In my last article I discussed the “Innovation Diamond” which puts emphasis on research leading to innovation through entrepreneurship.
An important issue of Government funding of research is the ownership of the right to exploit the invention. Since it is funding by the State all citizens have some right to benefit from the results of the research but the best way of achieving this needs to be discussed. At the base of such discussion is the concept of protection of Intellectual Property of an inventor or creator, for without the invention or creation there would be nothing to exploit. The concept of Intellectual Property Rights stems from the idea of protecting the inventor from losing the product of intellectual effort to a third party.
The inventor is often not in a position to provide the funding of the research, particularly in a scientific field which may require expensive equipment. Indeed this is the main reason for funding by the State. So a second player enters the field and this is the person or organisation that finances the research (the person who contracts the research) herein after referred to as the “contractor”. But there may be yet a third party involved for the inventor may work for an organisation other than the State-often a University and the terms of employment will be relevant. To complicate matters further the institution for which the inventor works may be funded by the State although being legally independent. The sharing of these rights becomes a matter of policy and I shall now discuss the policy in the United States as may be gleaned from legislation and litigation in that country and the policy in Trinidad and Tobago as assessed by referring to legislation, funding arrangements and public policy statements. In this country legislation, funding arrangements and public policy seem to be contradictory.
In the United States within recent years legislation (the Bayh-Dole Act effective since 1981) has partially removed the rights of the Government as contractor. The Bayh-Dole Act transfers the rights for further development and commercialisation of Government funded research to the universities or businesses at which the research was conducted. The main reason for this action was that many inventions were not commercialised but were of importance mainly for the academic advancement of the inventors. Thus citizens were not getting the benefit of these inventions, many of which would have been in the field of medicine and the products of benefit to the public. The Bayh-Dole Act emphasised the rights of inventors and the institutions for which they worked. This has resulted in the commercialisation of many inventions that are of importance not only for individuals (as in the case of medicine) but also for economic development.
The Bayh-Dole Act, however, allows the Government, to take over the rights and, if necessary, to license the invention to a third party where it judges that the invention is not being made available to the public.
Of particular significance is a recent ruling by the United States Supreme Court, in a case involving Stanford University and the invention of a staff member which confirms that US law bestows the Intellectual Property rights first and foremost on the inventor and that the provisions of the Bayh-Dole Act do not undermine such rights.
This decision makes it clear that the rights to Government funding inventions are not vested in the Government.
In the case of Trinidad and Tobago the Patents Act, No. 21 of 1996, as amended in 2000 under “Right to patent” Section 14 (1) states that: “A patent for an invention may be granted—(a) primarily to the inventor or joint inventors.” However under Section 15 (1) it is stated that: “In the absence of any provisions to the contrary in any contract of employment or for the execution of work, the right to a patent for an invention made in the performance of such contract of employment or in the execution of such work shall, notwithstanding Section 14, be deemed to accrue to the employer, or the person who commissioned the work, as the case may be.”
What of the situation in which there is both an employer and a “commissioner of the work” (funder of the work) as was apparently the case in the steelpan issue? There is ambiguity in this wording and for this reason alone revision of the law is required.
But of much greater significance is the Government policy towards the beneficiaries of the exploitation of patents. Do we want to go in the direction of the United States in which the Bayh-Dole Act transfers the rights from the Government in Government funded projects and the Supreme Court ruling that promotes the right of the inventor or do we want to stick to the local law which seems to favour the funding agency and the employer?
What effect will this have on the “brain drain”? Would our bright young scientists be attracted to work in a country in which the law favours the inventor rather than one in which the funding agency (for some time into the future this will be the Government in this country) or the employer is favoured? Will there be a feeling of insecurity among scientists if a change in Government may result in drastic changes in policy which takes from them incentives which they previously enjoyed?
Does our legislation encourage economic development by rewarding inventors and entrepreneurs as the Innovation Diamond intended or does it place exploitation of inventions into Government or other institutional hands where they may be lost in red tape?
Clearly there is need for review of the policy on the beneficiaries of Intellectual property and consequent review of the Intellectual property legislation. In this article I have discussed mainly patent legislation but policy for other forms of Intellectual Property rights (particularly copyright) needs to be formulated followed by review of the legislation.
Story Created: Sep 2, 2011