Bill Lovell wrote:
> At 10:00 PM 7/23/99 -0700, you wrote:
>
> As a former university patent manager I am quite familiar with Bayh - Dole,
> and with the philosophy underlying it. The purpose of granting IP rights to
> the research institute was to help ensure that the federal money was well
> spent, i.e., by the research results becoming commercialized through
> university licensing to private companies instead of having the USG just
> set them on a shelf. That such taxpayer money should lead to intellectual
> property owned solely by some private corporation was never a part of that
> philosophy.
That isn't my memory of it. Private ownership was precisely the point of the
legislation. Private companies do indeed take full title. Your university
(whether public or private one) takes full title to the IP rights in the results
of the research it performs for the USG. But Bayh-Dole did have recapture
provisions by which the USG could retrieve the rights if the benefits of the
technology were not reaching the public. The USG also usually retained a
non-exclusive, royalty-free license to use for its own purposes, as I recall, and
also received copy of the reports required to be generated under the research
program. I can't remember offhand how rights in raw data (whatever that might be)
were handled.
> (Government efforts to commercialize inventions in its so-called
> "technology transfer" programs have been a laugh, mostly because (a) the
> Congress and (b) the research sponsors themselves do not understand
> the commercialization process, with its inherent marketing requirements
> and need for technology licensing expertise, and hence they don't know how
> to support and sustain such programs -- nor do they really give a rip.)
> And all of that pertains especially to road pavers such as NSI, whom I
> agree doesn't own squat.
I haven't much experience under the CRADAs which are new since the mid-90's, I
believe. I don't know if the USG has gotten smarter about tech transfer yet or
not. Bayh-Dole was a huge leap forward in their comprehension of market
realities.
Diane Cabell
http://www.mama-tech.com
Fausett, Gaeta & Lund, LLP
Boston, MA
