ANEXO II: CUADERNO DE CAMPO CUMPLIMENTADO

The US has a long standing history of university-industry collaboration and technology transfer (Mowery & Rosenberg, 1998). Although there was some interest in patenting and licensing well before the 1980s, most universities avoided direct involvement in the management of patents and chose to outsource this to third parties (Mowery et al., 2004). Research results and knowledge moved freely between university and industry through publications, conference presentations, faculty consulting, and the movement of personnel such as trained graduates (Cohen et al., 2002). It is important to note that in the early days, academic patenting and licensing were not the primary channels for technology transfer.

The strong university-industry tie in the US is largely due to the structure of its higher education system which consists of a very heterogenous collection of institutions. Funding from state and local sources provided strong incentives for public universities to pursue applied research with local economic and social benefits. Inter-institutional competition for students and faculty members were encouraged. The constant search for resources created another strong incentive for universities to collaborate in research and technology transfer activities with industry long before the passage of the Bayh- Dole Act (Rosenberg & Nelson, 1994).

was well documented in the American Association for the Advancement of Science (AAAS) Committee of Patents, Copyrights, and Trademarks Report (AAAS, 1934). The primary motivation for patenting was the protection of the public interest and the preservation of an academic institution’s reputation.

Despite considerable awareness of and interest in patenting by university scientists and administrators, few institutions had developed formal patent policies prior to the late 1940s. Many universities avoided direct involvement in the management of patents and licensing because of concerns over political consequences of profiting from faculty inventions. In other cases, administrators feared that involvement in patent management might jeopardise their non-profit tax status. Consequently, for much of the 1925– 1970 period, university inventions were mainly managed by independent organised foundations or holding companies such as the Wisconsin Alumni Research Foundation and the Research Corporation (Mowery et al., 2004).

The first university-affiliated research foundation was the Wisconsin Alumni Research Foundation (WARF). It started in 1924 when Dr Harry Steenbock developed a method for increasing vitamin D content in food and drugs through an irradiation process. He was concerned that incompetent or unscrupulous individuals or private firms could use his invention and possibly do harm, unless he brought it to market with legal protection. In spite of criticism from his colleagues at the university and the medical community, Steenbock patented his findings and decided to assign his invention to the University of Wisconsin, where he worked at the time. Unfortunately, the university considered his invention not worth the necessary investment and consequently declined his offer of patent ownership. Working with alumni, Steenbock instead created WARF, an entity affiliated with, but legally separate from the university that could accept and license patents, and return revenue back to the inventor and university. With this structure, universities could focus on research and education, but still have the possibility of reaping the rewards from patent licensing without potential financial and

political liability (Blumenthal, Epstein, & Maxwell, 1986; Mowery et al., 2004).

The WARF managed to license Steenbock patents to Quaker Oats on an exclusive basis for the production of vitamin-enriched cereal products. The foundation also negotiated a number of licences with pharmaceutical firms for the development of vitamin supplements (Mowery et al., 2004). Spencer (1939) reported that by 1936, the Steenbock patents had earned more than $6.7 million (in 1996 dollars) for WARF.

The WARF success and substantial licensing income influenced the development of patent policies at other US universities during the 1930s. The other force which had an impact on university patent policies was the 1929 Great Depression which forced many institutions to seek new sources of funding, and WARF offered an attractive model for emulation. During the late 1920s and early 1930s, Purdue University, the University of Minnesota, and Cornell University all established affiliated but legally separate foundations that were similar to WARF (McKusick, 1948; Mowery et al., 2004).

Another organisation which played an important role in the early university patent management is the Research Cooperation (Mowery & Sampat, 2001). It was founded in 1912 by Fredrick Cottrell of the University of California at Berkeley. Cottrell was interested in research on air pollution control. In the early 1900s, he invented the electrostatic precipitator which is a device that removes fumes from chimneys by electrically charging them and collecting them on an oppositely charged plate. He subsequently obtained several patents on electrostatic precipitators and intended to license his patents to support scientific research. To implement this plan, he initially considered using the University of California to manage his patents but later rejected this possibility because he believed that the involvement of university administrators in licensing could have detrimental consequences for the culture of scientific research at the university. Instead, Cottrell decided to form an independent entity “not merely

to produce revenue for scientific research, but to act as a sort of laboratory of patent economics and to conduct experiments in patent administration” (McKusick, 1948, p. 208).

During the first two decades after its foundation, the Research Corporation focused its effort on the development and strengthening of its patents covering electrostatic precipitation technologies. By 1915, the electrostatic precipitation business became profitable. Due to its early success in managing the precipitation patent portfolio, a number of university faculty members turned to the organisation for assistance with the patenting and licensing of their inventions in other fields (Mowery & Sampat, 2001).

Beginning in the 1930s, the Research Corporation began to manage patents for faculty members and universities on a case-by-case basis, but it had no formal agreements with universities. In order to expand its activities in patent management and search for new sources of revenue, the Research Corporation negotiated its first Invention Administration Agreement with MIT in 1937. Under the agreement, MIT disclosed potentially patentable inventions to the Research Corporation, which then evaluated them and accepted for administration those deemed to have commercial potential. All services were provided at the expense of the Research Corporation. Any royalty was to be divided between MIT and the Research Corporation on a 60/40 basis. The Research Corporation’s share of the royalties, after deduction of operating expenses, funded its research program. The MIT agreement sparked interest in patent licensing by other universities. By the late 1930s, the Research Corporation evolved into being a manager of patenting and licensing of university inventions for many of the leading US research universities (Mowery & Sampat, 2001).

World War II and the Cold War that followed transformed the structure of the US national innovation system (Mowery & Rosenberg, 1998). Formerly funded by the

state government, universities experienced a surge of federal funding, particular in the area of military and biomedical research. Federal funds for basic research increased more than five-fold during the 1958–1968 period (NSB, 2002a). Biomedical sciences were largely funded by the National Institute of Health (NIH) within the Department of Health, Education and Welfare (HEW). By 1971, NIH supported nearly 37% of academic R&D, a share that grew to more than 46% by 1981 (NSB, 2002a). This expansion in basic research had increased the pool of potentially patentable academic inventions, and many federal research sponsors required the development of a formal patent policy. According to Palmer (1962), 85 US universities had adopted or revised patent policies during the 1940–1955 period. Many of these universities continued to choose “outsourcing” patent management to the Research Corporation even well into the 1960s. For example, Columbia’s patent policy stated that it was not deemed within the sphere of the University’s scholarly objectives to hold patents, and Harvard, Chicago, Yale, and John Hopkins adopted similar positions (Palmer, 1962; Mowery et al., 2004).

In summary, before the passage of the Bayh-Dole Act of 1980, much of the interaction between US universities and industry involved a variety of channels. Although a small number of universities expanded their patenting and licensing activities and developed their own patent policies in the postwar period, most universities were ambivalent about direct involvement in patent management and chose to outsource such activities to the Research Corporation or other independent organisations.