Creative Approaches for Transforming Research Into Innovation

In recent years, there has been extensive discussion in the tech transfer and entrepreneurial communities about bridging the gap between the universities and other research institutions that are generating new research and the entrepreneurial and commercial interests that might take that research and develop new products. As one commentator has said, a key challenge is that invention does not necessarily lead to innovation. In June, the House Science Committee held a hearing on the implications of the Bayh-Dole Act on this situation: “Best Practices in Transforming Research into Innovation: Creative Approaches to the Bayh-Dole Act.” As discussed in more detail below, at the hearing, witnesses discussed some of the new initiatives in tech transfer offices, such as creating accelerators, finding gap funding and encouraging entrepreneurship by faculty and students. Other ideas included creating standard license agreements that simplify negotiations and the cost of licensing. Whether IP lawyers represent universities and research institutions, inventors, entrepreneurs or funders, they need to be aware of the issues, developments and opportunities in the tech transfer ecosystem as they counsel and advise clients in this ecosystem.

For more than 30 years, the Bayh-Dole Act has enabled America’s universities to retain ownership of federally funded research — research providing the backbone for advancements in medical, energy and many other industry-setting technologies. Enacted on December 12, 1980, the Bayh-Dole Act provides a uniform policy that allows universities and other nonprofit organizations — not the government — to control the intellectual property rights to inventions developed with federal funding. The act encourages universities to collaborate with commercial entities to promote the utilization of inventions created with federal funding, requires universities to file patent applications for inventions they elect to retain, and grants the government non-exclusive licenses to practice the patents throughout the world. One example of the impact of Bayh-Dole is its impact on the biotechnology industry. According to Dr. Todd Sherer, president of the Association of University Technology Managers (AUTM), the “bioscience sector represents an employment impact of 8 million jobs, and 76 percent of biotech companies have a license from a university.”