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Patents Education

Universities Patenting More Student Ideas 383

Posted by kdawson
from the thanks-for-the-research dept.
theodp writes "Working as a NASA intern, grad student Erez Lieberman had a eureka moment, resulting in an algorithm that detects whether a person is standing correctly or is off balance. Unfortunately, MIT liked it so much they decided to patent it. Seeking permission to use his own idea for his iShoe startup, which develops products like insoles to address the problems of seniors, Lieberman was told no problem — as long as he promised a hefty royalty and forked over a $75,000 upfront payment. Whether or not students are aware of it, the NYTimes reports that most universities own inventions created by students that were developed using a 'significant' amount of schools resources. Colleges and universities once obtained fewer than 250 patents a year, but that was before the Bayh-Dole Act gave them ownership of inventions developed through federally financed research. Now they acquire about 3,000 a year, and in 2006 licensing fees and equity in spinoff companies totaled at least $45B — research powerhouses like Stanford and NYU pocketed $61M and $157M, respectively."
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Universities Patenting More Student Ideas

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  • by Anonymous Coward on Sunday January 04, 2009 @05:34AM (#26318543)

    The university where I graduated from forced all students to sign an agreement that any work that you do while a student of the university, they hold all the copyrights.

    I have come up with ideas and made many music recordings, all of which I have have zero right to exploit as I do not own the rights. It doesn't matter if the work was done at home or at a university campus.

  • Re:Great (Score:2, Informative)

    by gowen (141411) <gwowen@gmail.com> on Sunday January 04, 2009 @05:37AM (#26318563) Homepage Journal

    I guess some inventive students are receiving more of an education than they bargained for

    Well they should've read the IP document they signed when they took the funding, then.

  • by rxan (1424721) on Sunday January 04, 2009 @05:56AM (#26318661)
    I completely agree. I attend University of Toronto, and the first thing our prof said about our senior year project was "If you have some ideas you are passionate about that may be profitable, keep them out of the project."
  • by Yokaze (70883) on Sunday January 04, 2009 @06:07AM (#26318713)

    Copyright, not patent. Also was it the exclusive copyright?

    If I am not mistaken, at my university, they get the right to copy my works done for the universtity (papers, reports, thesis, a.s.o ), but I still retain my copyright as the author.
    Patents are a different matter: They only get it, when I choose to apply for the patent through the university. Then they take care of the legal and commercial matters and I get a share of the profit (IRC, 30 percent).

  • by psnyder (1326089) on Sunday January 04, 2009 @07:20AM (#26319009)
    The above guy said: "They only get it, when I choose to apply for the patent through the university." Sounds like the student's choice to me. The summary didn't make it sound like it was the student's choice. But the July article says:

    Lieberman and other iShoe team members have applied for a patent on the technology, to be jointly held by MIT, Harvard and NASA.

    Sounds like he went the university route. He ('they' actually) should've read the fine print.

  • by Anonymous Coward on Sunday January 04, 2009 @07:37AM (#26319081)

    You're quite lucky then. As a PhD at an Australian university, I was more or less forced to sign an IP agreement to hand over any IP rights that I have in return for their usual staff IP revenue agreement (1/3 profit university, 1/3 faculty, 1/3 inventors).

    Whether the compensation is adequate is not the point of this discussion - more the fact I was told that I will not be able to use any university equipment beyond a computer with the usual MS software and Matlab if I didn't sign on the dotted line.

    As most PhD candidates in a technology/science field of endeavor is aware, this basically means it's impossible to complete your research without signing the agreement.

    At one stage, they were not letting people pass their three-month review without submitting an IP agreement.

    The agreement also has a line for the student to sign that says that they have had an adequate opportunity to seek independent legal advice before signing the agreement. Opportunity yes, but given the average grad student barely scrapes together rent and food money, and that the university does not supply any independent legal advice, it means that this opportunity is rarely taken.

    I'm not sure what the situation is now (I signed in 2005), but I hope the process now is a little fairer on students.

  • by AigariusDebian (721386) <aigarius@debiaTIGERn.org minus cat> on Sunday January 04, 2009 @07:47AM (#26319111) Homepage

    Easy solution - go to EU. The patent as described is a pure software patent and would be invalid outside US (and Japan). Way to squash innovation, US. :P

  • by dtmos (447842) on Sunday January 04, 2009 @08:00AM (#26319163)

    Let's keep a few things in mind:

    1. This was "a technology he created as an intern at NASA in the summer of 2007 [nytimes.com]." It's not like he was an undergraduate sitting in a classroom -- he was working for NASA when he made the invention.

    2. "The iShoe researchers used some of their own work and previous NASA data [usatoday.com]," the latter presumably taken with "an expensive device about the size of a phone booth" in the creation of their invention. So NASA's data (and presumably equipment) were needed to produce the invention.

    3. While an intern, Lieberman was also a federally-funded (i.e., taxpayer-supported) graduate student, receiving money from both the National Science Foundation and Department of Defense [mit.edu], through his university, for his research. Like many (perhaps substantially all) graduate researchers in US universities, he was being paid by his university to do research. The fact that the research was being conducted at NASA doesn't change the fact that Lieberman was on the university payroll at the time the invention was made. Welcome to internships.

    4. His company has also filed for federal funding [usatoday.com] to develop the idea for market and, "[o]nce funding is obtained, the iShoe could be for sale in 18 months, Lieberman said." So he's still using taxpayer money to develop the invention for market.

    5. We don't know what the "hefty royalty" is (unless I missed it, it's not in any of the linked articles), but $75,000 is peanuts. "The iShoe has a way to go to reach the market [...] Lieberman estimates $1 million is needed for a broad clinical trial, and $3 million to $4 million [usatoday.com] to bring the insole to market." As a startup, his monthly burn rate will be much more than $75,000.

    Frankly, I'm fine with institutions receiving a financial return on the work of their paid employees -- especially if taxpayers are ultimately footing the bill. In fact, I would argue that Mr. Lieberman is getting a sweetheart deal; I think once he gets into industry himself he'll find that the commercial sector typically requires employees to assign all rights to any future inventions (at least, in the company's field of interest) to their employer starting on Day 1, usually with trivial or no compensation.

    It will be interesting to see what intellectual property policy the new iShoe company establishes for its own employees. As CEO [ishoeinsole.com], will Lieberman let his iShoe researchers invent and patent without expecting that those inventions will belong to iShoe?

  • Re:Exploitation (Score:5, Informative)

    by ZombieWomble (893157) on Sunday January 04, 2009 @10:28AM (#26319821)
    The question is, are the students paying enough? Universities have some really quite impressive financial bullshit going on, and the amount they claim many things cost seems quite divorced from reality, even compared to the already high costs of tuition.

    The situation is somewhat different in the UK, but the costs my university reports to funding bodies and the like is typically 5 to 10 times that of the actual tuition/salary level - pretty much regardless of the levels of facilities used. Thus the position of the university is that the student's education is in all cases heavily subsidized by university money, and that justifies their position on IPR (which, to be fair, is also much more lax than the one reported in the article at my university at least).

  • by timholman (71886) on Sunday January 04, 2009 @10:43AM (#26319911)

    At my university, the administration makes it very clear that any IP rights for student inventions due to a classroom assignment belong to the student. A purely academic "student", by definition, is not an employee of the university.

    A graduate research assistant is another matter entirely. A GRA is an employee of the university, paid by the university, and subject to the same IP regulations as the faculty and staff. In that respect my university is, in my opinion, extremely generous compared to private companies, as it allows faculty to have joint ownership of the IP, to develop as they see fit as long as the university receives a reasonable royalty. Considering the millions of dollars worth of capital equipment the university has placed at my disposal, I consider that quite a bargain.

    Mr. Leiberman will never get a better deal for an idea he developed on someone else's dime for as long as he lives. If he can't afford the $75K upfront fee, he should talk to the MIT IP lawyers and see if he can negotiate a reduction in return for a slightly higher royalty rate. He might be surprised how willing they are to work with him.

  • Re:Great (Score:3, Informative)

    by e4g4 (533831) on Sunday January 04, 2009 @11:34AM (#26320171)
    You can be quite sure that the students in question signed an agreement stating that they agreed to abide by the rules and regulations of the university. Remember that universities are massive bureaucracies, that have fought many legal battles - so the first thing you can be quite sure that they have established is a binding paper trail for their policies. Administration, is after all, the primary function of the institution itself. The actual educators have little to nothing to do with the running and rules of the institution.
  • Re:Non-profit? (Score:3, Informative)

    by Hognoxious (631665) on Sunday January 04, 2009 @11:56AM (#26320317) Homepage Journal

    In the past ppl got to patent their ideas.

    No they didn't. They got to patent their inventions. It's debatable whether an algorithm is an invention or not, but an idea certainly isn't.

    This submitter, theodp, appear to be a bit of a monomaniac about this issue and he doesn't seem to know what the hell he's talking about; take this one [slashdot.org] where he equates attribution and financial reward, two entirely different things.

    Why do his stories keep appearing?

  • Re:Non-profit? (Score:5, Informative)

    by Jane_Dozey (759010) on Sunday January 04, 2009 @12:17PM (#26320471)

    I can't speak for the post grads or researchers but at the UK university I studied CS at the policy was a bit different. We were all given log books and encouraged to use them so that if we had a good idea we could claim legal ownership of it. Also, during my third year research project I asked about ownership and was told that my project would remain mine unless I gave permission for the University could take it and run with it later (which incidentally I did and got a publication out of it).

  • Re:Exploitation (Score:5, Informative)

    by krunk7 (748055) on Sunday January 04, 2009 @12:54PM (#26320739)

    surely the fact that THE STUDENTS ARE ALREADY PAYING FOR USE OF THESE RESOURCES should mean that they owe the university nothing

    I don't have a problem with this policy. Here's why:

    • I consider it part of my payment. I signed a contract, the terms were clear and unambiguous. I've been to two major campuses and in each not only was the contract I signed clear, but I was reminded of the fact numerous times in numerous classes and by my PI's. This wasn't much the case in Liberal Arts, probably because of the lack of marketable goods that come out of that department. In the sciences though, I was informed from day one (literally, the "welcome new engineers" seminar).
    • In practice, I find the universities I've worked with to be extremely generous in defining "significant contribution". I've participated in about 3 or 4 patentable projects, one of which is being picked up by a development group (we needed extra funding and support due to class III FDA approval costs).
    • A significant portion of the students at a university receive financial aid (from 55-75% or more). Tuition can't be the sole source of funding.
    • Though occasionally you see a student's senior project that is just amazingly patentable. But most of these patents (that don't come from faculty) come from Graduate students or students working on special projects outside the immediate scope of their education. They also receive significant support from university staff, access to extremely expensive equipment otherwise not available to them, and a smorgasbord of other people's ideas to launch off of. The policy in this case is no different then if one was to "volunteer" at their local engineering shop.

    With all this, generally it is only if the student's idea is based on an existing body of research (say a refinement of an area of his PI's work) or if he received significant faculty/university support in development of the idea/product. The "slice" that the university takes is quite reasonable at the universities I've worked with/at. It's far less than a VC would take (typically 80-95% or more).

    And finally, the summary (no surprise here) is grossly inflammatory. It makes it sound like this guy was drinking Mountain Dew and chilling at the house when all of a sudden bam! He comes up with this amazing algorithm all by his lonesome. Please, this work was shared by many researchers from several institutions with a fair amount of start up capital to get going (50,000 from a competition and developed at the NASA research center). Patent owners include 4 other individuals as well as NASA, Harvard, and UC San Diego in addition to MIT. It was developed specifically to treat loss of balance in astronauts and later Lieberman decided to investigate its viability in the private sector.

    "Eureka moments" don't exist, at least not the way popular media/literature portrays it. Any decent eureka! is preceded by years and years of training and diligence or followed by the same. Having an idea is not the same as making an idea happen.

    Far from a patent apologist, but this one's a stretch.

  • Re:Great (Score:3, Informative)

    by langelgjm (860756) on Sunday January 04, 2009 @01:34PM (#26321053) Journal

    It doesn't disturb me me that university owns the patent instead of the student, but what does disturb me is that the university owns the patent for research paid by public tax dollars.

    Right, and before Bayh-Dole, that wasn't the case - the funding federal agency would own the patent, and could license it to people.

    The Bayh-Dole act was created because so few of those government-held patents were actually being licensed - the government was just sitting on them, partially because practically every agency had different rules for licensing, etc.

    It's well documented that after the Bayh-Dole act, the number of patents granted to universities did increase significantly. However, the more serious question is whether "number of patents granted" is truly related to innovation.

    Also, Bayh-Dole includes march-in provisions for the government, so that in theory an agency could license the patent to someone else without the university's permission, but I don't believe the march-in provisions have ever actually been used.

  • Re:Non-profit? (Score:3, Informative)

    by Eli Gottlieb (917758) <eligottlieb.gmail@com> on Sunday January 04, 2009 @03:24PM (#26321863) Homepage Journal

    Universities are also non-profit in the States. They just don't get enough money from the government to fully fund themselves (Amtrak Syndrome... /sigh), so they come up with other ways...

  • by Anonymous Coward on Sunday January 04, 2009 @08:51PM (#26324563)

    Macquarie Uni is IP paranoid since they lost a WLAN project to Radiata.

    Story: in the early 1990s, Macquaire Uni Electronics department and CSIRO were co-inventers and developers of 802.11a. In 1995 the project [archive.org] was shut down and via some mechanism the IP was transferred to Radiata Communications [archive.org]. In 2000 Radiata hit the jackpot, selling out to Cisco for A$560 million [anu.edu.au]. Macquarie Uni then had a retrospective fight on its hands to get a pound of flesh. I gather they got something eventually. Since then they are IP paranoid.

    The irony is that if Macquarie had locked up the 802.11a IP, Radiata probably would have failed and the Uni would have ended up with nil instead of the millions they did get, (even if it did fall short of what they wanted).

    Sadly, I can see that in time every AU uni will try to force students to hand over IP. In the student's favour, they are in a stronger bargaining position than they think, since Unis are often desperate for good postgraduate students. You did the right thing by walking when they refused to negotiate. Go to a uni that lets you keep your own IP instead. If every student did that the greedy unis would wither and die.

    Newcastle has talked of modifying their IP policy, but AFAIK the proposed changes (to the detriment of students) have not been implemented.

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