Bright Ideas: JVIC's take on intellectual property rights

Two features designed for JVIC by Giedd and James P. Baker, MSU’s vice president for research and economic development, address corporate IP concerns, primarily about patents, and are at least in part responsible for the growth that’s keeping Giedd busy at JVIC, a facility where MSU’s Center for Applied Science and Engineering and Center for Biological and Life Sciences – along with several research partners – will delve into cutting-edge science such as nanotechnology.

Letting go of IP ownership

The first feature driving growth is MSU’s unique position on intellectual property.

Under the policy, the university forgoes ownership of its own IP early in the collaborative process at JVIC in exchange for royalties on products brought to market. The second feature is careful selection of partners to avoid IP conflict.

According to Eugene Han, an IP and patent attorney with Shughart, Thomson & Kilroy, IP concerns are an essential part of today’s corporate world.

“Intellectual properties are becoming assets that you can freely buy and sell,” Han said. “They add value to the bottom line of a company.”

Giedd agrees.

“A lot of the net worth of small- and medium-sized companies comes from their patent portfolio,” Giedd said. “It is almost a liability for them to have to license technology from a university instead of outright owning it.”

That was the case four years ago when the late Norm Dobson, with Rolla-based Brewer Science, approached Giedd with an unusual proposition.

Dobson suggested doing away with MSU’s IP and licensing structure altogether. Brewer Science is among the companies that will conduct research at JVIC.

Giedd quickly saw the advantage for MSU.

“The problem at the time was that most universities, including MSU, tended to be too possessive about intellectual property,” Giedd said. “Basically they would work with a company on a project, insist on retaining all the patent rights, and then license the technology back to that company.

“It works for some companies that can afford the patent license expenses, but it is very difficult for small- and medium-sized companies to come up with those funds.”

Giedd still had the task of taking the idea to the university, but he found an ally in Baker, then assistant to the president at MSU.

“In a previous life I was a research administrator, and I was trained to always get as much for our intellectual property as possible,” Baker said. “Ryan came in and said if we focused on these up-and-coming companies instead of getting into battles over intellectual property, it would be beneficial to everybody concerned.

“His argument was so logical and persuasive that I changed my attitude very quickly.”

Though there are potential issues in assuring technology is actually developed, Lita Nelsen, director of MIT’s Technology Licensing Office, doesn’t see much of a downside in MSU’s IP policy.

“Statistically, Missouri State is not likely giving up large potential revenues,” Nelsen said. “Only rarely do patents produce large windfalls – although they occasionally do.”

Streamlining for collaboration

JVIC’s stance on selective partnerships has created a more collaborative environment.

“There is great synergy between the companies,” Giedd said. “We don’t really invite competitors in. We look for partners that would fit in well with existing affiliates and help them develop their markets.”

That makes sense to Han from the standpoint of joint agreements, IP law and the small companies MSU wants to attract.

“They all depend on their patents and what’s going on there at MSU,” Han said. “It’s interesting that MSU is selecting companies from different parts of a process. It does away with complicated parts of the agreements between these companies. A company knows what their role is and what they are entitled to.”

Choosing companies based on their ability to complement each other makes collaboration very easy, said Brent M. Segal, co-founder and chief operating officer of Nantero Inc., a JVIC partner.

“If you have your competitors in there too, you’ll have a situation where people will be much more careful about talking and sharing information,” Segal said.

Student advantage

The result, according to Giedd, is a very open and dynamic environment at JVIC, not just between the companies, but with students as well.

“Corporate scientists work side-by-side with our students and our faculty in a collocation model,” Giedd said. “I had a student who was asking me questions about some process and the corporate scientist there knew exactly what was going on, exactly where to find the answer and how to do it.”

It’s a synergy Baker sees as well.

“Our undergraduates have an opportunity to do things that master’s degree students at major research universities don’t have a chance to do,” Baker said.

Giedd, a professor of physics, rarely sees the inside of a classroom these days, his time consumed with JVIC-related duties.

“We have to get the right kind of labs in it,” Giedd said. “Lately I’ve been figuring out how to move our operational labs from … campus to (JVIC) without interrupting anyone’s grants or projects.”

Giedd doesn’t regret the trade-off of his classroom time for the IP-driven growth of JVIC, though.

“I’ve always been a very strong believer in apprenticeship,” Giedd said. “Now that’s mostly what I do. There is no better way to educate.”

Intellectual Property Law

Intellectual property is original and creative thought expressed in the form of a property interest. For example, typical forms of IP are patents, trademarks, or copyrights. IP law in the United States is therefore concerned with, among other things, patent, trademark and copyright laws. Each of these areas has distinctly different histories and cover distinct subsets of cultural knowledge from processes to artistic expression.

Copyright law applies to original works of authorship, which are fixed in any tangible medium of expression. Among items that may be copyrighted are books, photographs, works of art and videos. Ideas themselves may not be copyrighted, only the forms in which they are expressed. The roots of copyright law go back to Enlightenment and Romantic era concepts of authorship. The English “Statute of Anne” in 1710 was a forerunner to the Copyright Act of 1790 passed by U.S. Congress.

Trademark law applies to distinctive words, symbols, logos and phrases used to identify a product or service. Trademark law traces its roots from U.S. court cases during the 1800s. The Lanham Act formalized it in 1946 under the Commerce Clause of the U.S. Constitution.

Patent law applies to inventions granted one of three types of patents by the U.S. Patent and Trademark Office: utility, design and plant. Utility patents apply to a machine, a manufacture, a process, a composition of matter or an improvement of an existing idea in one of these categories. Design patents cover the ornamental appearance of a functional object, as in the shape of a lamp. A plant patent applies to any asexually or sexually reproducible plants, such as flowers, that are both novel and nonobvious.

Utility and design patents date back to a decree in the Republic of Venice in 1474 and England’s “Statute of Monopolies” in 1623. Congress adopted a patent act shortly after the United States formed in 1790.

The plant patent is the most recent of the three, a form of utility patent arising from the Plant Patent Act of 1930. After the 1980 Supreme Court ruling in Diamond v. Chakrabarty, it has been expanded to include proteins, genetically engineered tissue and human genes.

Sources: University of Texas Intellectual Property Law Journal, www.copyrighthistory.org, www.copyrighthistory.com by writer Karl-Erik Tallmo and Attorney Eugene Han[[In-content Ad]]