Bayh–Dole and Alternative University Technology Transfer Regimes
One of the primary motivations in passing the Bayh–Dole Act (BD) of 1980 was the belief that government-owned patents were insufficiently utilized. To remedy this shortcoming, Congress designed the BD Act so that federal contractors, including universities, could claim title to inventions made with federal funds. BD also standardized the procedures for vesting the control of federally-funded research inventions in contractors. The U.S. university invention ownership model has been heralded as the global best practice by many observers; more recently, though, some have begun to question this assessment. While BD was supported at the time of its passage as a means to facilitate the transfer of federally funded inventions, it has in fact turned out to be a profound technology policy decision. With BD came a new university invention commercialization model which university administrators believed would be source of income.
The BD model is not the only model for organizing technology diffusion and commercialization. Robert Litan et al., among a number of recommendations, suggested the first model we discuss, which vests invention ownership in the inventor. A second approach argues that the diffusion of university inventions would be improved by weakening property rights in these inventions. One way of doing this is to place university inventions in the public domain. A less radical variant proposed by Richard Nelson limits universities to offering non-exclusive licenses for inventions. In the remainder of this chapter the BD university ownership model is examined, and each of these alternatives is discussed, though we concentrate on the inventor ownership model because it has been less discussed in scholarly literature.
KeywordsIntellectual Property Technology Transfer Technology Diffusion Technology License Academic Patent
- Breznitz, S. M. 2008. Improving or impairing? Following technology transfer changes at the University of Cambridge. Unpublished manuscript made available by author.Google Scholar
- Brooks, H. 1993. Research universities and the social contract for science. In: Branscomb, L. M. (Ed) Empowering Technology: Implementing a U.S. Strategy. MIT Press, Boston, 202–234.Google Scholar
- Chen, K., Kenney, M. 2007. Universities/research institutes and regional innovation systems: The cases of Beijing and Shenzhen. World Development (35) 6, 1056–1074.Google Scholar
- Chew, P.K. 1992. Faculty-generated inventions: Who owns the golden egg? Wisconsin Law Review 75, 259–306.Google Scholar
- Cohen, W.M., Nelson, R.R., Walsh, J. 2000. Protecting their intellectual assets: appropriability conditions and why U.S. manufacturing firms patent (or not). Working Paper 7552, National Bureau of Economic Research, February. (http://www.nber.org/papers/w7552).
- Colaianni, C.A., Cook-Deegan, R. 2009. Columbia University’s Axel patents: technology transfer and implications for the Bayh-Dole Act. Milbank Quarterly 87(3), 683–715.Google Scholar
- The Economist. 2005. The Bayh-Dole Act’s 25th birthday. (December 20).Google Scholar
- The Economist. 2002. Innovation’s Golden Goose. (December 12).Google Scholar
- Greenbaum, D., Scott, C. 2010. Hochschullehrerprivileg: A modern incarnation of the professor’s privilege to promote university to industry technology transfer. Science, Technology and Society 15, pp. 55–76.Google Scholar
- Harvard Journal of Law & Technology. 2004. Axel Patent litigation, e.g., Genentech, Inc. v. Tr. of Columbia University. Harvard Journal of Law & Technology 17 (2), 583–618.Google Scholar
- Jaffe, A. B., Lerner, J. 2004. Innovation and Its Discontents: How Our Broken Patent System Is Endangering Innovation and Progress, and What to Do About It. Princeton University Press, Princeton.Google Scholar
- Kenney, M. 1986. Biotechnology: The University Industrial Complex. Yale University Press, New Haven, CT.Google Scholar
- Ku, K. (Directory, Stanford University, Office of Technology Licensing). 2008. Personal e-mail communication with Martin Kenney (April 28, 2008).Google Scholar
- Lemley, M.A. 2007. Are universities patent trolls? (April 11). Stanford Public Law Working Paper No. 980776 Available at SSRN: http://ssrn.com/abstract=980776.
- Litan, R.E., Mitchell, L., Reedy, E.J. 2007. The university as innovator: Bumps in the road. Issues in Science and Technology (Summer), 57–66.Google Scholar
- Lowen, R. S, 1997. Creating the Cold War University. Berkeley: University of California Press.Google Scholar
- Mowery, D.C., Nelson, R.R., Sampat, B.N., Ziedonis, A.A. 2004. Ivory Tower and Industrial Innovation: University-Industry Technology before and after the Bayh-Dole Act in the United States. Stanford University Press, Stanford.Google Scholar
- Mowery, D.C., Sampat, B.N. 2005. The Bayh-Dole Act of 1980 and university–industry technology transfer: A model for other OECD governments? Journal of Technology Transfer 30 (1/2), 115–127.Google Scholar
- OECD. 2000. A New Economy? OECD, Paris.Google Scholar
- OECD. 2003. Turning Science into Business. Patenting and Licensing at Public Research Organizations. OECD, Paris.Google Scholar
- Pressman L., Burgess, R., Cook-Deegan, R., McCormack, S.J., Nami-Wolk, I., Soucy, M., Walters, L. 2006. The licensing of DNA patents by US academic institutions: An empirical survey. Nature Biotechnology 24 (January), 31–39.Google Scholar
- Rai, A. K., Allison, J. R., Sampat, B. N. 2009. University software patenting: A first examination. University of North Carolina Law Review 87, pp.1519–1570.Google Scholar
- Segal Quince Wicksteed Ltd. 1985. The Cambridge Phenomenon: The Growth of High-technology Industry in a University Town. Cambridge, UK Segal Quince Wicksteed Ltd.Google Scholar
- Shane, S. 2004. Academic Entrepreneurship: University Spin-offs and Wealth Creation. Edgar Elgar, Cheltenham, UK.Google Scholar
- Slaughter, S., Rhoades, G. 2004. Academic Capitalism and the New Economy: Market, State, and Higher Education. John Hopkins University Press, Baltimore.Google Scholar
- So, A. D., Sampat, B. N., Rai, A. K., Cook-Deegan, R., Reichman, J. H., Weissman, R. and Kapczynski, A. 2008. Is Bayh-Dole good for developing countries? Lessons from the US experience. PLoS Biology 6 (10). http://www.plosbiology.org/article/info:doi/10.1371/journal.pbio.0060262.
- Washburn, J. 2005. University, Inc. Basic Books, New York.Google Scholar