Box 2A

Nine Points to Consider in Licensing University Technology

  1. Universities should reserve the right to practice licensed inventions and to allow other nonprofit and governmental organizations to do so.

  2. Exclusive licenses should be structured in a manner that encourages technology development and use.

  3. Strive to minimize the licensing of “future improvements.”

  4. Universities should anticipate and help to manage technology transfer-related conflicts of interest.

  5. Ensure broad access to research tools.

  6. Enforcement action should be carefully considered.

  7. Be mindful of export regulations.

  8. Be mindful of the implications of working with patent aggregators.

  9. Consider including provisions that address unmet needs, such as those of neglected patient populations or geographic areas, giving particular attention to improved therapeutics, diagnostics and agricultural technologies for the developing world.

Endorsing “consideration” of the Nine Points, AUTM urged its individual members to seek their institution’s endorsement of the document by whatever internal decision-making processes are used. AUTM continues to seek endorsements of the document. As of January 2010, only 74 of AUTM’s member institutions have signed on.

CONCERNS ABOUT UNINTENDED EFFECTS ON ACADEMIC NORMS

Regardless of whether the real contributions of patenting and licensing activity to commercialization of federally funded inventions can actually be isolated and measured, some observers have expressed concern about whether the drive to patent, license, and commercialize research discoveries is antithetical to the traditional norms and functions of the university, namely, to expose students to the latest advances in knowledge, to conduct systematic inquiries, and to widely communicate research findings.51 Is it possible that the

51

P. Dasgupta and P.A. David. 1994. Toward a new economics of science. Research Policy 23(5):487-521; see R.S. Eisenberg. 2003. Patent swords and shields. Science 299:1018-1019; D.



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