At 09:23 AM 7/24/99 -0400, you wrote:
>
>
>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.
There was indeed recapture, which I did not go into. And for the reason you
state:
if the theory didn't work, i.e., the scenario in which the university
retains title
and licenses out the research so that it becomes commercially available in
fact never happens, then the government gets to take a shot at exploiting
it. And
if the research results indeed included technology that is immediately useable
by "the government" itself, e.g., new sonar techniques useable on submarines,
then the government has a royalty free license to use that technology, whether
or not there was recapture.
And yes, I might have made my remarks more clear. If it was the private
company itself that was doing the federally funded research, it went under
the same rules as the university -- it got title provided that it got the
results
put in use and avoided recapture. And therein, of course, lies the rub with
respect to the data base that WE have created by all of our registrations
of domain names: there was no "research" involved, and the proper NSI
role is that of being a pass-through of the information, from all of us back
to all of us. I don't think Bayh - Dole applies, partly because that data base
is not a "research result" and partly because I doubt there would have been
authority to cook up such a deal, whatever the contract says. To find
out we'd have to read both the contract itself and the statutory authority
under which the contract was written -- this would not be the first time
that the government tried to give away the farm, if indeed that is the case.
If the contract were that stupidly written, then the government has the
right and obligation to take the data anyway, and pay NSI for it under
the "takings" clause, but what is NOT acceptable is that it shall be
forever in the hands of NSI and we all suck up to it to keep the internet
functioning.
>
>> (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.
I'll double and triple that remark, but like you I'm not sure whether the
USG has
learned much more since then.
Bill Lovell
>
>Diane Cabell
>http://www.mama-tech.com
>Fausett, Gaeta & Lund, LLP
>Boston, MA
>
