Beware patent trap, universities told

Universities keen to get a share of the big money being pumped into new scientific initiatives are being urged to beware of the legal pitfalls surrounding research exploitation.

The government is attempting to stimulate profitable research with a series of multimillion pound grants to universities.

But the hothouse atmosphere generated by such incentives has raised fears that higher education institutions may be caught out on legal issues surrounding intellectual property rights and copyright.

Intellectual property lawyers say one of the biggest potential problems is the clash between confidentiality and publication. The problem arises when an industrial sponsor wants commercially sensitive research to remain secret while the university wishes to publish its findings.

Another problem is of the "rogue" researcher, who is unaware of contracts drawn up between the university and its industrial sponsor and reveals aspects of research. The disclosure could result in the university failing to get a patent.

Carolyn Chia, a lawyer specialising in intellectual property rights, said:

"What some universities are looking at is having adequate controls over their researchers.

"If you want to file an application for a patent or design it has to be new and cannot be disclosed in any way to the public."

She said the information could be disclosed simply because the researcher did not know about a contract, but also because universities often have charitable status, which obliges them to disseminate information.

In the case of a clash between sponsor and researcher, she said a clause had to be drafted whereby a researcher had to give notice to enable the sponsor to take steps to file an application to protect its inventions.

Most major universities have their own companies handling research exploitation.

However, according to Ederyn Williams, managing director of University of Leeds Innovations Ltd, it is impossible to keep an eye on every researcher.

"We have to build an awareness for them to come to us," he said.

Research pitfalls, page 35