Tech Transfer: Everything (Patent) is Never Quite Enough
Llewellyn Joseph Gibbons
University of Toledo - College of Law; Fellow, Intellectual Property Rights Center
May 5, 2010
University of Louisville Law Review, Vol. 48, pp. 843-876, 2010
University of Toledo Legal Studies Research Paper No. 2011-05
All forms of intellectual property may be necessary for the effective commercialization of a patent. Nevertheless, while the Bayh-Dole Act is an explicit recognition by Congress of the need to allocate patent rights in order to promote a policy of commercializing the products of federal research funding, it is silent on other salient intellectual patent rights such as trade secrets and copyrights. The ownership of trade secrets and copyrights must be clearly accounted for and their ownership allocated as part of the commercialization process. While state governments can provide clearer laws on the ownership of trade secrets, federal law would preempt most state laws that would purport to change the 1976 Copyright Act’s default rules. This article does not advocate a radical change in the status quo regarding the allocation of intellectual property rights between faculty members and universities. A university must have a carefully-nuanced intellectual property policy that promotes a myriad of goals from those of the university as trustee of our intellectual heritage of open publication and debate, to the university as a not-for-profit, revenue generating, self-sustaining research institution, to the duties of the university as a corporate body of independent self-governing scholars. Absent some statutory change, universities should adopt a nuanced set of intellectual property policies that recognize the university's interest in different forms of intellectual property and differing embodiments of intellectual property The university’s interest in a faculty-authored scholarly tome or journal article is quite different from its potential interest in a faculty-authored computer program or laboratory notebook - especially when these are associated with university owned patents. Without university capture, these works would not be developed, commercialized, or disseminated. In some cases, such innovations are necessary for the commercialization of university-owned patent rights.
Number of Pages in PDF File: 35
Keywords: Bayh-Dole Act, University Technology Transfer, Intellectual Property, Faculty Intellectual Property Rights, Teacher Exception, University Trade Secrets
JEL Classification: O30, O31, O34Accepted Paper Series
Date posted: October 7, 2010 ; Last revised: September 30, 2011
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