Bayh-Dole act and the Public Paid for the Invention: Who Owns It? T - - PowerPoint PPT Presentation

Bayh-Dole act and the Public Paid for the Invention: Who Owns It?

THE UNIVERSITY R&D MICROCOSMS

30 YEARS AFTER BD

• BD in 1970s as re-conceptualization of public

research as response to the rise of Japan

• BD acts in US, while more general reforms in

EU

• European Paradox: spread of TLO vs weak

patent activity

• Influence on the propensity of federal

laboratories to patent

• C(orporate)SOs still works better than

U(niversity)SOs

• Contribution of University-Level-Support

Mechanisms (ULSM) is depending on the local settings

30 YEARS AFTER BD: PRO AND CONS

• Pioneering character
• Promotion of

technology commercialization

• No decrement in basic

research

• Increase in start-up

activity

• Inefficiencies
• License delays
• Misaligned incentives
• Goal mismatch
• TLOS’S
• Social interests
• Entrepreneurship

inhibition

BD ACT AND HYPOTHETICAL SCENARIOS

1. The professor will retain the

• wnership, while university will

apply the wait-and-see attitude 2. The professor will commercialize the invention on his own (gray market)

• 1. Try to negotiate the position in the

second university by showing the

• utstanding results of previous one
• 2. With the BD act, the professor will

leave invention to separate entities! A professor wants to start her own company to commercialize an invention by using federal funding. She thinks that her invention is brilliant, whereas the university TLO thinks it is a dud. A famous professor invents widget X at University A. He later invents widget Y at University B. The two inventions are commercially useful only when practiced

• together. The professor is well connected

to a company that is interested in producing widget X-Y.

• TLO should provide an

administrative mechanism for ensuring compliance between BD and ownership

• TLOs are influenced by the

views of faculty and administration making this office an agent!

INHERENT DYNAMICS IN BD ACT

TLO side Inventor side

• Assumption that TLO intrinsically

better than inventors for attracting collaborators and venture capitalists.

• Inventor could decide alternative

ways such as private contracts.

knowledge on HIV

THE CASE STANFORD VS. ROCHE

• In 2011, the Supreme Court held that patented invention

vests first in the inventor, even if he is a researcher at a federally funded lab subject to the 1980 Bayh–Dole Act.

• Once upon a time…..
• Dr. Mark Holodniy

By means of own scientists

• knwoledge on PCR
• “hereby assign”

Ask for rights

CONSIDERATIONS FROM STANFORD VS. ROCHE

• Standford: Holodniy’s invention was funded in part by the federal

government and therefore BD should automatically vest ownership in Stanford.

• Roche: Holodniy provided a valid assignment to the company.
• Supreme court: inventor remains the ab initio owner of his federally

funded invention. Conclusions Is BD act always appropriate?  the BD act seems to not defend the inventor rights  the inventor ownership model seems to be more suitable

THE INVENTOR OWNERSHIP MODEL: AN EVOLUTION

Kenney and Patton (2011) , Does inventor ownership encourage university research-derived entrepreneurship? A six university comparison, Research Policy, 40:1100-1112 1: Inventor ownership universities have a greater number of spin-offs than university ownership universities. 2: Inventor ownership universities have a greater number of spin-offs than their status, as measured by rankings would suggest, but this is conditioned by research fields.

WHEN THE FIELD MATTERS…

3: Inventor ownership universities, on an R&D expenditure basis, are more efficient at spinning-

• ff firms than university ownership universities,

but this is conditioned by field. 4: Inventor ownership universities, on a per faculty basis, is more efficient at spinning-off firms than university ownership universities, but this is conditioned by field. 5: In inventor ownership systems a lower percentage of spin-offs licenses technology from the university, but this is conditioned by field.

THE CLASH OF CURRENT MODELS: BD ACT VS. INVENTORS OWNERSHIP THE “SWEDISH CASE”

The Professor Privilege: The inventor has the IPR on his own invention, and he can decide to make over these rights to university. In principle, it should provide university employees the necessary incentives to commercialize their inventions. Swedish Paradox: Although Sweden is a world leader in R&D investment relative to GDP, its growth lagged the average for OECD countries. Entrepreneurship vs. Commercialization: Although the US system is less conducive to entrepreneurship than the Swedish system if established firms have some advantage over faculty start-ups, on average, the probability of successful commercialization is somewhat higher in the United States.

A REVERSE TREND: SHIFTING “HIGHER UP”

THE IPR

Society Government University Inventor

• Enhanced technological transfer
• Social impact and improvement of

societal issues

• Positive impact on public opinion and

more investments in R&D

• Increased possibility of

commercialization of new ideas

• Possibility of integration between

academic environment and SMEs

“Many had insisted that it was better for me to patent the vaccine. I did not. It is my gift to all children of the world.”

Albert Bruce Sabin (1906-1993)

The Biorobotics Institute Clara Genna Ilario Imbinto Antonio Ranaudo Management Institute Stefania Manetti Chiara Oppi