May 25, 2006
Book on intellectual property a ‘much-needed resource’
When attorney Aline Flower took a job in the UW’s Office of Technology Transfer back in 2000, she looked for a comprehensive legal reference book in the field, but found none. So Flower took action, and today there is such a reference — because she created it. Intellectual Property Technology Transfer, the volume she edited, has just been published by BNA Books, an authoritative source of legal publications.
As TechTransfer’s legal affairs manager, Flower analyzes, drafts and negotiates a wide variety of agreements between the UW and industries interested in licensing intellectual property from the University’s researchers. It’s a complex field that took off back in 1980 when the Bayh-Dole Act became law. Essentially, that law shifted the ownership of intellectual property from the federal government to the recipients of federal funding at their option.
“Before, all intellectual property automatically belonged to the funding agency,” Flower said. “Those agencies had no time to assess the market application of new inventions, and when they did grant licenses, they were non-exclusive so there wasn’t any incentive for industry to develop technology.”
The goal of the law, she said, was to make new technology available to the public, and the thinking was that the funding recipients were in the best position to do that.
It’s not surprising, then, that the new book begins with a detailed account of the Bayh-Dole Act and other regulation of the rights to intellectual property developed with government involvement.
But of course, the law doesn’t spell out how agreements are to be made between universities or research organizations and industry. In her role with TechTransfer, Flower has had plenty of chances to see the problems that can arise as partnerships are forged.
On the University side, she said, one problem was understanding industry needs for information to remain confidential. “There was a knee jerk reaction — ‘We’re a public institution; we’re under the Public Records Act.’ But when you check into it, it turns out there is a provision under that act to protect information.”
Industry had its blind spots too. “They didn’t always understand the value to the University of the ability to publish,” Flower said. “We’ve learned ways to satisfy both sides — by delaying publication for specific periods of time or for very specific purposes, such as filing for a patent.”
Over her years on the job, Flower spent evenings and weekends collecting materials on all aspects of the field. “You could say I mapped the landscape of where the law lay,” she said. “By the time I had a conversation with BNA Books, I knew what the framework of the book should be.”
When the publisher sent her proposal to outside reviewers, they said the book was a much-needed resource, and the publisher gave it the green light. With BNA’s help, Flower began contacting experts — mostly practicing attorneys — in each of the areas she wanted the book to cover.
“When I approached the authors I got overwhelmingly positive feedback,” she said. “That was a wonderful moment. It was hugely reassuring, because they’re the ones who are practicing in the field.”
In addition to editing the book, Flower co-authored a chapter on intellectual property ownership.
Now that the book is out, she said, she has an “enormous sense of relief,” although she’s on the hook for when supplements to the volume are needed.
“My greatest ambition was that the book be a practical resource, that it simplify things and provide answers to questions,” Flower said. “I hope that it will reduce the amount of time people like me have to spend searching for information so they can devote themselves instead to moving the process along.”
