Protecting Intellectual Property

The rigors of proper intellectual property protections go against the grain of many researchers, but lawyers who clash over ownership of ideas urge scientists to learn some basic legal principles. Pharmaceutical and biotech companies forage university labs for new discoveries in medicines and therapies, for which they will make available big research bucks. But if a scientist's ideas can't be patented, the corporate coffers close. Courtesy of UCLA, School of MedicineStanley G. Korenman "Universities were never organized to develop a drug," explains Stanley G. Korenman, associate dean for ethics at University of California, Los Angeles. "We're talking about $200 million dollars, and [universities] are not going to take that risk. But the drug companies can raise the money in the capital market and spread the risk. They can only do that if they have some exclusive rights. That's why patents stimulate productivity and inventiveness." Protecting the integrity of ideas begins during graduate school, even before a concept becomes a reality, intellectual property lawyers say. It requires gentle but firm questions during contract signings and careful record keeping. Though universities claim the rights to discoveries, many senior scientists can set their own terms for patents and licensing, regardless of their institutions' standard policies. Students who enter Korenman's course on research ethics convinced that knowledge should be free usually leave with a respect for the power of patents to support invention. "What it amounts to is that you can be very creative, but if there is no way of bringing your intellectual output into the realm of reality, it ends up being wasted," says Korenman. "Patent protection is a way of being productive with regard to intellectual activity and, of course, the scientists are very happy about that." Pharmaceutical companies and small biotechnology start-ups often hire teams of lawyers to train or re-train laboratory staffers in preserving intellectual property. John Kilyk Jr. of Leydig, Voit & Mayer in Chicago has made scores of presentations to universities, the National Institutes of Health, and private corporations. One of the most common errors he sees among scientists involves timing. Good scientists toil away in the laboratory, perfecting, proving, and refining an idea. Meanwhile, the competition has beaten them to the punch, applying for a patent based on a solid concept of the discovery. "There's a common misperception in the field, particularly in new start-ups, that you have to make an invention, physically reduce it to practical form, before you can pursue a patent on it," Kilyk says. The researcher should call the patent lawyers in before the idea is ready to emerge from the lab, the attorney advises. "What is important is the actual conception. If you've thought about it in sufficient detail that someone could make it based on your concept, at that point, the patent lawyers can go to work. That's usually much earlier than the time that all the lab work is done." Learning Patent Law Courtesy of John Kilyk Jr.John Kilyk Jr. Scientists do not make errors in patent protocol because they've slept through university classes on intellectual property protection, Kilyk adds. Until recently, science curricula have offered little formal patent law training, "Particularly people who have come from the university context, I have noticed over the years, have some record-keeping practices that appear lax," he says. Academics are trained to use laboratory notebooks to record scientific minutiae, for example. But because patent applies to the first idea, not to the product itself, researchers should use their notebooks to rigorously document concepts, Kilyk advises. "Think of a lab notebook as an idea notebook," he urges. "When you're on a plane cruising along at 30,000 feet and you come up with an idea, that idea should be put in a notebook, dated, signed, and countersigned by a witness not involved with your projects." The University of Texas, Houston, is readying a lecture series on intellectual property law that will include workshops and roundtable discussions involving lawyers, scientists, and graduate students, says Bruce D. Butler, director of the university's Office of Technology Management. "Most of our inventors are repeat offenders, and it's very nice to have them trained," says Butler. The university posts intellectual property policies on the Web and spells out ownership rights in faculty employment agreements, Butler says.1 Giving Scientists License Graduate student trainees may not be subject to employment agreements and may own their own ideas, says Korenman. He is critical of laboratory prenuptials in which tenured faculty force these scientists to sign away all rights. "That's outrageous," Korenman says. "But there are arrogant, nasty people who work in science." Fledgling academic researchers on salary probably have little choice but to sign the university's standard agreement, according to patent attorney Don J. Pelto, a partner at McKenna & Cuneo in Washington, D.C. Once a scientist has published and raised substantial research resources, however, Pelto says, everything is negotiable. When researchers changed jobs, "We have been in contact with the next employer to be sure that both parties understand who owns what, not only on the first day the researcher walks in the door, but subsequently," says Pelto. Baltimore scientist and lawyer Fredric Abramson urges scientists in negotiations to address potential employment agreements constructively. Rather than object to a controversial clause, he says, the researcher should query its purpose. "The question that I propose people ask is, 'What interest does this provision seek to protect?'" says Abramson, who teaches at Johns Hopkins University. Training in intellectual property law equips scientists to take part in a debate about social policy, not in a crass pursuit of business interests, the experts say. Patent law was designed to encourage invention, not hobble it. "We don't want to ask scientists to give up their scientific devotion, but to build on it," Abramson says. "The scientific community that understands what's going on with patents and copyrights is equipped to shape the debate. Right now the debate is being shaped by large economic interests, not the people creating the inventions. Ultimately, that's the reason scientists should educate themselves in the law." Peg Brickley (dbizpeg@bellatlantic.net) is a freelance writer in Philadelphia. 1. www.uth.tmc.edu/ut_general/admin_fin/planning/pub/hoop/complete_toc.html#chap23. The Basics The proverbial "school of hard knocks" may still be the best institute for scientists to learn how to protect their ideas in the laboratory. But a few basics can head off heartbreak if devoted laboratory work produces a wondrous discovery that: Belongs to an institution or private funding source because the researcher signed an employment agreement without carefully perusing it. Belongs to a once-trusted colleague who filed a patent application a few weeks after the researcher expounded on his latest pursuits over drinks at a conference; or Belongs to no one, since the researcher's creative note-keeping practices created so many legal complications that no company will risk investing in the discovery. Experts offer a few pointers: Read employment agreements and ask for explanations of their reach. What is the university policy for waiving rights to a line of research that it declines to promote, for example? Get copies of any agreements between the university and public or private funding sources that may affect a scientist's ability to assert ownership over his work. Take notes only in bound volumes, and fill up each page, one right after another. If it becomes necessary to convince a court of the integrity of the document, bound books are better than loose-leaf binders. Use indelible ink. No pencils. Sign and date each page. Have a witness who is not a co-inventor or principal party countersign each page. If you find those tips irksome, you are probably a scientist. Worldly Protections International implications of intellectual property law change as a discovery moves around the planet. For example, a U.S. government employee can't own copyright to work created on the job. But under Spanish law, a U.S. government software developer successfully claimed ownership of on-the-job work in that country. Unlike colleagues in the United States and United Kingdom, academic scientists on the European continent own any discovery made on their employer's time. Continental European scientists also enjoy "moral rights," entitlements migrating into U.S. law. The creator's name is indelibly attached to work and each inventor or author has the right to preserve the invention as conceived. Later owners must secure the creator's permission to change a discovery.

Protecting Intellectual Property

Interested in reading more?

Become a Member of