Consejo de Innovacion June 2, 2009, Santiago, Chile

Intellectual Property & Conflict Management in Academic Institutions

Alan Paau, MBA, PhD, CLP Vice Provost Technology Transfer and Economic Development

Evolution of Academic Activities and Institutions

Roles of Government in the Development of Academic Culture

Infrastructural Support from a Policy Perspective

Key elements of IP and Conflict Management Policies

Topics

Pure curiosity pursuit wealthy individuals churches/monasteries

Pursuit to “impress” + nobles and kings

Pursuit for use + ambitious monarchies + industry

Pursuit to serve + government

Evolution of Academic Activities And Sponsorships

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Platonic academics : devoted to knowledge and art for their own sake (Socrates philosopher) – not devoted to finding uses of them; not utilitarian and rare in institutional form today

Sophist academics : aims to impart knowledge and skills useful for worldly action for a price, make businesses out of wisdom (“knowledge/skill hired guns”)

Baconian academics : state sponsorship devoted to knowledge that would extend man’s influence over nature (and others) and augment the power of the state for the benefit of its constituents

(Sir Francis Bacon, later Lord Verulam and the Viscount St. Albans, set the foundation for the triumph of technology and for the modern world as we currently know it.)

Modern day academic institutions that receive government funds are Baconian Institutions

Diversity of Academics

Morrill Acts – Land Grant College Acts of 1862, 1890 WWII penicillin – moldy cantaloupe and fermentation research in Peoria, IL in 1944 synthetic rubber – Akron, CalTech in 1942 mechanical computing – Colossus in UK, Z4 in Germany, ENIAC in USA atomic weaponry – Manhattan Project in USA multiple projects in Germany Cold War (1940s early 1990s) space race arm race (conventional and nuclear)

US Government’s Support of Academic Institutions – A Historical Perspective

Act of government extends education and imparts knowledge and skills to the general public for society good

Academic research can serve the national interest well

Strategic vision that cut across politics from the leadership is important

Support from the leadership is important on 3 fronts - cultural (mind-set) influence of leadership infrastructural – policies and organizational resources – financial and human capital

Takes time and patience

Take-Home Lessons from The USA Experience

Institution - reputation - proper academic missions - financial return on use of resources - leadership vision - other gains (professional, power)

Heads of academic units of the researchers (mostly same as above but at a more “territorial” level)

Individual researchers-extremely varied

• Definitely not homogeneous • May be congruent or conflicting

Multiple Stakeholders with Intersecting and Potentially Conflicting Interests

Policies of Academic Institutions

Serve to

define rules and expectations

guide decisions and activities/actions

spell out in a transparent manner the proper administrative mechanisms and processes

In order to achieve the desirable and rational outcome

The targeted readers are not lawyers. Important to not use legalese

Usually, two key IP policies for academic institutions:

Invention/Patent Policy

patentable v patented or not

physical embodiment of an invention

tangible properties (biologicals)

Work of Authorship/Copyrights Policy

Other policies: Trademark or Use of Institution Name

Intellectual Property Policies

Statement of scope, goals, applicability to stakeholders and signing of Acknowledgement Form

Ownership – based on relationship and use of resources

Reporting requirements and standard

Responsible administrative unit – roles/responsibilities and authorities

Management philosophy and process

Benefit-sharing scheme (rights of the stakeholders)

Dispute resolution or grievance process

Final disposition or adjudication by institution

Invention Policy dominates Work-of-Authorship Policy

Key Elements of Intellectual Property Policies

Conflict Management

Potential for conflict exists when stakeholders have multiple relationships

Conflict arises when a stakeholder advances the interest of one relationship at the expense of the other relationship

We all have multiple relationships (not avoidable) – but most do not have intersecting interests that may give rise to conflict (not all intersecting interests will give rise to conflict)

When an academic institution encourages its employees to be innovative and entrepreneurial, it encourages additional relationships with interests that may intersect

Important to have a policy in place to spell out . . .

Key Elements of Conflict Management Policy

The key interests of the institution and why they are considered so

Statement of scope, goals and applicability to stakeholders

Disclosure requirement and standard

Responsible administrative units – compositions, roles and responsibilities, and authorities

Management philosophy and process

Dispute resolution or grievance process

Final disposition or adjudication by institution

Conflict Management Infrastructure

Conflict Management Office – staff, accept relationship disclosures, preliminary review, gather background information, make referrals and provide administrative support to . . .

Conflict Advisory Panel/Committee – faculty, review referrals to determine whether potential of conflict is “manageable”. Devise “Conflict Management Plan” and recommend to the responsible academic leadership (dean, provost, vice rector, rector)

Conflict Oversight Committee/Subcommittee – monitor compliance with “Conflict Management Plan” once approved by the academic leadership

3 units + 1 instrument = “3 + 1 Architecture”

Key Institutional Interests

The important interests of the institution – normally can be summed up as 4 key issues

Proper use of Institutional Resources for proper academic activities (that advances the missions of the institution)

No misappropriation of intellectual property and inventions (that should be owned and controlled by the institution)

Maintenance of good reputation without bias interpretation of research results (research integrity)

Fulfillment of institutional responsibilities and duties

A good Conflict Management Plan addresses all of them with effective mitigation approaches.

Mitigation Approaches

Use of institutional resources – funds, facilities and personnel

Oversight Committee to monitor compliance with the Conflict Management Plan

- Periodically and independently interview subordinates (students, staff, post-doctoral researchers) -review and, if necessary copy, notebooks -review publications and the overall program output and nature of activities

To ensure activities are not improper in an academic program and indeed advance the institutional missions

Report non-compliance and concern to Conflict Advisory Panel

Mitigation Approaches

Intellectual Property – ownership and use without permission

Oversight Committee to monitor compliance with the Conflict Management Plan

- mandatory disclosure of all inventions and copyrights -periodic search of patent databases -follow through with “whistle-blower” and investigate -review and determine compliance

To ensure no misappropriation of institutional IP

Report non-compliance to Conflict Advisory Panel

Mitigation Approaches Reputation/Research Integrity – most difficult to judge and philosophical since even disinterested researchers may interpret research results differently

Oversight Committee to monitor compliance with Conflict Management Plan

- mandatory disclosure in all publications and presentations of research result of the researcher’s relationship with one or more third parties in which the researcher has significant financial interests (or clinicians, disclosure to patients) to “let the readers beware”

To ensure proper disclosure is made Report non-compliance to Conflict Advisory Panel

Mitigation Approaches

Institutional Responsibilities and Duties – most straight forward

Oversight Committee to monitor compliance with Plan

- attendance guidelines (1 day/week away allowed in the US) -review record of publications and other scholarly writings -funding level -teaching activities

To ensure contributions to institution are comparable to peers in similar positions

Report non-compliance or concerns to Conflict Advisory Panel

Ramifications

Conflict Advisory Panel – review reports of non-compliance and concerns of the Oversight Committee

-discussion with the interested researcher -discussion with the interested researcher’s superior -determine proper remedial or punitive action(s) required

Recommend corrective action(s) to the relevant academic leadership for final implementation

Policies and Processes

Transparent and straight forward with as little ambiguity as possible while with enough flexibility to accommodate disciplinary differences

Well distributed and publicized for good awareness

Continuing awareness program (not “one and done”)

Diligently monitored for compliance with the will to enforce

Periodic review for policy and process update

Competent implementation (human resource)