Abstract
In the thirty-five years after passage of the Bayh–Dole Act of 1980, a robust literature has documented the emergence of university technology transfer as a critical mechanism for the dissemination and commercialization of new technology stemming from federally-funded research. Missing from these investigations, however, is what this paper terms the legal perspective, an understanding of how the law and its attendant mechanisms impact university technology transfer. Specifically, the paper reviews the extant legal scholarship and provides examples of how case law, legal structures, and the unique nature of intellectual property law affects technology transfer, as well as higher education policy and management. Throughout, we propose critical questions for future investigation, which serve to form a cross-disciplinary research agenda that can contribute fresh insights to scholarly and policy discussions related to the role of universities in economic and social development.
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Notes
While employing empirical data may lead to improved legal scholarship, obstacles exist for the legal academy in adopting empirical approaches wholesale (Robbennolt 2002).
IP is a broad area of law consisting of patents, copyrights, trademarks, and trade secrets. We use IP in reference to patents unless otherwise noted.
Inventorship—i.e., who is responsible for making an invention—is a legal determination that parties cannot alter by contract. For example, if a university researcher collaborates with someone in industry, and working together the researcher and his colleague make discoveries that result in an invention, both are inventors of the invention as a matter of law. The inventors may be under contractual obligations to assign their invention rights to their employers, which is how some patents come to be co-owned by universities and firms. A co-owner cannot sue another co-owner for patent infringement, as both enjoy full rights of ownership.
There are 13 federal courts of appeal in the United States. All but the CAFC are based on geography. For example, the United States Court of Appeals for the Fourth Circuit considers appeals from the states of Maryland, North Carolina, Virginia, and West Virginia. The CAFC enjoys exclusive appellate jurisdiction over patent cases. While patent infringement trials occur in federal district courts all across the country, appeals from decisions in those cases can only be heard at the CAFC, based in Washington, DC. Prior to the CAFC’s creation, appeals in patent cases were heard at the various regional courts of appeal.
Competing claims to invention rights may arise when a faculty member conceives of an invention while employed by one university, then actually reduces that invention to practice while later employed by a different university. Co-ownership of the invention by both universities can result in these circumstances.
Interestingly, Schneider (2011) examines so-called opposition filings in Europe, a legal procedure that allows any third party to challenge the validity of patents awarded by the European Patent Office, and finds that the opposition rate is far greater in plant biotechnology than in other emerging industries. However, related to the present discussion, universities face a much lower opposition rate compared to other types of organizations. The author posits that this is due to the basic nature of the protected technologies.
Though not specific to universities, Cremers (2009) explains the German system of patent enforcement and analyzes factors that may determine the likelihood of patent litigation resulting in settlement. She finds that neither the technology characteristics of the patent nor the absolute size or relative size of the plaintiff affects likelihood of settlement. However, differences in regional legal contexts and procedures do.
How a patent is licensed determines who is required and who is permitted by law to participate as a named party in litigation involving the patent’s infringement and validity. Owners of unlicensed patents are the only parties eligible to bring infringement actions of those patents or to defend their validity. Owners of patents licensed on a non-exclusive basis, to more than one party, are the only parties that have standing to sue for infringement of the patent or defend its validity; non-exclusive licensees themselves have no standing to participate. Finally, owners of patents licensed exclusively must participate as named parties in any litigation concerning their patent’s alleged infringement or invalidity, although the exclusive licensee also has standing to participate and may be required by a court to do so.
Though unexplored within the university context, tax law governing the international sale of technology may be relevant to university technology transfer (i.e. international licensing). See, for example, Finan et al. (1999) who explain the economic issues associated with ‘transfer prices’ and their relevance to tax issues that arise when technology is transferred across international boundaries within the same company.
References
35 U.S.C. § 200.
37 C.F.R § 401.14 c(1-2).
Ács, Z. J., Braunerhjelm, P., Audretsch, D. B., & Carlsson, B. (2009). The knowledge spillover theory of entrepreneurship. Small Business Economics, 32(1), 15–30.
American Intellectual Property Law Association. (2013). Report of the economic survey. Arlington, VA: American Intellectual Property Law Association Law Practice Management Committee.
Aquino, J. T. (2014). Universities showing flexibility on industry-sponsored research, Patent Trademark and Copyright Law Daily.
Arrow, K. (1962). Economic welfare and the allocation of resources for invention. In Arrow, K. (ed.), The rate and direction of inventive activity: Economic and social factors. Princeton: Princeton University Press.
Bagley, M. (2006). Academic discourse and proprietary rights: Putting patents in their proper place. Boston College Law Review, 47(2), 217–274.
Blumberg, P. (1996). From “publish to perish” to “profit or perish”: Revenues from university technology transfer and the 501(c)(3) tax exemption. University of Pennsylvania Law Review, 145(89), 89–147.
Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., 131 S. Ct. 2188 (2011).
Bob Jones University v. United States, 461 U.S. 574 (1983).
Bradley, S., Hayter, C. S., & Link, A. N. (2013). Models and methods of university technology transfer. Foundations and Trends in Entrepreneurship, 9(6), 571–650.
Bramwell, A., & Wolfe, D. (2008). Universities and regional economic development: The entrepreneurial University of Waterloo. Research Policy, 37, 1175–1187.
Carter-Johnson, J. (2010). Unveiling the distinction between the university and its academic researchers: Lessons for patent infringement and university technology transfer. Vanderbilt Journal of Entertainment and Technology Law, 12(3), 473–514.
Carter-Johnson, J. (2014). Beyond Einstein and Edison: Claiming space for non-faculty inventors in technology transfer. Indiana Law Review, 47(3), 645–688.
Chew, P. (1992). Faculty generated inventions: Who owns the golden egg? Wisconsin. Law Review, 1992, 259–312.
Cohen, W. (2004). Patents and appropriation: Concerns and evidence. Journal of Technology Transfer, 30(1/2), 57–71.
Colombo, J. D. (2010). The NCAA, tax exemption, and college athletics. University of Illinois Law Review, 2010, 109–163.
Cremers, K. (2009). Settlement during patent litigation trials. An empirical analysis for Germany. Journal of Technology Transfer, 34, 182–195.
Depinet, A. (2013). The public is paying twice: How Stanford v. Roche undermines the congressional intent of the Bayh–Dole Act. Capital University Law Review, 41(3), 729–757.
Diamond, S. S., & Mueller, P. (2010). Empirical legal scholarship in law reviews. Annual review of Law and Social Science, 6, 581–599.
Eisenberg, R. S. (1996). Public research and private development: Patents and technology transfer in government-sponsored research. Virginia Law Review, 82, 1663–1727.
Feldman, R., & Ewing, T. (2012). The giants among us. Stanford Technology Law Review, 8(1), 1–61.
Fisch, C. O., Block, J. H., & Sandner, P. G. (2014). Chinese university patents: quantity, quality, and the role of subsidy programs. Journal of Technology Transfer. doi:10.1007/s10961-014-9383-6.
Fisch, C. O., Hassel, T. M., Sandner, P. G., & Block, J. H. (2015). University patenting: A comparison of 300 leading universities worldwide. Journal of Technology Transfer, 40, 318–345.
Grimaldi, R., Kenney, M., Siegel, D., & Wright, M. (2010). 30 years after Bayh–Dole: Reassessing academic entrepreneurship. Research Policy, 40, 1045–1057.
Hall, B., Helmers, C., Rogers, M., & Sena, V. (2014). The choice between formal and informal intellectual property: A review. Journal of Economic Literature, 52(2), 375–423.
Hayter, C. S. (2015). A social responsibility view of the ‘patent-centric linear model’ of university technology transfer. Duquesne Law Review, 53(3).
Kapczynski, A., Chaifetz, S., Katz, Z., & Benkler, Y. (2005). Addressing global health inequities: An open licensing approach for university innovations. Berkeley Technology and Law Journal, 20, 1031–1114.
Kenney, M., & Patton, D. (2009). Reconsidering the Bayh–Dole act and current university invention ownership model. Research Policy, 38, 1407–1422.
Kenney, M., & Patton, D. (2011). Does inventor ownership encourage university research-derived entrepreneurship? A six university comparison. Research Policy, 40, 1100–1112.
Kesan, J. (2009). Transferring innovation. Fordham Law Review, 77, 2169–2223.
Kimble v. Marvel Enterprises, Inc., 135 S.Ct. 1697 (2015).
Kitch, E. (1977). The nature and function of the patent system. Journal of Law and Economics, 20(2), 265–290.
Kogut, B., & Zander, U. (1992). Knowledge of the firm, combinative capabilities, and the replication of technology. Organization Science, 3(3), 383–397.
Lee, P. (2012). Transcending the tacit dimension: Patents, relationships, and organizational integration in technology transfer. California Law Review, 100, 1503–1572.
Lee, P. (2013). Patents and the university. Duke Law Journal, 63(1), 1–87.
Lemley, M. (2008). Are universities patent trolls? Fordham Intellectual Property, Media and Entertainment Law Journal, 18, 611–632.
Lerner, J. (2004). The university and the start-up: Lessons from the past two decades. Journal of Technology Transfer, 30(1–2), 49–56.
Litan, B., Mitchell, L., & Reedy, E. J. (2008). Commercializing university innovations: Alternative approaches. Innovation Policy and the Economy, 8, 31–57.
Locke, S. D. (2003). Patent litigation over federally funded inventions and the consequences of failing to comply with Bayh–Dole. Virginia Journal of Law and Technology, 8(3), 1–20.
Madey v. Duke University, 307 F.3d 1351 (Fed. Cir. 2002).
MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007).
Mikhail, P. (2000). Hopkins versus Cellpro: An illustration that patenting and exclusive licensing of fundamental science is not always in the public interest. Harvard Journal of Law and Technology, 13(2), 375–394.
Mowery, D., Nelson, R., Sampat, B., & Ziedonis, A. (2004). Ivory Tower and Industrial Innovation: University-Industry technology before and after the Bayh-Dole act in the United States. Stanford, CA: Stanford University Press.
Nelson, R. (2001). Observations on the post-Bayh–Dole rise of patenting at American universities. Journal of Technology Transfer, 26, 13–19.
Phan, P., & Siegel, D. S. (2006). The effectiveness of university technology transfer: Lessons learned. Foundations and Trends in Entrepreneurship, 2(2), 77–144.
Rai, A. (2005). Open and collaborative research: A new model for biomedicine, intellectual property rights in frontier industries. Washington, DC: AEI-Brookings Press.
Rai, A., & Eisenberg, R. (2003). Bayh–Dole reform and the progress of biomedicine. Law and Contemporary Problems, 66(1), 289–314.
Ritchie de Larena, L. (2005). What copyright teaches patent law about “fair use” and why universities are ignoring the lesson. Oregon Law Review, 84, 779–819.
Robbennolt, J. K. (2002). Evaluating empirical research methods: Using empirical research in law and policy. Nebraska Law Review, 81, 777–804.
Romer, P. M. (1990). Endogenous technological change. Journal of Political Economy, 98, 71–102.
Rooksby, J. H. (2013a). When tigers bare teeth: A qualitative study of university patent enforcement. Akron Law Review, 46, 169–205.
Rooksby, J. H. (2013b). Innovation and litigation: Tensions between universities and patents and how to fix them. Yale Journal of Law and Technology, 15, 314–406.
Rooksby, J. H. (2015). Protecting University patents while pursing the public good. In Audretsch, D. B., Hayter, C. S., Link, A. N. (eds.), Concise guide to entrepreneurship and innovation, Northampton, MA: Edward Elgar, forthcoming.
Rowe, E. A. (2006). The experimental use exception to patent infringement: Do universities deserve special treatment? Hastings Law Journal, 57, 921–954.
Schneider, C. (2011). The battle for patent rights in plant biotechnology: evidence from opposition fillings. Journal of Technology Transfer, 36, 565–579.
Smith, G. K. (1997). Faculty and graduate student generated inventions: Is university ownership a legal certainty? Virginia Journal of Law and Technology, 1(4), 1522–1687.
Solow, R. M. (1956). A contribution to the theory of economic growth. Quarterly Journal of Economics, 70, 65–94.
Tassey, G. (1991). The functions of technology infrastructure in a competitive economy. Research Policy, 20, 234–243.
Thursby, J., Jensen, R., & Thursby, M. (2001). Objectives, characteristics and outcomes of university licensing: A survey of major US universities. Journal of Technology Transfer, 26(1–2), 59–72.
U.S. Const., art. 1., sec. 8., cl. 8.
Vertinsky, L. (2012). 2012. Universities as guardians of their inventions, Utah Law Review, 4, 1949–2021.
Vertinsky, L. (2013). Making knowledge and making drugs? Experimenting with university innovation capacity. Emory Law Journal, 62, 740–821.
Voreacos, D. (April 21, 2015). Princeton loses appeal in bid to dismiss tax-exemption suit, Bloomberg Business, http://www.bloomberg.com/news/articles/2015-04-21/princeton-loses-appeal-in-bid-to-dismiss-tax-exemption-lawsuit.
Whittemore v. Cutter, 29 Fed. Cas. 1120 (C.C.D. Mass. 1813).
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Hayter, C.S., Rooksby, J.H. A legal perspective on university technology transfer. J Technol Transf 41, 270–289 (2016). https://doi.org/10.1007/s10961-015-9436-5
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DOI: https://doi.org/10.1007/s10961-015-9436-5