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Lost In Translation
Unintended Consequences of the Bayh-Dole Act

Elizabeth Popp Berman
Assistant Professor
Department of Sociology
University at Albany, SUNY

In 1980, passage by Congress of the Bayh-Dole Act granted universities the right to patent federally funded research. Bayh-Dole was the culmination of fifteen years of effort by government officials and university administrators. Proponents of the legislation cared deeply about getting the results of the vast quantities of taxpayer supported research into the hands of people who needed it most. Their efforts transformed the university research system, generated thousands of patents a year and in turn earned billions of dollars from licensing fees for U.S. universities.

Advocates of Bayh-Dole were focused on publicly-funded university inventions. They worried that the system in place at that time left promising discoveries on the shelf, never to be turned into useful products. Developing early-stage innovation is a risky and costly investment and Bayh-Dole's supporters saw vesting patent rights in universities as a solution designed to solve that problem.

With the primary focus on invention, little consideration was given to the Act's impact on the university itself by Bayh-Dole supporters. In some ways, the Act succeeded beyond their wildest dreams. In other ways, though, it created new problems - problems that its supporters either couldn't foresee or never considered.

Prior to Bayh-Dole, universities occasionally patented government-funded inventions, but federal patent policy, a crazy quilt of different rules across different funding agencies, tended to discourage it. Once enacted into law, Bayh-Dole would supersede no fewer than 22 federal statutes governing patent policy. Proponents of university-based patenting realized that a new law would be required in order to change the situation.

Many members of Congress were concerned that allowing university patenting would turn a public resource - taxpayer-funded research - into a source of private profit. Senator Gaylord Nelson colorfully railed against the government "playing Santa Claus" by handing out patents to federal contractors.

When Bayh-Dole was debated before Congress, this issue was foremost. Was endorsing university patenting equivalent to a government giveaway? Or by encouraging private investment in early-stage innovation was it actually in the public interest? The question of how legislation might impact universities themselves - of what it would mean for them to take on this new role in technology transfer - was almost an afterthought.

Yet that impact has been both significant and complex. On the one hand, Bayh-Dole has accelerated the development of many inventions that might have languished in the public domain. As a bonus, it has created a valuable income stream for some universities that can be ploughed back into support for scientific research.

On the other hand, the very value of that income stream can affect the university's priorities. With so much at stake, there is a temptation to let dollars displace dissemination as the core goal of technology transfer and university patenting. Patents are a bit of a lottery. Even the most minor research institution has the potential to hit the jackpot. This speculative aspect keeps many universities in the patent game, including those that lack the required expertise in patent management or a track record of technology transfer success.

When revenue becomes the sole motivation for patenting, the results can be ugly. Technology transfer offices focused exclusively on income may launch legal attacks on faculty over once-ignored inventions that turn out to have unexpected earning potential. Or they may embark on lawsuits with the sole purpose of increasing licensing fees, regardless of whether these efforts truly reflects the university technology transfer mission.

Of course there are many hard working and highly ethical technology transfer professionals who are committed to acting in ways that are consistent with the larger social interest. In fact, some of the best ideas about how to keep the focus on technology transfer come from that community. While there are no silver bullets that will easily solve these messy real-world problems, two ideas worth considering are presented below.

The first suggestion is for all universities to embrace the "Nine Points to Consider in Licensing University Technology". Proposed by a high-profile group of schools including Stanford, the University of California and MIT, the "Nine Points" plan places the emphasis squarely on ethical technology transfer. Among other things, universities are encouraged to ensure patents can be used by nonprofit organizations for research purposes, to guarantee broad access to research tools, and to consider the needs of the developing world in their licensing agreements.

AUTM has sanctioned these principles and a number of universities have endorsed them as well. What remains to be seen, of course, is whether such voluntary efforts have any teeth, or whether they will prove to be lip service only. At the very least, they spell out some clear and worthy goals for university licensing efforts that go beyond revenue maximization.

A second suggestion is the development of alternate metrics for measuring technology transfer results. Metrics matter. The U.S. News & World Report college rankings, for example, have had a dramatic impact on the behavior of colleges. But there are two problems with the current metrics used by universities. First, they (understandably) count the things that are easiest to count. This equates with an emphasis on the dollar amount of licensing revenues and the sheer number of patents and licensing agreements. Second, the main source of this data is AUTM's annual licensing survey. While AUTM's data is very useful, the organization has an inherent interest in portraying technology transfer offices in a positive light. Other groups, government and private, must be involved in evaluating the results of university technology transfer.

Developing better metrics will not be an easy task. It will require a creative approach to evaluating the impacts of technology transfer and independent data collection. Experiments with different methods of measurement are already underway. At the University of British Columbia, for example, the University-Industry Liaison Office has experimented with various ways of valuing the social impact of the technologies it licenses. Larger-scale efforts, by focusing public opinion on success at the broader mission, have the potential to drive accountability of universities and to reinforce values like those laid out in the "Nine Points".

The conversation is just beginning. But it is one we need to have if we are to fulfill the intent of Bayh-Dole.


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Comments : 0 - Last Post : Sep 18, 2009 3:09 PM by: Dr. Elizabeth Popp Berman
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