When do academics patent outside their university?: An in-depth case study

Elco van Burg; Jingshu Du; Jannigje Gerdien Kers

doi:10.1016/j.technovation.2021.102287

When do academics patent outside their university? An in-depth case study

Elco van Burg^*, Jingshu Du, Jannigje Gerdien Kers

^*Corresponding author for this work

Research output: Contribution to Journal › Article › Academic › peer-review

Abstract

A central theme of university entrepreneurship—including the generation and commercialization of university-invented research—is academic patenting (referring to patenting by university scientists). This study explores organizational-, individual- and patent-level factors and their respective relationship with academic patenting. Based on a thorough investigation of all academic patents (that have at least one university scientist involved) from one of the largest Dutch research universities during the period 2000–2009, and further building on first-hand qualitative and quantitative data, the results show that Technology Transfer Offices (TTOs) are instrumental in generating more academic patents. However, this effect is predominantly manifested by the increase in the number of patents patented under the name (solely or jointly) of the university (university-owned patents), far more than the increase in the absolute volume of patents invented by the university (university-invented patents). Further, regarding individual academic inventors, our study shows that, in general, male researchers and lead-inventors with higher academic rankings are less likely to abide by the TTOs, resulting in more patents being filed outside the university. Regarding the academic invention, the value of the patent itself does not seem to be related to the choice of the ownership (e.g., university-owned or not) of the patent.

Original language	English
Article number	102287
Pages (from-to)	1-14
Number of pages	14
Journal	Technovation
Volume	107
Early online date	24 May 2021
DOIs	https://doi.org/10.1016/j.technovation.2021.102287
Publication status	Published - Sept 2021

Bibliographical note

Funding Information:
This finding is also supported by qualitative evidence from the interviews. In general, the interview data indicate that scientists and university managers are aware that quite some inventions are filed outside the university. A faculty's operational director stated: “There is a lot that happens, bypassing the system inside. Of course, we don't want that. Clearly, the intellectual property is owned by the employer, so you don't want that it leaks away via the backdoor. And of course, we also want to be able to show our impact in factsheets, which is what we are doing.” A TTO manager reflected: “Before 2006, so before the TTO, it was more like a case-by-case evaluation. … It looked like the medical school was more aware of patents than the other faculties. As soon as the TTO was established in 2006, we discussed filings outside the university with involved individuals, departments, and faculties, and where possible we tried to repair those filings.” These interview findings confirm the change brought about by the introduction of the TTO. As one department head stated: “Since my start at the university I am involved in this, first predominantly through contract research and shortly after that regarding patents. But patenting was always done in collaboration with the industry, the industry was responsible for the patents.” Now, since the establishment of the TTO, this situation (i.e., company ownership of the patents) has changed: “In each of our projects now the IP rights will be distributed 50/50 and only in rare occasions the IP rights will belong only to the company. That's now only the case if we really want to do the research and it depends on the financial conditions.”

Publisher Copyright:
© 2021 The Author(s)

Copyright:
Copyright 2021 Elsevier B.V., All rights reserved.

Funding

This finding is also supported by qualitative evidence from the interviews. In general, the interview data indicate that scientists and university managers are aware that quite some inventions are filed outside the university. A faculty's operational director stated: “There is a lot that happens, bypassing the system inside. Of course, we don't want that. Clearly, the intellectual property is owned by the employer, so you don't want that it leaks away via the backdoor. And of course, we also want to be able to show our impact in factsheets, which is what we are doing.” A TTO manager reflected: “Before 2006, so before the TTO, it was more like a case-by-case evaluation. … It looked like the medical school was more aware of patents than the other faculties. As soon as the TTO was established in 2006, we discussed filings outside the university with involved individuals, departments, and faculties, and where possible we tried to repair those filings.” These interview findings confirm the change brought about by the introduction of the TTO. As one department head stated: “Since my start at the university I am involved in this, first predominantly through contract research and shortly after that regarding patents. But patenting was always done in collaboration with the industry, the industry was responsible for the patents.” Now, since the establishment of the TTO, this situation (i.e., company ownership of the patents) has changed: “In each of our projects now the IP rights will be distributed 50/50 and only in rare occasions the IP rights will belong only to the company. That's now only the case if we really want to do the research and it depends on the financial conditions.”

Keywords

Academic patents
Ownership
Patent value
Qualitative
Quantitative
Technology transfer office

VU Research Profile

Governance for Society

UN SDGs

This output contributes to the following UN Sustainable Development Goals (SDGs)

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Cite this

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title = "When do academics patent outside their university?: An in-depth case study",

abstract = "A central theme of university entrepreneurship—including the generation and commercialization of university-invented research—is academic patenting (referring to patenting by university scientists). This study explores organizational-, individual- and patent-level factors and their respective relationship with academic patenting. Based on a thorough investigation of all academic patents (that have at least one university scientist involved) from one of the largest Dutch research universities during the period 2000–2009, and further building on first-hand qualitative and quantitative data, the results show that Technology Transfer Offices (TTOs) are instrumental in generating more academic patents. However, this effect is predominantly manifested by the increase in the number of patents patented under the name (solely or jointly) of the university (university-owned patents), far more than the increase in the absolute volume of patents invented by the university (university-invented patents). Further, regarding individual academic inventors, our study shows that, in general, male researchers and lead-inventors with higher academic rankings are less likely to abide by the TTOs, resulting in more patents being filed outside the university. Regarding the academic invention, the value of the patent itself does not seem to be related to the choice of the ownership (e.g., university-owned or not) of the patent.",

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note = "Funding Information: This finding is also supported by qualitative evidence from the interviews. In general, the interview data indicate that scientists and university managers are aware that quite some inventions are filed outside the university. A faculty's operational director stated: “There is a lot that happens, bypassing the system inside. Of course, we don't want that. Clearly, the intellectual property is owned by the employer, so you don't want that it leaks away via the backdoor. And of course, we also want to be able to show our impact in factsheets, which is what we are doing.” A TTO manager reflected: “Before 2006, so before the TTO, it was more like a case-by-case evaluation. … It looked like the medical school was more aware of patents than the other faculties. As soon as the TTO was established in 2006, we discussed filings outside the university with involved individuals, departments, and faculties, and where possible we tried to repair those filings.” These interview findings confirm the change brought about by the introduction of the TTO. As one department head stated: “Since my start at the university I am involved in this, first predominantly through contract research and shortly after that regarding patents. But patenting was always done in collaboration with the industry, the industry was responsible for the patents.” Now, since the establishment of the TTO, this situation (i.e., company ownership of the patents) has changed: “In each of our projects now the IP rights will be distributed 50/50 and only in rare occasions the IP rights will belong only to the company. That's now only the case if we really want to do the research and it depends on the financial conditions.” Publisher Copyright: {\textcopyright} 2021 The Author(s) Copyright: Copyright 2021 Elsevier B.V., All rights reserved.",

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