In May of 2007, Businessweek ran an article entitled "MIT, Caltech — And the Gators?" The piece was about just what you would expect: how the University of Florida — well known, shall we say, as the home of the fighting Florida Gator football team, basketball team and, well, just about every other sports team that has been either a national champion or nationally ranked in recent years — has joined the ranks of MIT, Caltech and some other universities. In what area, you ask? Well, these other universities are considered meccas of robust technology transfer operations. And now, it seems, so is the University of Florida.
This should not come as a surprise to anyone, of course. The University of Florida, after all, is the place that spawned the multibillion-dollar sports-beverage industry, with the invention of Gatorade® in 1965.
According to the UF College of Medicine, Dr. James Robert Cade, a nephrologist who studied physiology of exercise, and a team of researchers who included Dr. H. James Free, Dr. Dana Shires and Dr. Alex de Quesada,??wanted to solve a problem: "Why didn’t football players urinate after a game?" As hard as it may be to believe 40 years later, "exercise wisdom" at the time discouraged replenishing liquids lost after sweating during exercise. The team of scientists thus developed a drink containing salts and sugars that could be absorbed more quickly, and the basis for Gatorade was formed.
Of course, there was money in that for UF and for later licensees of the product from the university. And jobs. And economic growth. And the realization of the magic that can happen when science meets creativity and investment.
Thus, we had the beginnings of the future of the U.S. "innovation economy." And, in 2013, as I write this, the future is now.
Innovation as Job Creation 101
There are few issues more prominently on the national agenda than job creation. Manufacturing jobs, having moved steadily overseas or eliminated entirely, have been difficult, if not impossible, to replace.
The question is, what should we do as a nation to ensure that we are poised to be a productive asset in this innovation economy? It has been said that we need to:
Educate our workforce;
Build public/private partnerships; and
Create a culture of investment and entrepreneurship.
But this is an article for lawyers — not MBA students — and so the $64 million question is: What does the innovation economy need from lawyers? What’s law got to do with it?
Licensing and Technology Transfer
Research universities are a key player in the innovation economy, often through their offices of technology transfer. We know that scientific insights and academic breakthroughs may draw interest from the research community when they are presented at a scientific meeting or published in a journal, but without a company willing to invest in bringing the invention to marketplace, these breakthroughs often never see the light of day. Offices of technology licensing help turn scientific progress into tangible products, with the benefit of potentially returning income to the inventor and the university. That income could then be used to invest in additional research.
Tech transfer offices receive invention disclosures from university faculty, staff and students. The offices typically evaluate these disclosures for their commercial possibilities and, when possible, license them to industry.
Although patentable inventions generally constitute the majority of licensing activities at research universities, copyright (typically software) and trademark issues are often implicated as well. Of course, to the extent inventions are not patentable or for some reason patent protection is not sought, trade secret issues may arise, but they are less common in what is considered to be a generally open university research environment.??
Lawyers often play a key role in technology transfer, which can be, as we have seen with the Gatorade story, a major engine of growth in the innovation economy.
Intellectual Property Rights
A patent allows the patent holder to enforce exclusive, or "exclusionary," rights to an invention for 20 years from the date of the patent application’s filing. The rights are not self-executing. In other words, they only come about through enforcement. As such, the owner of a patent does not de facto have the right to use the invention per se; he or she has the right to exclude others from using it.
What can be patented? Utility patents are granted for a new, nonobvious and useful process, machine, article of manufacture, composition of matter or improvement of any of the above. In addition to utility patents that fall into one of the categories above, patent protection is available for ornamental design of an article of manufacture or asexually reproduced plant varieties by design and plants. However, laws of nature, physical phenomena, abstract ideas and literary, dramatic, musical and artistic works (which are the subject of copyright protection) are not within the ambit of patent protection.
A smart research university understands that university scientists are its most valuable resource. Most research universities have an intellectual property policy pursuant to which inventions must be made. Typically, an invention made in the field or discipline in which the creator is engaged by the university, or made with the use of university support, is the property of the university. Universities also usually provide that the creator shares in the proceeds from the invention, to the extent it is commercialized (usually through a licensing transaction).
An invention made outside the field or discipline in which the creator is engaged by the university, and for which no university support has been used, is typically considered to be the exclusive property of the creator. However, even in that case, a university and creator may agree that the invention will be pursued by the University and the proceeds shared pursuant to the university’s intellectual property policy (IPP). Thus, a work made in the course of independent efforts is generally the property of the creator, and a university-supported work is the property of the university.
Typically, a university will have a policy pursuant to which university innovators will disclose an invention through the Office of Technology Licensing, which will work with the inventor to protect the innovation and commercialize it, if possible. The inventor submits an invention disclosure form, which is reviewed by the licensing office. The licensing office will review the disclosure, meet with the inventor and determine whether to seek patent protection. If possible, licensees will be obtained for the invention and a license agreement negotiated that provides revenue-sharing opportunities for the university.
Copyright, like patent law, is exclusionary. But rather than ideas, it applies to the use of "original works of authorship that are fixed in a tangible form of expression." A central tenet of copyright is that authors should have the right to reasonably control the use of their creative output and to receive appropriate recognition for their contribution. Copyright exists upon the creation of an eligible work — you do not have to do anything to obtain it.
Creating a license or simple permission for the use of copyrighted work is a way to reserve rights and grant permissions consistent with how you want your work to be used or modified.
Many projects or organizations at universities have identifiers such as logos, trademarks or unique names related to their activities. Tech transfer offices often work with inventors to strategize on when or whether to file for a federally registered U.S. trademark, service mark or certification mark.
Either Help or Get Out of the Way
Transactional and business lawyers do not typically help their clients increase revenues or reduce operating costs. Attorneys talk about how they offer economical, cost-effective legal services.
There is a reason why many business people see attorneys as a cost, and not a value-added service. Even in most business-related practice areas, attorneys do not — or cannot — advise clients on how to increase sales, revenues or profits.
What do lawyers do? Lawyers enable transactions. They make sure that the deals go through smoothly. They minimize the client’s exposure to legal risk going forward.
To give effective strategic advice, lawyers need a deep and high-level understanding of business. Knowing how to identify and exploit business opportunities is critical to providing clients with strategies to increase revenue, diversify or pull back.
In a global economy, technology licensing and transfer of technology are important factors in strategic alliances and international joint ventures in order to maintain a competitive edge in a market economy. Thus, policy tools to facilitate licensing and technology transfer at the international level have often been considered in the context of creating an appropriate climate for investment and economic development. •