Emory Report

October 26, 1998

 Volume 51, No. 9

Emory drafting new intellectual property management policy to clarify rules, rights

In order to clarify the rights and responsibilities of the University, its researchers and other "inventors," Emory is revamping its policy regarding the management of intellectual property.

According to Vice President for Research Dennis Liotta, whose office is spearheading the effort, the current six-year-old policy comes up short in a number of areas, including the lack of a standardized appeals process and a formula for distributing equity to the various parties. The policy is being amended to correct shortcomings like these and to avoid repeating some intellectual property problems Emory has faced in the past.

"We're attempting to clarify some longstanding practices and traditions regarding faculty rights by putting them down in a form that is easy for faculty to understand," Liotta said. "Conceptually this has been in the works for at least a year, maybe more. Since the last policy was adopted, we've learned a lot about technology transfer issues and the management of intellectual property."

Since the University is a nonprofit entity, it cannot directly market new technology to consumers. Therefore Emory enters into technology transfer agreements with private firms, who further develop the inventions and attempt to bring them to the marketplace. The firm pays the University a certain sum for the right to do this. It is the rules for transferring Emory's intellectual property to the private sector, as well as the distribution of any resulting income, that is being codified in this policy.

Liotta said the policies of some 20 schools were studied to produce the new document. The new revenue distribution formula utilizes a graduated scale, awarding higher percentages to the University as the magnitude of the revenues increases. Under the old policy revenue was distributed according to fixed percentages no matter how much income was involved.

"Under the Bayh-Dole Act, universities are required to redirect technology transfer revenues back into education and research," Liotta said. "With technologies that generate very large payouts, the sliding scale allows us to use the additional revenues to better address University priorities."

Liotta has spent the last few months running drafts of the new policy before groups around campus for review. Not surprisingly, one of the major sticking points in the new policy has been the revenue distribution formula. Since faculty will be personally affected by the nature of the formula, Liotta has sought input from both the Faculty Council and the Technology Research Advisory Committee (TRAC), a group of faculty who are very experienced in technology transfer issues.

Ernest Garcia, director of Emory's Positron Emission Tomography Center, has worked in technology transfer for many years with his heart-imaging software. Since the new policy may reduce payouts to investigators such as Garcia, whose technology yields especially high returns, he stands to be hit in the wallet by the changes. However, he still feels they are generally a good idea because they clarify some important technology transfer issues and could help bring extra funding for researchers who might otherwise be left scrambling for support.

"We've got to be aggressive in generating additional sources of income," Garcia said. "There's a lot of effort now to promote [technology transfer], and if you're going to promote it you've got to make sure you've got the rules in place, and the faculty agrees with them.

"In my mind it's clearly the future of universities," he continued. "We cannot continue to increase tuition and expect that to carry us through, or what happened to medicine will happen to us: You can increase what you charge patients only so much before people start to object, and when people can't send their kids to school, they're going to say they've had enough."

--Michael Terrazas

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