For Faculty and Staff

TECHNOLOGY TRANSFER AT US UNIVERSITIES: BACKGROUND SUMMARY

The Bayh-Dole Act (P.L. 96-517):

Enacted on December 12, 1980, the Bayh-Dole Act (P.L. 96-517, Patent and Trademark Act Amendments of 1980) created a uniform patent policy among the many federal agencies that fund research, enabling small businesses and non-profit organizations, including universities, to retain title to inventions made under federally-funded research programs. The Act is "perhaps the most inspired piece of legislation to be enacted in America over the past half-century," according to The Economist. "Innovation's Golden Goose," an opinion piece published in the Dec. 12, 2002 edition, the respected publication, states: "Together with amendments in 1984 and augmentation in 1986, this unlocked all the inventions and discoveries that had been made in laboratories throughout the United States with the help of taxpayers' money. More than anything, this single policy measure helped to reverse America's precipitous slide into industrial irrelevance."

The Results:
Since 1980, American universities have spun off more than 8,500 companies. According to the 2012 survey data by the Association of University Technology Managers (AUTM), in fiscal year 2012 alone, $36.8 billion of net product sales were generated and startup companies started by 70 academic institutions employed 15,741 full-time employees. The Bayh-Dole Act is good for our national economy and also good for state and local economies. The majority of startup companies born from university technologies are located in the university's home state. AUTM conducts annual surveys of their membership of more than 200 university and college technology transfer offices. AUTM reports "in the medical area alone, thanks to the research conducted at U.S. universities, and to technology transfer, over the past 30 years, 153 new FDA approved vaccines, drugs and/or new indications for existing drugs were discovered through research carried out in public sector research institutions." According to the former President of the NASDAQ Stock Market, an estimated 30 percent of its value is rooted in university-based, federally funded research results, which might never have been commercialized had it not been for the Bayh-Dole Act. A search of the US Patent and Trademark Office database for a historical summation of issued patents to HBCs is provided in Addendum A. It shows Howard University with 25 issued patents, MSU with one.

University Technology Transfer Offices:
University technology transfer offices are responsible for identifying, assessing, protecting and promoting university innovations and technologies to potential licensees, negotiating licensing agreements and managing the institution's portfolio of licenses and patents. Licensees-from startups to large companies-are responsible for commercializing the licensed technologies by integrating the technologies into products and overseeing the development, manufacture and marketing of those products. The returns on this investment are the products that benefit the public, drive economic growth and employment, generate state and federal tax revenues, and provide revenue to the university. Resulting university licensing income is invested in more research, rewarding university scientists and supporting the cycle of invention. Technology transfer efforts are pursued in concert with the research institutions' core values of sharing research results, materials and know-how for the betterment of the community and society. Thus, technology transfer is a main factor in a research university's public service mission.

Technology Transfer Cycle
Technology Transfer is not a linear process, as depicted in this version of the Technology Transfer Cycle. University innovations and the successful transfer to businesses will cycle added value back to the university, its faculty, the State and the public.

THE Technology Transfer Cycle

An inventor is a party who conceived (not just contributed to the reduction-to-practice) at least one claim to a patent. Generally, conception is "the complete performance of the mental part of the inventive act", and "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice." An idea is usually not "definite and permanent" or "complete" where changes result from experimentation. In this case, other individuals who contribute to the formation of the "definite and permanent" idea are co-inventors.

An inventor is:

• A person who conceives the subject matter of at least one claim of the patent.
• Two or more persons who collaborate to produce the invention through aggregate efforts.

An inventor is not:

• Someone whose only contribution is reducing an invention to practice by exercising ordinary skill in the art.
• A technician or other person who simply performs experiments, assembles the invention, or only performs analytical tests.
• The supervisor or department manager of the person who conceived the invention.
• Someone whose only contribution is an obvious element to the invention.
• Someone whose only contribution is participation in consultations about the invention before or after conception of the invention.
• A person who only conceives of the result to be obtained, but not the idea of how to achieve it.
• A person who only discovers the problem (unless they contributes to the solution).
• A person who merely provides a suggestion or improvement but who does not work to fit the suggestion or improvement into the invention.