Should universities become more involved in patenting?

(IPRinfo 3/2003)

Martin Meyer, Tatiana Goloubeva & Jan Timm Utecht

There is an imbalance in the Finnish innovation system between research and development (R&D) expenses and the patenting output. Therefore, a study was commissioned by Tekes and Sitra on how industry and the research base are linked. Inventors appreciate co-operation between universities and industry and hope that the future legislation will not pose a threat to it.

Patent database and staff registers were used

The study was carried out by tracing patented inventions made by Finnish academics. The patent database used in this study draws on patents which the US Patent and Trademark Office (USPTO) granted to Finnish inventors or assigned to Finnish organizations in the period between 1986 and 2000. In addition, all university-rank institutions in Finland were contacted for their personnel registers.

Inventor names were compared with the names in the personnel register of each university. The matching procedure linked pairs of identical family and first names. Homonyms are frequent, and therefore each of the potential academic inventors had to be contacted personally to clarify whether he or she was indeed the inventor listed in the patent.

We complemented our analysis with a survey of inventors to gain further information on their collaborative activity, the funding they received and the utilization of the patent. Finally we carried out interviews of inventor-researchers.

This procedure identified 530 patents that were associated with researchers in Finnish universities, accounting for approximately 8-9% of all Finnish US patents in our database. However, only two years of personnel register data were available for analysis. In addition, US patent data were used.

Two universities account for half of patents

Inventive activity is concentrated in terms of both inventors and universities. In individual universities, most of the patents can be related to key inventors. However, inventive activity cannot be traced in all universities to the same extent. As with individual inventors, one can also identify key institutions that can be associated with most university-related patents. Our study showed that two universities accounted for almost half of all the patents, and four universities for more than 70% of all university-related patents.

Similarly to the inventor concentrations, there is also a concentration of key assignees. In most cases, it is large firms that are assignees of university-related patents. Start-up firms are prominent only in a relatively small number of instances. A technology transfer organization featured prominently in one case.

The study team also drew up a map showing links between the universities of the academic inventors and the owners of their patents. The map was drawn up using counts of linkages (based on the number of patents) between inventor and assignee organizations. The locations of the organizations on the map were estimated by applying a Multi-Dimensional-Scaling algorithm to a collaboration matrix. The figure can be seen in the report (page 15, Exhibit 5) on the web site

For technical reasons, however, the map could not be represented here. The idea was to present universities and organizations as circles and their relations in patenting as lines. The more patents could be attributed to a certain university, the bigger was its circle. In the same way, the more patents an assignee owned related to university-associated inventors, the bigger was the circle of this organization. The more counts of links between a university and an assignee organization, the thicker was the line that connected these two. Depending on how one defines ’links’ (university – patent – assignee or university – inventor – assignee), the circle sizes and the thickness of lines vary. Therefore, one should be careful not to over-interpret the figure.

Telecommunications is the largest category

Telecommunications is the largest category of university-related patents. Yet compared to the national share of telecommunications in patenting, the field is underrepresented here. The main technological contributions of university-based inventors are in the fields of pharmaceuticals and biotechnology. In these areas, patents in which at least one of the inventors is a university researcher account for a considerable share of all Finnish patents.

Academic, Industrial, and Collaborative Patents

Our study distinguished three transfer modes:

(1) Direct contributions of academic inventors to technological development, which meant that university researchers were the exclusive inventors of the patent;

(2) Patents resulting from collaborative efforts between university researchers and colleagues in industry;

(3) Human resource transfers as indicated by university researchers who were working for industry at the time of the invention.

About three out of five university-associated patents fall in categories 1 and 2.

Industrial university-related patents differ in their technological composition from academic and collaborative patents. Collaboration is most common in pharmaceutical and chemical sectors. Telecommunications is by far the strongest area in such ’industry-originated’ patents as can be associated with universities. It is followed by materials processing and surfaces and coating.

More support to patenting than to utilization of patents

The survey data also showed the relevance of funded research to inventions. There is considerable support for patenting of inventions whereas only the minority of patented academic inventions appears to benefit from funding for further utilization of patents. Tekes plays the most prominent role among the public funding agencies.

Academic patents appear to be utilized by large firms rather than by (academic) entrepreneurs in start-up enterprises. The survey data indicated that only about ten per cent of purely academic inventions were utilized in start-up enterprises, which do not seem to be the preferred channel for commercializing the results of university research.

Similar rates were observed in the categories of collaborative and industrial patents: large firms were predominant partners. This means that established collaboration between individual researchers and industry plays a considerable role with respect to technology transfer.

Stronger role of universities requires sufficient resources

The case studies raised a number of issues that may be of importance with respect to the change in IP regulations at universities, for example the improvements in the technology transfer infrastructure, including innovation and research services. A crucial question is whether transfer offices are endowed with sufficiently qualified personnel and appropriate levels of financial support.

Many inventors suggested that universities should become more involved in patenting. Several inventors expected a change in university IPR regulations. Some of them stressed that a more active role of the university should also involve professional IP advice and support in universities across the country. They believed that as long as there are insufficient resources for this task, patenting and the utilization of patents cannot develop to the fullest.

There was some evidence in the case studies indicating that there may be potential for supporting the commercialization of even inventions that are less radical and high-technology and whose potential for utilization may be lower, yet promising. In terms of reforming the legal framework for university IP, the inventor interviews appear to indicate that one of the challenges is to ensure that the existing successful co-operation between university researchers and industry will not be obstructed by amendments to the current regulatory situation.