Intellectual property: What's the appropriate role for nonprofit funders?
Kristin Schneeman, Program Director, FasterCures
dealing with universities and/or with companies -- is a difficult one
for most nonprofits. What is the appropriate role for nonprofits that
fund research in advancing IP that comes from that research toward
commercialization?
As background, I'm appending below a summary of a discussion thread
from an earlier TRAIN listserv:
In 2008 FasterCures participated in a National Academy of Sciences
study of lessons for the acquisition, licensing, defense, and sale of
IP arising from publicly and privately sponsored research at U.S.
academic institutions. In order to ensure that the perspective of
nonprofit funders of research at these institutions was included, we
queried TRAIN organizations about their experience in this area.
Not surprisingly, many respondents lamented the difficulty of
negotiating IP terms with academic institutions and shared horror
stories about the length of time it can take. One respondent
complained that “universities have such an unrealistically inflated
sense of the value of their contributions that in general it is not
worthwhile to work with them in the development phase of a new
treatment.“
Another advocated that foundations stop taking the passive approach of
“If something comes from our research dollars we want a piece of the
action.” “We view University Tech Transfer offices as an asset and
resource that we actively cultivate. … We believe that non-profits
could take a far more active role in assisting tech transfer offices
in the identification of potentially valuable inventions and
partnering with them [in IP sharing arrangements] to more effectively
market those inventions to industry.”
More than one foundation highlighted the critical importance of
negotiating “march-in-rights” for abandoned inventions – with both
universities and companies. (See related article on “interruption
licenses” at www.fastercures.org/TRAIN/pdf/Interruption%20License%20Article.pdf.)
Hollie Schmidt
our first funded research grant agreement and have proposed an
interruption license, but the grantee has raised some objections.
Where can I learn more about foundations that have negotiated these
licenses successfully?
--Hollie
Kristin Schneeman, Program Director, FasterCures
among them Multiple Myeloma Research Foundation, Cystic Fibrosis
Foundation, and Juvenile Diabetes Research Foundation. I invite
anyone reading these posts who can share their experience with the
finer points of "selling" these agreements -- I assume in this case
with an academic institution rather than a company -- to please do so!
Ken Schaner & his colleague David Lubitz, whose legal reports we've
included on the site, have negotiated many of these deals. My
apologies that the link to their article on Interruption Licenses that
I embedded into my post didn't work -- this is why it's a beta site,
we're still learning! If you go to the Publications page under Tools
& Resources you'll find it there.
Justine Lam, Myelin Repair Foundation
an integral part of our process from basic science discovery to drug
development. We have successfully created agreements with the four
universities we are working with.
Blog posts that relate to the topic:
Hiring a staff member to look through discoveries for patentable
ideas: http://myelinrepair.org/blog/?p=573
Having a great legal team to be our proponent throughout the process &
structuring university agreements: http://myelinrepair.org/blog/?p=926
On Mar 31, 10:09 am, "Kristin Schneeman, Program Director,
Subscription settings: http://groups.google.com/group/TRAINCentralStation/subscribe?hl=en
Kristin Schneeman, Program Director, FasterCures
Studies section of the site, and its Research Consortium Member
Agreement is featured on the Tools page:
http://fastercures.org/TRAIN/resources/index.html?expanddiv=innovation,
Thanks, Justine!
On Apr 16, 4:36 pm, "Justine Lam, Myelin Repair Foundation"
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