University Inventions Reconsidered: Debunking the Myth of University Ownership

Most universities today assert ownership rights over all patentable inventions (and many other types of intellectual property) created by members of the university community, including faculty, staff, students, visitors, and others. Universities then attempt to license that intellectual property (IP) to third parties, in order to generate revenue for the university and to give the public the benefit of innovations developed by the institution, often with the use of federal funds. This Article provides an evaluation of the technology transfer policies and practices of U.S. universities. Part I surveys the IP policies of a representative group of universities, showing that most universities claim outright ownership of the invention rights of most members of the university community, while a few require present or future assignment of such rights to the university. Part II reviews the history of IP ownership and demonstrates that claims to ownership of university inventions evolved slowly over the course of the last 100 years, beginning with inventor ownership as the accepted model and culminating in the passage of the Bayh- Dole Act in 1980 and subsequent case law. Parts III and IV provide two proposals for addressing problems in the current ownership and technology transfer model. One is a more “modest” proposal that could be implemented immediately by universities to bring their IP policies and agreements into line with relevant laws; the other is a long-term proposal for discussion and substantial change in which university inventors would have an option to retain ownership of their inventions, and universities could assume more natural and supportive roles as educators and facilitators