Transferring University Technologies: Challenging Bayh-Dole

Does patenting encourage or speed the transfer of technology from universities? Does the prospect of receiving royalties and licensing fees increase motivation among university researchers to work with businesses to commercialize technology? A recent paper suggests the answers to both questions is "no," but that more empirical and statistical research is needed to determine whether or not increased emphasis on intellectual property rights is achieving the desired results.



How Do University Inventions Get Into Practice?, prepared by a team of researchers from across the country, is the first report on a study that attempts to understand:

• the nature of projects that led to inventions,
• the motivations for undertaking the research, and 
• the processes employed to connect with industry for technology transfer.

Based on case studies of several different inventions from Columbia University and Stanford University, the authors conjecture that “the role of patents, and the role of university technology transfer offices varies significantly from case to case.” Additional research is needed to identify and isolate the factors that characterize when patenting and licensing are the most expedient and beneficial methods for moving university technology into the marketplace.



The team’s current work stems from initial research questioning some of the commonly held beliefs about the impact of the Bayh-Dole Act of 1980, which made it easier for universities to retain title to inventions resulting from government-funded research.



While Bayh-Dole is commonly credited with the explosion of university patent activity over the past two decades, an earlier paper by members of the research team found evidence that suggests other factors may have led to increased patenting and licensing activity and that Bayh-Dole may have added fuel to trends already underway and heightened university marketing efforts.



After a review of the patent activities of three schools that were among the leaders in royalty and licensing income in the 1990s, David Mowery, et al., reported in The Effects of the Bayh-Dole Act on U.S. University Research and Technology Transfer: An Analysis of Data from Columbia University, the University of California, and Stanford University that, even before Bayh-Dole, universities had begun shifting their research emphasis into areas, disciplines, and fields that were more likely to result in patentable inventions. Engineering and 

software development are offered as examples. Increased research in biomedical sciences, in particular, account for significant levels of patent and licensing activity at the three universities, and predated the Bayh-Dole Act at two of the institutions. University patents remain highly concentrated in these few fields.



Effects of Bayh-Dole also points out court decisions in the 1970s that expanded the definitions of what was patentable (“engineered molecules” are cited as examples) led to increases in university patent applications prior to Bayh-Dole taking effect.



The Act, though, is credited with many universities taking more aggressive roles in marketing or licensing their inventions, in some cases reversing or abandoning policies that discouraged the institutions from engaging in technology transfer. Nearly every major research university now has a technology transfer office.



The authors raise concerns that Bayh-Dole may have resulted in universities patenting or protecting information that historically would have entered the public domain and encouraged more scientific exploration and advances in knowledge (scientific research versus applied research, for example). The authors ask if universities and private firms are now over-patenting and possibly stifling or retarding scientific progress?



The Effects of the Bayh-Dole Act on U.S. University Research and Technology Transfer: An Analysis of Data from Columbia University, the University of California, and Stanford University is available for download at 

http://www.haas.berkeley.edu/~pierce/Nelson1.pdf

How Do University Inventions Get Into Practice? Can be downloaded at 

http://www.haas.berkeley.edu/~pierce/Nelson2.pdf