by Gary Jones
FLC Washington, DC Representative
Greetings from DC. I recently attended the national meeting of the Association of University Technology Managers (AUTM) in San Francisco—an organization focused primarily on the interests of university tech transfer.
While the meeting scope was wide-ranging, an underlying theme was the general concern over recent criticisms of (and possible threats to) the Bayh-Dole Act, which has provided the legislative foundation for much of the academic tech transfer over the past quarter century. According to many there, Bayh-Dole, and consequently university tech transfer, is under attack to varying degrees from several quarters—including some within the university system. While the concerns vary in form, the general criticism can be summarized as follows—the ability for universities (and researchers) to enjoy financial gain from their efforts (as granted by Bayh-Dole) has served to subvert the primary research goal of the university, which is the search for basic knowledge in support of the public good. In other words, as intellectual property (IP) has become more valuable, more attainable and, in some cases, more applicable closer to the "basic" end of the research spectrum (where university research typically operates), universities are "following the money" rather than "following the knowledge" in their research efforts.
These criticisms were addressed head-on by no less than former Senator Birch Bayh, co-author of the act and keynote speaker, in a point-counterpoint discussion of each criticism and where it errs. For example, to those who have suggested that university research should not be the subject of exclusive licensing and that results should be made available to all (as in a public good), he noted that in 1980, prior to Bayh-Dole, only 4 percent of over 28,000 patents based on federal funding were being practiced. According to Sen. Bayh, industry often needs exclusivity to be encouraged to invest in the development necessary to bring these inventions to market (therefore meeting societal needs and serving the public good). Bayh-Dole has allowed that to happen.
Moreover, it was also pointed out during an open session that prior to Bayh-Dole clear title to technology was often difficult to establish, further complicating how IP was handled. This left industry uncertain as to who precisely held the rights to that IP and who had rights to grant a license. Bayh-Dole eliminated this confusion, opening the door for constructive utilization of IP from universities and federal labs.
John Frazier, past president of AUTM, noted in a concurrent San Francisco Chronicle article that university tech transfer was not only good for the country, but also for the communities surrounding universities. He went on to state that while many people may not understand what it means in their everyday lives, governors recognize that university spinoffs create high paying jobs. Bayh-Dole provides the basis for that to happen.
Sen. Bayh's and others' main point throughout the meeting was twofold: 1) Bayh-Dole is good for the economy and society at large, but 2) it is not sacrosanct—the AUTM community and those who utilize Bayh-Dole must remain vigilant in its defense, particularly on Capitol Hill, and not let these criticisms go unchallenged.
Against this backdrop, three reports were released during the conference, with each providing input to the current discussion. The AUTM Licensing Survey (2005) provides university licensing activity data, highlighting economic impacts associated with that licensing (e.g., startups), while the latest installment of the AUTM Better World Project provides concrete examples
of transferred technologies meeting important societal needs. Also, in recognition of the critical challenges to university licensing, a select group of universities issued a white paper outlining points to consider when licensing university technology. Each of these is highlighted below (with links).
According to the AUTM Licensing Survey, in 2005 over $42 billion was expended in R&D at U.S. academic institutions (67 percent from federal sources, 7 percent from industry); 4,932 new licenses were signed (with 28,349 current active licenses); 527 new products introduced into the market (with 3,641 new products introduced between 1998 and 2005); 628 new spinoffs (with 5,171 spinoffs since 1980). Further, the survey indicates that small businesses dominated total university licensing and that the majority of licenses were actually nonexclusive.
AUTM launched its Better World Project (www.betterworldproject.net/reports.cfm) in 2005 to "promote public understanding of how academic research and technology transfer have changed our way of life and made the world a better place." The latest installment focuses on startups spun off from U.S. and Canadian academic research—highlighting 25 successful startups that have "changed the world," as well an additional 100 innovations based on academic research that have made it to market. The examples cover the industry spectrum, with applications in bioscience, computer science, software development, education, electronics, material science, safety, health, environmental, pharmaceutical and medical fields.
Finally, the white paper, "In the Public Interest: Nine Points to Consider in Licensing University Technology", addresses some of the more critical opposing concerns in university tech transfer, e.g., the exclusive needs of industry versus the need for universities to use licensed technologies in continued research. While the authors acknowledge "there are circumstances in which universities may need to grant exclusive rights to their discoveries and inventions, they suggest structuring such agreements in ways that will permit the scientific community to conduct studies involving licensed technologies." As David Korn, Senior VP of the Association of American Medical Colleges, points out, "The guiding precept is that discoveries made at universities are made in the public interest, regardless of the source of research funds. We must never lose sight of the social contract that universities have with society at large."
Technology transfer, from both federal labs and universities, has indisputable economic and societal benefits. But neither is without its challenges, and in the university environment (and those federal labs that work closely with universities), any challenges to Bayh-Dole or other foundation legislation must be addressed directly. AUTM and its members are doing just that.
FLC members will want to follow this closely.
Gary can be reached at gkjones@federallabs.org.
