Universities Patenting More Student Ideas

theodp writes "Working as a NASA intern, grad student Erez Lieberman had a eureka moment, resulting in an algorithm that detects whether a person is standing correctly or is off balance. Unfortunately, MIT liked it so much they decided to patent it. Seeking permission to use his own idea for his iShoe startup, which develops products like insoles to address the problems of seniors, Lieberman was told no problem — as long as he promised a hefty royalty and forked over a $75,000 upfront payment. Whether or not students are aware of it, the NYTimes reports that most universities own inventions created by students that were developed using a 'significant' amount of schools resources. Colleges and universities once obtained fewer than 250 patents a year, but that was before the Bayh-Dole Act gave them ownership of inventions developed through federally financed research. Now they acquire about 3,000 a year, and in 2006 licensing fees and equity in spinoff companies totaled at least $45B — research powerhouses like Stanford and NYU pocketed $61M and $157M, respectively."

Comments

Exploitation

[mfh]

The stupid exploit the smart.

Re:Exploitation

[BiggerIsBetter]

The stupid exploit the smart.

Please. Most university faculty are a looong way from stupid. That said, while I understand the argument that university resources are being used in the creation of these "inventions" (ideas), surely the fact that THE STUDENTS ARE ALREADY PAYING FOR USE OF THESE RESOURCES should mean that they owe the university nothing, and anything outside of normal coursework is theirs to call their own.

Re:Exploitation

[ivucica]

So writing an algorithm on a computer is suddenly expensive and causing large costs to the university, that would justify patenting a potentially revolutionary algorithm, and not giving it back to the student? Let the Croatian universities dare patent or even copyright something I worked on, unless it was specifically for the university, or as part of university work.

In any case, this story teaches us something. Show only stupid ideas to the university, keep the others to yourself.

Great

[clang_jangle]

...I guess some inventive students are receiving more of an education than they bargained for. Shameful behavior from institutions which really ought to be setting a better example.

Re:Great

[philspear]

Well they should've read the IP document they signed when they took the funding, then.

Not sure how it works in most fields, but in the one I'm in, it's your boss that gets the funding, not you. So their boss should have told them that. Of course, even if they had, this situation would STILL be ridiculous. It's not like students have much bargaining power, especially when it comes to who gets the rights. Not accepting the bargain would mean the student in question would be working AT a shoe store, not running a software company for them.

Re:Great

[TheRaven64]

My university had an IP statement in the student handbook, which contains all of the university regulations. It was quite near the front, as I recall. If students fail to read it, that's there problem not the university's. If you do work that you don't want the university to own then:

• Don't submit it for assessment - coursework is owned by the university.
• Don't work on it on university equipment without getting your supervisor to agree, in writing (an email is probably enough - not legally binding, but probably enough to get the IP department to decide it's not worth pursuing), that it's a personal project.
• Don't take money to work on anything if you want to own the result.

Given the number of stories like this that hit the press, it should be well-known by now that your employer or university owns your work unless you have an explicit exemption. I live in a jurisdiction where software patents are invalid, and added a section to the grant application that work from the projects I've worked on would be released under a BSD license, so I can take them and do whatever I want with them (so can anyone else) after the project has finished. Most academics are more interested in reputation than money, so it's generally easy to get them to agree to permissive licensing, as long as you do it in advance.

Re:Great

[Edgester]

It doesn't disturb me me that university owns the patent instead of the student, but what does disturb me is that the university owns the patent for research paid by public tax dollars.

Encouraging innovation

[Mostly a lurker]

I believe the justification for patents is that it encourages innovation, allowing products to come to market that would otherwise never see the light of day. To be honest, I have always been pretty skeptical, but it seems particularly difficult to square such a claim when inventors are prevented from using their own inventions. If MIT wants to patent its students' work, it should at least exempt those who had the idea in the first place from paying royalties.

Bass Ackwards

[FauxReal]

Funny, I thought the whole tuition thing was your payment for using their academic resources and facilities? Otherwise, shouldn't they be paying students for their development work?

Re:Non-profit?

[philspear]

I think a better idea might be to force federally-funded schools to do something similar to that. If the government is giving a researcher/professor/whatever a grant from taxes based on his or her past accomplishments, the university gets a huge chunk of it - unless I'm mistaken (and I very well could be.) For the university to then get whatever comes out of that is fundamentally stupid. From my experience, the university does nothing besides initially invest in the researchers. Well, that's not exactly true, they give me parking tickets occasionally too. I should say I'm a grad student, so I'm somewhat talking out of my ass here, and I might be biased (parking tickets!!!) but from what I can tell, the university gets more than their fair share.

Patent it First?

[HJED]

There is a simple solution here:
If you have a realy good idea that you intend to start a business with then patent it before you submit your work!
You would have to do it anyway

Re:Publish immediately and then no one can charge

[zenyu]

I don't know how it is now, but when I went to NYU for my Ph.D. studies there was nothing like this you had to sign. You retained copyright to anything you did, just like professors and tuition paying students did. It was University policy that they owned any patents they filed for on your behalf, but you would get 50% of the royalties. There was very little pressure to apply for patents on your inventions, those who took the University up on it's offer were dreaming of the royalties. Those who didn't were generally the pulled-up-themselves-up-by-the-bootstraps sort who felt that patenting their ideas was an ignoble act after their run of good luck in getting where they were (it takes more than just smarts).

I highly doubt MIT coerced this former graduate student into patenting his invention. He probably just got greedy and now the university is seeking a little cost recovery. The issues concerning whether it when it is good idea to patent your inventions have been well understood among engineering and science graduate students for about a decade now, so I'm fairly confident that he was well aware of them.

Re:I have had something similar happen to me.

[TubeSteak]

at my university, ... Patents are a different matter: They only get it, when I choose to apply for the patent through the university. Then they take care of the legal and commercial matters and I get a share of the profit (IRC, 30 percent).

So the University gets their name on the patent for your work, they sign a contract granting you 30% of 'profit' derived from the patent, and here's the important part: you have no control over the licensing fee.

So if you want to use their patent, guess what, they can make the licensing fee extortionate enough that you cannot follow through on your business plan.

Kind of like what is happening to Mr. iShoe.

Property, Universities, Government

[Morosoph]

"Property" addles the brain. Also, universities don't see their mission as helping the economy, so acts on their part which harm the formation of wealth are fine, as long as their research is protected.

Government, however, should know better. But there, lawyers (such as most politicians) make the decisions, and law is centred around property (well, '9/10'ths of it is). Lawyers are often constitutionally incapable of comprehending how certain forms of "intellectual property" are counterproductive. Besides, politicians frequently confuse economics and finance, and are under constant pressure to reduce costs, rather than maximise productivity.

Additionally, in terms of American politics, universities are expected to do what they can with their own "assets" according to industry norms; to do otherwise would seem "socialist". Ironically, this attitude results in a branch of the state owning wealth-creating ideas and effectively taxing them twice (once to use the idea, once with the profits made from the idea).

This attitude on the part of Government isn't exclusive to the US. In my home city of Cambridge, UK, the university fought Government pressure to claim patent rights over student and staff discoveries. Here, ownership of one's ideas has had a long history. In the end some compromise (generous licence terms) was found, but the Government truly do not understand the harm that it is causing - ultimately to its own tax revenue.

Three Rules for College Students

[salesgeek]

1. NEVER EVER SHARE AN ORIGINAL IDEA IN CLASS OR IN A PAPER

It will be patented, copyrighted and sold by the university. Additionally, you will never be able to use it again without paying.

2. NEVER EVER USE UNIVERSITY COMPUTERS FOR DEVELOPING A BUSINESS

If you are successful, one day the University will come looking to extort money from you because they have one email where you outlined the idea.

3. USE YOUR OWN COMPUTERS AND BRING YOUR OWN NETWORK.

Don't use the University's high speed. For lots of reasons. Starting with the ease with which universities will give third parties like the RIAA information. Moving on to intellectual property rights. Moving on to using your activities against you in academic disputes. You just can't trust them, and the only way to be sure you own your work is to own the computer and network. In other words, get a 3G card.

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Comment removed based on user account deletion

Belief in Eureka! is foundation for patent system

[Geof]

"Eureka moments" don't exist, at least not the way popular media/literature portrays it. Any decent eureka! is preceded by years and years of training and diligence or followed by the same.

It makes it sound like this guy . . . comes up with this amazing algorithm all by his lonesome. . . . this work was shared by many researchers from several institutions with a fair amount of start up capital to get going . . . Patent owners include 4 other individuals as well as NASA, Harvard, and UC San Diego in addition to MIT.

You've nailed it. This is the problem with IP. One the one hand, creativity and innovation are always the result of collaboration between large numbers of people (much of it informal, unconscious, or indirect). On the other, IP allocates exclusive rights to an individual or organization. Invariably, many or most of the contributors are excluded while the IP owner free-rides on their work. Furthermore, because ownership ends up being held by many hands, future work is often forstalled. It runs into the tragedy of the anticommons: all owners must give their permission, and each owner is inclined to overvalue their contribution - not surprising, given that the system has already overvalued it by giving ownership to more than they produced.

Why? As lawyer James Boyle so eloquently details in his book Shamans, Software & Spleens, the legal system continues to make counterproductive rulings precisely because of the romantic myth of the lone inventor or author who has that Eureka! moment and creates something new out of thin air. The illusion you dismiss is a core foundation of the system as it stands (for copyright too, if you look back at the development of the concept of authorship, which is quite recent historically).

Let me make it clear what I have said and what I have not said (not necessarily for you, but people will make assumptions): I am not making a claim about the ideal outcome in this case. Neither am I proposing to abolish patents or IP - something I could not do without weighing their costs against their benefits. My beef is with your arguments.