The federal Bayh-Dole Act was enacted to bring the benefits of federally-funded research to the public. However, many technology commercialization managers and their attorneys wrongfully contend that Bayh-Dole confiscated the personal property of faculty members and gave it to universities.
Since it was enacted in 1980, the Bayh-Dole or Federal Patent Reform Act, which governs technology transfer at research universities, has generated results never intended by its sponsors. The legislation says its sole purpose is to streamline the process of bringing federally funded innovations to the public. Its first stated goal is "to use the patent system to promote the utilization of inventions arising from federally supported research or development."
However, Bayh-Dole has resulted in fundamental shifts in the research landscape and been employed to justify the seizure of intellectual property by institutions of higher education from their scientists. Many of these cases have ended up embroiled in litigation.
As one patent attorney wrote in a successful defense of a faculty researcher's patents: "Bayh-Dole is not a ‘bulldozer' and it should not be used to push over the faculty and take away their property."
Before 1980, the government's complex system for licensing new intellectual property forced industry licensees to navigate bureaucratic red tape from as many as 26 different federal agencies. Under Bayh-Dole, all that would change as universities were given the federal government's rights to inventions arising from government-funded research.
While the act allows universities to seek these rights which otherwise were vested in the federal government, nowhere does it give universities the legal right to convert inventors' private property to university property without the inventors' consent.
And, of course, Bayh-Dole has no authority in cases where research was not publicly funded.
According to the Association of University Technology Managers (AUTM), which represents technology transfer officials at universities, research hospitals and corporations, the number of patents obtained by universities prior to 1980 grew from 250 per year to roughly 3,000 per year today.
Further, between 1991 and 2004, the number of patent lawsuits nearly tripled, according to the Wall Street Journal, enriching patent lawyers and speculators at the expense of innovators.
In the case of the invention of the integrated PET/CT scanner, the University of Pittsburgh tried to manipulate the meaning of the Bayh-Dole Act to suggest that all government-funded research projects automatically become the property of the university.
The inventor, David Townsend, was sued by Pitt on a variety of fronts as the university's lawyers attacked him both personally and professionally. They invoked the Bayh-Dole Act, even though federal grant money was not central to Townsend's research. The innovation had been funded, for the most part, by a private corporation in conjunction with Siemens, Inc.
In a legal brief Townsend's attorneys refuted Pitt's claims stating, "As a matter of law, the Bayh-Dole Act does not create, nor does it even imply, such agreements. Pitt's motion characterizes the Bayh-Dole Act as an all-encompassing bulldozer that flattens everything in its path to protect Pitt's alleged ownership rights in the work of Pitt's faculty and students. However, the act itself, its implementing regulations, and the applicable case law all refute such a depiction."