but frequently assigns its rights to the associated university or nonprofit institution.

Trade secrecy may be used as an alternative to patenting. In some cases, inventions and underlying data have been held as proprietary trade secrets by companies and even universities and thus are treated as protected information as long as reasonable efforts are made to maintain secrecy. Researchers and their employers have this option, particularly if they do not plan to seek credit for the findings by reporting or publishing the results. Also, in cases where research at a university is supported by a private company, a research contract may provide for a short delay in publication or sharing data until the patentability of the research findings can be evaluated and, if appropriate, patent applications are filed.

As noted above, academic researchers may have incentives to transfer their research findings to the private sector. These include the desire to see their discoveries translated into useful products or to profit themselves from commercial opportunities made possible by research. If these incentives cause researchers to withhold data, the net effect can be for research data to become less available.

In 2006, a National Research Council Committee examined whether changes in patenting and licensing practices by companies and research institutions pose a threat to continued progress in the rapidly advancing areas of genomics and proteomics research.38 The committee found that although difficulties in accessing proprietary research materials are clearly burdening research

38

National Research Council. 2006. Reaping the Benefits of Genomic and Proteomic Research: Intellectual Property Rights, Innovation, and Public Health. Washington, DC: The National Academies Press.



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