Exclusive licensing of university technology: The effects of university prestige,technology transfer offices,and academy-industry collaboration

Exclusivity is a key concern when designing a licensing contract, yet the organizational factors that influence the exclusive provision of university licenses remain underexplored. This study provides a deeper understanding of this question by developing a balanced framework that considers both licensors (universities) and licensees (companies) in licensing deals. Furthermore, we posit that university prestige affects both a university's ability to conduct non-exclusive licensing and a firm's incentive to obtain an exclusive license, thereby shaping their joint willingness to license (non-)exclusively. We also examine how technology transfer office (TTO) experience and prior collaboration between a university and a firm moderate this relationship. To test the hypotheses, we use a dataset consisting of 6653 licensed patents owned by 117 representative Chinese universities. We find that an inverted U-shaped relationship exists between university prestige and the likelihood that two parties choose exclusive licensing. Moreover, the moderating effect of TTO experience is partially supported while that of prior collaboration is fully supported. Our findings generate important implications for the relative social impacts of exclusive and non-exclusive licensing of technology inventions as well as the management of university licensing.     

The heterogeneous effects of patent scope on licensing propensity

How does patent scope influence licensing propensity of inventions? Prior studies have often been confined to specific industries or settings, and their results have been mixed with studies showing a positive, a negative, or even no significant relationship. Also, while some have explored moderating factors that might influence the patent scope-licensing relationship, a systematic investigation of the heterogeneous effects of patent scope on licensing at the invention level has not been undertaken. This study combines a broad sample of publicly reported patent licensing agreements and a novel methodology that captures an exogenous variation in patent scope to re-investigate the relationship between patent scope and licensing and to explore key invention and inventor characteristics that could influence this relationship. The results show that narrowed patent scope leads to a substantial decline in licensing propensity of inventions and that the effect is stronger for high-quality, science-based, and novel inventions as well as for inventions generated by small inventors.     

Reconsidering the Bayh-Dole Act and the Current University Invention Ownership Model

The Bayh-Dole Act of 1980 provided U.S. universities with the right to commercialize employees’ inventions made while engaged in government-funded research. This paper argues that the current university invention ownership model, in which universities maintain de jure ownership of inventions, is not optimal either in terms of economic efficiency or for advancing the social interest of rapidly commercializing technology and encouraging entrepreneurship. We argue that this model is plagued by ineffective incentives, information asymmetries, and contradictory motivations for the university, the inventors, potential licensees, and university technology licensing offices (TLOs). These structural uncertainties can lead to delays in licensing, misaligned incentives among parties, and obstacles to the flow of scientific information and the materials necessary for scientific progress. The institutional arrangements within which TLOs are embedded have encouraged some of them to become revenue maximizers, rather than facilitators of technology dissemination for the good of the entire society.We suggest two alternative invention commercialization models as superior alternatives. The first alternative is to vest ownership with the inventor, who could choose the commercialization path for the invention. For this privilege the inventor would provide the university an ownership stake in any returns to the invention. The inventor would be free to contract with the university TLO or any other entity that might assist in commercialization. The second alternative is to make all inventions immediately publicly available through a public domain strategy or, through a requirement that all inventions be licensed non-exclusively. Both alternatives would address the current dysfunctional arrangements in university technology commercialization.     

Nest without birds: Inventor mobility and the left-behind patents

The mobility of inventors leaves behind their patented inventions at sourcing firms, yet there is little scholarly insight into how firms handle those intellectual properties. We investigate this important issue by developing a framework of tacit-codified knowledge interdependence. We theorize that tacit and codified knowledge offer the intellectual and legal pillars of corporate inventions, which complement each other in value creation. Inventor mobility decouples the two pillars and reduces the maintenance likelihood of the left-behind patents. The negative impact is greater for inventions that are complex or rely less on internal prior art because the tacit knowledge loss is more destructive and unrecoverable. However, when inventors move to competing or litigious target firms, the relationship between mobility and patent maintenance becomes less negative or even turns positive because the left-behind patents can be leveraged to hedge against the risk of knowledge leakage. Applying a two-stage Coarsened Exact Matching approach to construct a sample of 36,204 U.S. patents with comparable leaving and staying inventors from public firms between 1983 and 2010, we find strong evidence supporting our framework. Our findings highlight the intricate interdependence of tacit and codified knowledge in corporate inventions and add to the literatures on inventor mobility and intellectual property management.     

Why are some independent inventors ‘heroes’ and others ‘hobbyists’? The moderating role of technological diversity and specialization

Despite a substantial body of research investigating the market significance of inventions by independent inventors, relatively little attention has been devoted to understanding their technological significance. A recent study conducted by [Dahlin, K., Taylor, M., Fichman, M., 2004. Today's Edisons or weekend hobbyists: technical impact and success of inventions by independent inventors. Res. Policy 33, 1167-1183] on the tennis racket industry shows that independent inventors are a heterogeneous group which includes both “heroes” who contribute substantially to technological progress and “hobbyists” who make only a marginal contribution. What is not asked - and therefore not explained - is why this distinction arises. In this paper, we focus on the type of prior technological knowledge (in terms of technological specialization and diversity) applied by independent inventors and their corporate counterparts as a factor explaining differences in technological impact. Our empirical setting is the field of medical equipment technology. We find that independent inventors are more sensitive to the negative effects of technological diversity than their corporate counterparts. Furthermore, our study reveals that technological specialization pays off more for independent inventors than for their corporate counterparts. Therefore, those independent inventors who apply low degrees of diversity and high degrees of specialization are capable of reaching the same level as or even outperforming their corporate counterparts, thus becoming “heroes”. Based on our findings, we discuss implications for research and corporate practice.     

Today's Edisons or weekend hobbyists: technical merit and success of inventions by independent inventors

We set out to determine if independent inventors can be considered “heroes” or “hobbyists”, that is, if they produce the most or the least influential inventions in a product category. We study patented inventions by independent and firm-based inventors by comparing patents along four dimensions: Patent citation impact, detail, scope, and maintenance. Examining 225 tennis racket patents granted in the US between 1981 and 1991, we find that independent inventors are a heterogeneous group who generate inventions that are overrepresented both among the most impactful and the least impactful patents. The metrics we develop provide insight into ex ante identification of the importance of inventions.     

技术转移办公室促进了高校技术转移吗？

该研究构建了基于专利生命周期的技术转让生存分析模型,利用116所211高校的专利转让微观数据拟合了技术转让可能性曲线。专利转让的可能性呈先增后减的趋势,在申请后第五年左右达到峰值。文章进一步探究了技术转移办公室在高校技术转让过程中的微观作用机制及其在不同情境中的异质作用效果。研究结果表明,技术转移办公室对高校的专利转让速度没有直接的促进作用,但技术转移办公室的存在强化了专利地域保护范围、发明人数量对于专利转让时间的负向影响,同时削弱了发明人团队以往专利转让经验对后续专利转让时间的影响。文章在微观层面上对高校技术转让行为模式研究进行了拓展,对进一步提升技术转移办公室的作用效果具有重要的理论参考价值。     

Invention characteristics and the degree of exclusivity of university licenses: The case of two leading French research universities

This paper examines the determinants of university exclusive versus non-exclusive licenses. We specifically focus on the effect of the characteristics of the licensed invention (i.e. stage of development, specificity and appropriability). We rely on a unique and original dataset of 91 inventions contained in 62 intellectual property licensing contracts executed in the period of 2005–2014 by two leading French research universities. We cannot find a significant relation between the characteristics of the invention and the degree of exclusivity. In particular, as opposed to theoretical predictions, embryonic inventions are not significantly linked to more exclusive licenses and generic inventions are not significantly linked to non-exclusive licenses. Furthermore, inventions that are both generic and embryonic are not significantly linked to exclusive licenses per field of use. These results, although still exploratory, contribute to feed the discussion about the performance of university-industry technology transfer since they suggest that performance might be improved by taking more into account the characteristics of the licensed invention.     

基于道德风险的高校专利许可契约研究

研究什么样的专利许可契约有利于促进高校专利实施具有重要的实际价值。本文应用委托-代理理论,从专利许可的角度构建了基于发明者和专利受让方道德风险的高校专利转化的博弈模型,通过对均衡结果的求解,揭示正是道德风险导致了高校专利转化低效的可能性;从激励的角度对最优许可契约的特征进行了分析;最后结合我国实际提出了约束发明者与受让方道德风险行为、进而促进专利实施的政策建议。     

职务发明人合理分享创新收益的实现路径研究

职务发明人合理分享创新收益是实现职务发明创造转化和实施运用的有效激励手段。《专利法（修正案草案）》对此予以了明确。作为职务发明人智力成果的价值体现和促进职务发明人推动发明创造成果转化的制度激励，职务发明人合理分享创新收益具有正当性。但是，有限的“约定优先”、“合理性”标准的模糊对待、国有资产法律法规的限制性规定、职务发明相关权利的杂糅处理和单位知识产权运营能力的不足对职务发明人实现创新收益分享形成掣肘。实现职务发明人合理分享创新收益，首先应明确“合理性”的判断标准，即在程序正义的基础上根据职务发明人的创造性贡献程度和职务发明所产生的经济效益确认收益分享的合理限度。其次，职务发明创造的专利权作为一项“权利束”，应将其分而处之，明晰各参与主体间的权利边界。再次，应优化国有资产属性的职务发明创造的管理体制，探索建立以科技法律制度为核心，兼容其他各部门法律法规的无形资产管理制度。复次，在产权明晰的基础上，应鼓励单位与职务发明人之间通过约定分享收益。最后，实现单位与职务发明人的互利共赢还需要提升单位的知识产权运营能力，以实现职务发明成果的转化利用。     

Balancing breadth and depth of expertise for innovation: A 3M story

This study examines how inventors’ breadth and depth of expertise influence innovation in 3M, a company renowned for sustained innovation for over a century. While prior research tends to examine a single indicator – the technical success achieved by the inventor – our study differentiates between three indicators of a successful inventor: (1) the number of inventions generated; (2) the extent to which the inventor has a significant impact in his or her technical domain; and (3) the inventor's career success, in terms of the commercial value they have brought by converting their inventions into products that generate sales for commercial organizations. We found that breadth of inventor expertise relates to the generation of many inventions, but not necessarily to those that are technically influential. Depth of inventor expertise enables individuals to generate technically influential inventions, as measured by patents granted. However, both breadth and depth of expertise are required for innovators to be deemed highly valuable, based on their records of effectively converting inventions into commercially successful products. Our study extends prior research on innovation in two ways. We provide a comprehensive view of how inventors’ expertise influences innovation and also show how inventors with different expertise profiles can contribute in unique ways to their organization.     

知识组合多样性、新颖性与突破性发明形成

突破性技术发明在企业参与全球技术和市场竞争中的作用已经得到广泛认可,但如何才能创造产生突破性技术发明仍是学术界和企业界关注的热点问题。本文基于知识搜索重组视角和团队学习理论,重点考察知识组合多样性、新颖性对突破性技术发明形成的直接影响程度和交互影响效应,并揭示发明人团队规模对知识组合特征与突破性技术发明形成关系的调节作用。基于美国专利商标局（USPTO）1989-2012年纳米技术领域的8334条授权发明专利进行实证检验,结果发现：（1）与知识组合多样性相比,知识组合新颖性对突破性技术发明形成的正向影响更为显著;同时,知识组合多样性与知识组合新颖性对突破性技术发明的形成具有显著的正向交互作用。（2）发明人团队规模对知识组合多样性与突破性技术发明形成的关系具有显著的正向调节作用,而对知识组合新颖性与突破性技术发明形成关系的负向调节作用不显著。本研究从知识元素和发明人视角系统揭示了突破性技术发明的形成机制,对企业面向突破性技术发明的发明人团队构建及知识组合战略实施具有重要启示。     

Benchmarking U.S. university patent value and commercialization efforts: A new approach

Despite the economic significance of patented university research, it is difficult to measure the economic value of academic patented inventions and observe the extent to which universities are able to capture such value through patent licensing. Moving beyond assessing commercialization performance by simple statistics, we propose a new approach to benchmarking university patents and commercialization performance based on comparative corporate patent value. Our procedure involves matching university patents to patents with similar patent characteristics granted to public corporations, then estimating the “potential value” of these university patents by stock market reactions to grants of the matched corporate patents. These estimated values of university patents can significantly explain the technology-level income from licensing by a leading US research university and the annual licensing income of the member universities of the Association of University Technology Managers’ (AUTM). We find that AUTM universities realize an average of 16% of the estimated value of matched corporate patents. We also investigate correlates of university‐level potential patent value and suggest avenues for future research.     

知识元素网络搜索与突破性技术发明形成

突破性技术发明在企业参与全球技术和市场竞争中的作用已经得到广泛认可,但如何通过知识搜索和重组形成突破性技术发明仍是学术界和企业界关注的热点问题。本文基于知识搜索重组视角和社会网络理论,考察知识元素网络搜索与突破性技术发明形成的关系,并基于团队学习理论揭示发明人团队特征的调节作用。然后,利用美国专利商标局（USPTO）1995-2010年纳米技术领域6132条授权发明专利进行实证检验,结果发现：（1）知识元素的网络中心度越低,占据结构洞位置越少,突破性技术发明形成的概率越高。（2）与合作发明人相比,单独发明人搜索网络中心度较低和结构洞较少的知识元素创造产生突破性技术发明的概率更高。（3）发明人团队技术经验越丰富,搜索网络中心度较低和结构洞较少的知识元素创造产生突破性技术发明的概率越高。本研究从知识元素网络和发明人团队视角系统揭示了突破性技术发明的形成机制,对企业面向突破性技术发明的发明人团队构建及知识组合战略实施具有重要启示。     

从学术型发明人视角看高科技领域科学与技术研究前沿主题的关系 ——以石墨烯领域为例

学术型发明人是科学向技术转移的重要桥梁和媒介.本文从识别高影响力的学术型发明人入手,通过对高影响力学术发明人的论文和专利的持续研究主题的研究,来识别对比高科技领域科学与技术前沿主题的差别与联系,并分析识别学术型发明人的研究成果中的更具市场潜力的研究主题.研究发现,不同国家的学术型发明人的研究侧重点不同,有的偏重科学研究...     

Standing your ground: Examining the signaling effects of patent litigation in university technology licensing

The licensing of university technologies to private firms has become an important part of the technology transfer mission of many universities. An inherent challenge for the technology licensing of universities is that potential licensees find it difficult to judge the early stage technologies and their ultimate commercial value. We reason that patent litigation against universities can have unintended signaling effects about the commercial value of its technologies and results in increased licensing income for the university. We ground this hypothesis in theory integrating signaling mechanisms from patent enforcement research into theoretical models explaining university technology licensing. Within our logic, the public and costly nature of patent litigation against universities creates strong, credible signals to potential licensees about the technologies of a university even if the signal was not created for that specific purpose. We isolate the signaling mechanism that is central to our theorizing by exploring two moderation factors that reveal additional information to potential licensees, i.e. the licensing track-record of the university and whether the lawsuit involves private firms as co-defendants. We test our theory with a unique dataset of 157 US universities and the 1408 patent infringement cases in which they were involved as defendants over the period 2005–2016. Results show that defending against claims of patent infringement enhances technology licensing revenues, particularly when universities are already adept at licensing technology and when they are co-defendants with private firms.     

The determinants of academic research commercial performance: Towards an organizational ambidexterity perspective

This paper examined the relationship between organizational ambidexterity and research commercialization in universities. The paper develops two types of organizational ambidexterity: structural ambidexterity and contextual ambidexterity that influence research commercialization. Through a dataset of 474 academic patent inventors in Taiwan, the results revealed structural and contextual ambidexterity factors are patenting-, licensing- and start-up-specific. Despite both types of ambidexterity are complementary in patenting and licensing, contextual ambidexterity outperform structural ambidexterity in fostering university start-up equity participation. To promote academic research commercialization, it is necessary to build up a university as a dual structural organization that allows pursuing research excellence and research commercialization at the same time.     

A novel technology-industry concordance table based on linked inventor-establishment data

Mapping technologies into industries is frequently required in empirical innovation studies, but many concordances only provide coarse mappings. We develop a novel concordance between industries and technologies making use of linked inventor-employee data for a large sample of German patents filed at the European Patent Office between 1999 and 2011. Inventors listed on these patents are matched and disambiguated with German social security records. Employment data recorded in this database include detailed industry codes describing the industrial activities of the inventors’ establishments. These linked microdata allow us to identify the precise industrial origin of inventions, combine them with technology classifications from the inventors’ patents and to generate novel concordance tables. We evaluate our approach by comparing the concordances with existing work. Moreover, in an empirical application, we find that patent based indicators represent valid proxies for the innovation performance of industries and thus help to measure innovation in the absence of other survey based indicators. Service sector innovation activities, however, appear to be barely represented by the patenting activities of inventors and establishments.     

高校技术排他性许可影响因素的实证研究

基于我国高校与企业间的专利许可数据，本文研究技术成熟度、校企之间的地理距离和校企合作经验如何影响高校采取排他性许可的倾向。当商业化高校的技术伴随着高风险时，企业承诺投入必要资源的意愿降低。本研究认为，合理的许可合同设计是高校解决该问题的方式之一。排他性许可作为高校创造共同承诺的机制，能够减轻技术不成熟、地理距离劣势和缺少合作经验给企业带来的风险，激励企业投入互补性资产，促进高校科技成果产业化。实证结果表明，技术成熟度越低，高校与企业的合作经验越少，高校采用排他性许可的倾向越高。同时，随着地理距离增加，技术成熟度减少高校进行排他性许可倾向的关系会被削弱。     

发明人主导职务成果转化机制的实证研究——以甲醇制取低碳烯烃成果转化为例

从知识的视角,一项职务成果就是一个由显性知识和隐性知识构成的知识包,分属于科研单位和发明人控制,因此,是否赋予发明人主导职务成果转化,既是一个重大的理论问题,也是一个重大的政策问题。论文首先提出研究假设,即由于显性知识与隐性知识的控制权分离,导致转化主体分别与研发主体、消费主体、融资主体分别出现技术距离、市场距离和融资距离;而且这三类距离越大,越需要发明人来主导职务成果转化;随后,采用案例研究方法,以甲醇制烯烃成果转化案例进行实证检验。论文的实证结论显示,采用创业分拆方式来推进发明人主导职务成果转化,即把发明人及其职务成果整体孵化转化为企业性质的转化主体,由发明人主导职务成果转化,消除了这三类距离,促进职务成果顺利转化。