The Many Faces of Bayh-Dole
42 Pages Posted: 30 Oct 2015 Last revised: 28 Jun 2016
Date Written: October 28, 2015
Promoting technological innovation is important to the U.S. economy, as evidence by the enactment of the America Invents Act three years ago. But what if Congress passed a law to promote innovation based on scientific and technological research that instead might be stifling innovation? These are the concerns that various critics have expressed about the Bayh-Dole Act. The reality however, is that like the patent system itself, the effect of the Bayh-Dole Act is not homogeneous. Whether university patenting under Bayh-Dole promotes or frustrates subsequent innovation or whether it has any role at all depends not only on technology in question but also on its developmental stage, familiarity with the field of technology, and so on. This article examines the three main roles that university patenting may play and, more importantly, the conditions under which university patenting is likely to assume each role.
First is the role that university patenting and Bayh-Dole were intended to play – that of encouraging development and commercialization of university research. University patenting covers inventions funded not just by federal research funds but also by private industry funding and as such helps to incentivize investment of private funds in university research, and in some limited circumstances, university patenting under Bayh-Dole may afford forward protection for downstream development stages that might otherwise be copied by others. Second, university patenting may, as many critics suggest, actually hinder development of federally funded research by creating bottlenecks that interfere with development of downstream applications, particularly with regard to foundational technologies and to cumulative and complementary technologies. The third scenario is that Bayh-Dole patenting is simply irrelevant, especially for the “science-based” fields typically the focus of university research. In these areas, technological and economic uncertainty, long development cycles, tacit knowledge, lack of funding, and even regulatory and safety issues are much more significant and rate limiting than patents are.
Keywords: Bayh-Dole, patent, university, upstream patenting, science-based technology, technology, anticommons, tacit knowledge, Valley of Death
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