Bayh-Dole Act
by Douglas Baldwin
The Bayh-Dole Act (35 USC 200-212)( 37 C.F.R. 401) adopted in 1980 gave US universities, small businesses and non-profits intellectual property control of their inventions and other intellectual property that resulted from such funding.
Prior to Bayh-Dole government sponsored inventions, while available to all, were rarely perfected or commercialized. Since the government was unwilling to grant exclusive licenses (could not tell constituents that they has granted government property to an evil corporation) and companies were unwilling to spend millions in development of products that everyone could then exploit, the research simply languished. Bayh-Dole broke that impasse.
The principal provisions of the act as summarized by Wikipedia are:
Small businesses and non-profit organizations can retain the title in a federally funded "subject invention." In exchange, the organization is required to:
- Report each disclosed invention to the funding agency
- Elect to retain title in writing within a statutorily prescribed time frame
- File for patent protection
- Grant the federal government a non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced on its behalf throughout the world
- Actively promote and attempt to commercialize the invention
- Not assign the rights to the technology, with a few exceptions
- Share royalties with the inventor
- Use any remaining income for education and research
- Give preference to US industry and small business
Prior to the act, there was always great difficulty in sorting out ownership of university research since some or all may have been done under one or more federal grants – and record keeping was not all that good. Bayh-Dole greatly resolved that problem and as a result many universities have adopted active Research and Development policies and departments. See The Association of University Technology Managers - www.autm.net.
Typically the New York Times does not understand: a recent article ("When Academia Puts Profit Ahead of Wonder) by Janet Rae-Dupree is critical of Bayh-Dole as distorting "the fundamental mission of universities."
See Patent Docs - www.patentdocs.net/patent_docs/2008/09/new-attack-on-p.html#comments for an excellent critique.