A while ago I wrote about the CANVIS approach to modes of university innovation practice. Even longer ago, I described the five main productive approaches to IP management–WASTE. We can now put these together to frame a matrix of activities that help to situate where IP management and university responsibilities come together.
For IP, we have
Waive (take no ownership)
Assert (extract a tax from users)
Share (use, and allow others to use)
Transfer (place with someone else for management)
Exclude (the basic right; exploit for oneself)
For university work, we have
Commercialization (seek partners to make and sell product)
Arbitrage (find speculators for or brokers of rights)
New Ventures (start companies, for-profit or non-profit)
Internal use (support others adopting technology)
Scholarship (instruction, publication, deposit, exchange)
If we combine IP strategies with university opportunities, we start to see that the space is complex. Here is a chart that shows where there are realistic opportunities for universities to practice some version of rights management.
It is not as simple as reviewing every invention for commercial potential and then seeking to transfer it to an exclusive partner. Some inventions are practiced broadly in industry without ever passing through a product stage. Others may be used as research tools in universities but also in other non-profit organizations and government labs as well as in for-profit companies. That is, an invention might be shared rather than transferred.
The chart above makes clear, however, that an IP policy that focuses only on commercialization and transfer has the potential to do a great deal of damage to other areas of activity. The challenge then is to move from an increasingly narrow focus on claiming title to inventions an seeking to license patent rights for a profit to a policy and practice environment that acknowledges other ways to develop inventions, support research and research collaborations, and provide resources to support the practical application of university inventions.
The chart also makes clear how easy it is to conflate commercialization and arbitrage. Both can bring in money, but one results in products on the marketplace, and the other treats the IP *as the product*.
Put another way, commercialization is something one might do to meet expectations under Bayh-Dole, but arbitrage is not. One could even argue that arbitrage is an “unreasonable use or non-use” of a subject invention and should be disallowed under Bayh-Dole. Start up companies can easily become arbitrage agents as well, using a licensed IP position to raise a round of financing, and then going off to build some other product. But arbitrage of rights has very different outcomes than transfer of technology.