Essential Aspects for Licensing of Federally Supported Subject Inventions
| Author | Elizabeth Rodriguez - Sean Solberg |
| Pages | 175-196 |
Paul Elihu Stern and Elizabeth D. Rodriguez1
With the enactment of the Bayh-Dole Act, the federal government provided industry easy
access to the vast expanse of technology that previously had been relatively inaccessible
from U.S. universities.2 Although there are some examples of university research that
made its way into the hands of companies for commercial development, most university
technology either remained within the connes of academia or became stuck in the com-
plexities of the federal structure.
3
In short, industry had a difcult time learning about the
technology or nding a means to obtain licenses. In many instances, companies had their
own research capabilities and were simply not interested in new methods, compositions
of matter, or other inventions that were made outside of their own laboratories. The mag-
nitude of companies’ research infrastructure has declined, and Bayh-Dole has eased the
hurdles to licensing federally funded inventions.4 Currently, universities are able to hold
patent rights for their inventions; they have become savvy marketers of technology, and
companies can easily search the university technology coffers for innovations through
1. Paul Elihu Stern is the Senior University Counsel for Intellectual Property and Research in the Ofce of the
General Counsel of the University of Florida. Elizabeth D. Rodriguez is the Senior Counsel for Research and
Intellectual Property in the Ofce of the General Counsel of the University of Massachusetts. This chapter reects
the personal views and thoughts of Stern and Rodriguez and is not to be construed as representing in any way
the views or advice of the University of Florida or the University of Massachusetts, respectively. The content is
solely for purposes of discussion and illustration and is not to be considered legal advice.
2. Bayh-Dole Act of 1980, Pub. L. No. 96-517 (Dec. 12, 1980) (codied at 35 U.S.C. § 200-212 and imple-
menting regulations 37 C.F.R. § 401.1–401.17.
3. H W. B, C G R, U T T:
E R 6 (1998).
4. R D. A L A. S, I. T. I F., U R
F: T U S I B F 3 (May 2011) (reporting that, today, universities per-
form 56% of all basic research, compared with 38% in 1960).
175
Chapter 9
Essential Aspects for Licensing of
Federally Supported Subject Inventions
the well-developed network of capable university technology transfer ofces (TTOs).5
Today, more than ever, universities are true centers for innovation and entrepreneurship.
6
Despite the dramatic growth of university technology transfer, the sizable number of
technologies that have been licensed to industry, and the ease with which so many uni-
versities interact with industry, the paramount purpose of universities in the United States
remains the pursuit of knowledge and education of students. The integrity of university
research is critical to maintaining a sound university research base upon which the tech-
nology transfer structure is built.7 While it may be tempting for universities to agree to
terms that are especially favorable to industry research sponsors or licensees in order to
attract additional funding, it is imperative to maintain the objectivity of university research
to avoid any appearance of impropriety in these public-private interactions.
8
Universities
should treat licensees of their technology consistently, whether it involves what might be
the next blockbuster pharmaceutical or the unique mechanical process that promises at
best to create a small lifestyle company.9
Licensing technologies from universities is not the same as licensing technologies from
companies. Universities do not compete with companies in manufacturing and selling. It
is critical that universities remain free to develop new technology, even technology that
might be licensed in the future to a new licensee and compete with the licensed tech-
nology. In addition, universities cannot take responsibility for knowing any particular
commercial eld to provide freedom to operate opinions or other assurances regarding
the competition for any particular technology. Recall that a patent holder’s right is not a
right to make, use, or sell products but, rather, the right to exclude others from making,
using, or selling patented inventions.10 The license agreement represents a divide between
invention and commercial development. Responsibility for the commercial development
and its success or failure rests with the licensee. The licensee must garner its own assur-
ance that the technology is worthy of commercialization and survey the market and the
competition to become comfortable enough to make the investments that are necessary
to bring a technology from the laboratory bench to the marketplace. Yet, despite these
5. The ease of identifying the technologies available for license is ever increasing. Massachusetts Technol-
ogy Portal, Mass. Techn. Transfer Center, http:// www .mattcenter .org /portal /about-portal .html (last visited
Apr. 23, 2014); Technologies Available for Licensing, Univ. of Fla., http:// technologylicensing .research .u .edu
/technologies (last visited Apr. 23, 2014); Available Technologies, U. M. A, http:// www .umass .edu /
research /available-technologies (last visited Apr. 23, 2014).
6. D’ C, T I E U: H E, I-
E F (Nov. 5, 2010).
7. M U I P P I (National Academies Press 2010).
8. Id. at 32–33.
9. I P I: N P C L U I P,
A’ U. T. M. (Mar. 6, 2007), http:// www .autm .net /Nine _Points _to _Consider1 .htm.
10. See 35 U.S.C. § 154(a)(1).
PAUL ELIHU STERN AND ELIZABETH D. RODRIGUEZ176
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