by Gary Jones
FLC Washington, DC Representative
Greetings from D.C. On July 17, the House Committee on Science and Technology, Subcommittee on Technology and Innovation, chaired by David Wu, D-OR, held what appears to be the first in a series of hearings (at least two) on technology transfer, convening a general oversight hearing on Bayh-Dole.
As Chairman Wu noted in his opening remarks, Bayh-Dole was a response to economic conditions the U.S. faced 25 years ago, i.e., recession, declining productivity and increasing competition from abroad. Supporting university-based innovation and technology transfer to industry was an important step in meeting those challenges. He noted that this policy is still important today, but it is now time "to assess the impact of Bayh-Dole and how we can improve technology transfer from Federal investment in technology." To that end, this first hearing elicited university and industry input on Bayh-Dole. There were five witnesses providing testimony; two from industry (chemical and IT) and three from academia. They were asked to respond to the following general questions: 1) what has been the impact of Bayh-Dole on federally funded university research and technology transfer, 2) how has Bayh-Dole shaped university-industry collaboration, 3) what is the possible effect of the increasing globalization of research, 4) has Bayh-Dole influenced basic university research, academic collaboration and dissemination of knowledge — has it created any barriers, and 5) what changes in Bayh-Dole legislation, if any, may be appropriate as we look forward.
While these bear on the overall assessment of the current legislation, the top four feed directly into the last—which could have an impact on the tech transfer community going forward. Given space constraints, I point you to the submitted witness testimony and highlight some of their comments below—particularly concerning what they see as any challenges Bayh-Dole has created and their thoughts on proposed legislative fixes.
Not surprisingly, academic and industry opinions vary regarding the benefits of Bayh-Dole and its impact on university-industry relations. While acknowledging challenges to implementation, two of the three speakers from academia indicated that they felt Bayh-Dole had been successful in achieving its primary objective—to promote the utilization of inventions arising from federally funded research. One commented that they "believe that Bayh-Dole works well as intended …" and that it has "encouraged the formation of productive university-industry partnerships…" Another noted that "by almost any objective standard, the Bayh-Dole Act has been an exceptional success." Several of the speakers point to the statistics created by AUTM on licenses, startups and new products introduced since 1980 as evidence to that effect.
The two industry witnesses had quite different impressions on the efficacy of Bayh-Dole. Both speakers stated that while the Act encouraged technology transfer, its focus on intellectual property (IP), in the words of one, had created a "contentious climate … which discourages research collaboration between industry and U.S. universities." One gave the Act "a poor to failing grade" concerning its goal of promoting collaboration. In the industry witness' opinion, Bayh-Dole had focused attention away from collaboration and toward ownership of IP, leading to "frustration, mistrust and damaged relationships" and what he termed the "silent breaking," where industry decides it's too costly to work with universities and they "walk away." Both speakers commented on the fact that foreign universities do not have the IP expectations created by Bayh-Dole, causing industry to look outside the U.S. for university collaborations.
The issue of Bayh-Dole and university-industry collaborations implies that the university research is supported in some way by federal funding in the first place. This was a significant discussion point for both industry panelists, in questioning what evel of federal funding is needed to trigger Bayh-Dole rights by universities. As one stated, "U.S. universities have taken the position that virtually all privately sponsored research is at least 'touched' in some way by federal funds and, therefore, subject to Bayh-Dole."
The third academic took somewhat of a middle-ground position, noting that the "effect of this surge in university patenting (facilitated by Bayh-Dole) has been both good and bad." The Act has, in fact, encouraged the introduction of new products into the marketplace, particularly in the biomedical field. On the other hand, he felt that universities often have a "short-run" bottom line perspective on licensing priorities, which in industries like IT can hinder rather than promote the dissemination of knowledge and product introduction. He highlighted the point made by others, that Bayh-Dole's impacts are industryspecific; often considered more positive in the bio field where exclusivity is key, while less supportive for IT where exclusivity can interfere with technology development. Regarding "what would they change," the comments ranged from leaving the language as is to suggested minor tweaks. From the academic side, the suggestions were aimed more at improving existing oversight actions. One noted that there was "a glaring weakness in the absence of effective Executive Branch oversight," indicating that implementation of Bayh-Dole was "increasingly uneven across federal agencies" and that it might be time to move this responsibility from the Department of Commerce to the Office of Science and Technology Policy." Another encouraged greater attention to the oversight function regarding the provision to limit exclusive licensing and exercising march-in rights (if ever necessary) — but no need to change the Act.
From industry, the main concern was when Bayh-Dole should apply. As one put it, there is a need to add language that clarifies congressional intent "relative to university research supported with private rather than government funding … [particularly] clarification of circumstances under which private and federal funding of related research can exist simultaneously without Bayh-Dole rights and obligations being triggered."
Overall, an interesting discussion with varying perspectives on the impact of Bayh-Dole on technology transfer. One thought that struck me as I listened to the testimony was that even though the stated purpose was to get university and industry views on Bayh-Dole, the federal government perspective was still noticeably absent. The federal agencies will no doubt have their chance to testify. As Chairman Wu noted in his opening remarks, "This will be our first hearing on technology transfer issues … [we] will hold a subsequent hearing on Stevenson-Wydler." Stay tuned.
The hearing charter and witnesses' written testimony can be found on the House Science and Technology web site (http://science.house.gov/subcommittee/tech.aspx).
Gary can be reached at gkjones@federallabs.org.
