Once again the Swedish legislator has looked into abolishing the traditional teacher's exception, which gives Swedish university researchers and teachers full ownership and control of their research results. The inquiry addresses a few interesting questions, and was motivated by the finding that not enough research results from Swedish universities are used, either commercially or any other way that benefits the surrounding community.
The task for the inquiry
The Swedish public inquiry has specifically been asked to assess the consequences of abolishing the teacher's exception and to analyse the need to clarify universities' cooperation with the surrounding community.
The inquiry has not, however, been asked to analyse in depth why few research results are commercialized. Could it be because universities have no legal right to the research results because Swedish researchers can take advantage of the teacher's exception? Is it that the typical Swedish university does not have the funds or experience to be of any help to the researchers? Is the interest from the surrounding community too small? Perhaps it is the typical researcher's poor knowledge of intellectual property law, and the notion that commercialization and patenting will unacceptably delay publication. Maybe the typical researcher's poor negotiating skills or negotiating experience is the main reason. Or could it be that the quality of research being performed at Swedish universities is poor?
These questions would be interesting to look into but unfortunately the inquiry looks at just two issues: the consequences of introducing a new obligation for universities and abolishing the teacher's exception. A third issue has also been raised relating to proposed amendments to secrecy legislation, but this is not discussed in this briefing.
Suggested amendments to Swedish law
The inquiry suggests amending the Higher Education Act by adding an obligation for universities to promote the use of their research results. The introduction of this new obligation is not accompanied by more money to universities or any indication as to how the universities could accomplish this, but the new task is nevertheless a first step towards focusing attention on commercialization.
Abolishing the teacher's exception means that changes have to be made to the Act on the Right to Employees' Inventions where this explicit exception is mentioned.
Two options are presented: abolishing the teacher's exception or retaining the teacher's exception but introducing an obligation for teachers and researchers to report inventions to their employer (the university).
The mandatory reporting option comprises only an obligation for a researcher to report inventions to the university. It does not go into what will happen next, how quickly the university must respond or what will happen if a researcher does not report their patentable findings.
The takeover option contains a right for the university to take over the invention, in return for compensation, provided that the researcher does not choose to reserve the right to publish the research result. When a university takes over the right to an invention, the university must take effective measures to use the invention. As a minimum requirement, the university must apply for a patent if this has not already been done. The compensation to the researcher should amount to at least 30% of the university's profit from the invention. The researcher is also guaranteed about €2500 ($3205) at the time of the university's takeover.
The takeover option has an interesting structure but it also has a built-in veto right that makes takeover impossible if the researcher prefers to publish information about the invention. So the proposed new law makes a clear distinction between commercialization and publication, which is unfortunate because these things can be combined. It is doubtful that the proposed new law will lead to increased use of research results. If a large number of researchers consider publication their primary goal, the number of takeovers using the takeover option would be small. If, however, the takeover option would prove to be popular, it is doubtful that the universities could manage the administration of evaluating a large number of inventions to decide, within the suggested time limit of two months, if the university could take effective measures to use the invention and how this should be done; preferably in cooperation with the surrounding community.
More assessment needed
The legislator needs to look into how Swedish research is organized, how it is funded and how it is carried out before introducing a new compromise that will not change the present situation. Perhaps the legislator will find that investment is needed to build an organization and know-how to allow interesting inventions to reach interested parties in the surrounding community.
Author: Gunnar Hjalt, Attorney-at-law
© Awapatent 2006
Note: The article was earlier published in MIP, May 2006.