Universities and Colleges as Economic Drivers

9. Unanticipated Consequences of University Intellectual Property Policies

239 9 UNANTICIPATED CONSEQUENCES OF UNIVERSITY INTELLECTUAL PROPERTY POLICIES JASON OWEN-SMITH aBstraCt While national legislation such as the 1981 Bayh-Dole Act created common pressures for American universities to commercialize the outcomes of faculty and student research, the act also created new tensions on campus. Those tensions hinged on the university’s new role as owner and therefore arbiter of the use of faculty inventions and on the mandate to share royalties from such inventions between faculty and their institutions. Different campus-level approaches to managing these tensions in policy and in practice resulted in widely varying processes and outcomes for technology transfer. This chapter draws on interviews with licensing professionals and faculty inventors as well as close readings of intellectual property policies on two campuses to explicate the ways in which common institutional tensions can result in unanticipated organizational consequences associated with academic efforts at technology transfer. INtroDuCtIoN The last three decades have witnessed an impressive transformation in the societal meaning and roles played by academic science and 240 owEN-smIth engineering. This shift is most apparent in dramatic increases in the depth and variety of academic engagement with the world of commerce . From patenting and marketing of intellectual property (IP) to active venture capital investment and intimate involvement in the dense contractual networks that represent the center of gravity of the knowledge economy, American research universities are playing more active, complex, and prominent commercial roles than ever before. The university research mission has shifted from dominance by a largely academic focus that is (at least rhetorically) distinct from concerns involving commercial application and use (Dasgupta & David, 1994; Merton, 1957), to one in which the “knowledge-plus” (Geiger, 1993) emphasis that has been a quiet component of academic life for decades is made explicit in the conduct, evaluation, and dissemination of academic research and development (R&D). This chapter situates that transformation within a broader framework, theorizing it as an instance of institutional change that sparks varied processes of organizational transformation. The ways in which particular campuses respond to increasing commercial pressures can yield surprising outcomes for academic research. Unanticipated consequences occur because now commonplace contradictions and ambiguities are resolved in distinct fashions through often highly local negotiations and conflicts among campus actors. In this way, supra-organizational pressures toward similar policies and practices result in disparate organizational arrangements with lasting implications for both the positive and the negative outcomes of academic research commercialization. In other words, the case of university research commercialization offers an opportunity to examine the ways in which common institutional pressures generate heterogeneity in policies and practices at the organizational level. After introducing my data-sources and highlighting the methodological choices that bound this analysis, I present a brief overview of the institutional shifts associated with widespread academic engagements with commerce. Legal changes that vested ownership of faculty inventions in the university, the rise of a professional group dedicated to managing and marketing university technologies, and contradictions resulting from the pursuit of private rights to public knowledge exert similar pressures on all research universities. The relative positions those universities hold in existing academic status Unanticipated Consequences 241 orders and their local efforts to appropriately resolve the challenges of commercial engagement jointly drive a long-standing organizational form toward greater heterogeneity in practices and outcomes. In this chapter, I attend to key contradictions surrounding the ownership and control of faculty inventions and the appropriation of revenues they generate. Two relevant professional groups, faculty scientists and engineers and university technology licensing officers , come into contact and often conflict around these issues. Both of these groups share important commonalities in their responses to commercial engagements. Those points of similarity often hold across campuses. Nevertheless, particular faculty-staff interactions around patenting and licensing help to cement important campuslevel differences in approaches to technology transfer. I first examine faculty researchers’ decisions about whether to disclose inventions to their local technology transfer office. Next I consider licensing professionals ’ decision about whether to pursue patents on new invention disclosures. Finally, I discuss interactions around patenting and licensing on two campuses characterized by very different commercialization policies and outcomes. Faculty and technology licensing officers come into contact most closely and frequently in the process of discovering, protecting, marketing , and licensing intellectual property. At each stage of this process , members of both groups must make decisions that constrain their own future choices and those of relevant members of the other group. For example, a...