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Bayh-Dole Still Alive and Kicking — But Is It Producing the Intended Results?

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Dov Greenbaum
Fellow, Center for Law and the Biosciences
Stanford University
NAME: Dov Greenbaum
 
POSITION: Fellow, Center for Law and the Biosciences, Stanford University, 2007-present
 
BACKGROUND: Fellow, Branco Weiss Society in Science Fellowship, Swiss Federal Institute of Technology, 2005-2008; JD, University of California-Berkeley, 2007; PhD, bioinformatics, 2004; and MPhil, genetics, 2002, Yale University
 
Is the Bayh-Dole Act still working? The surge in academic technology transfer at US universities and the concomitant biotechnology boom that occurred since the landmark legislation passed in the early 1980s seem to indicate that it is.
 
But according to IP law scholar Dov Greenbaum, those events may not be solely attributable to the Bayh-Dole Act. In fact, Greenbaum believes that Bayh-Dole’s primary lasting legacy may become the myriad bureaucratic and inefficient technology-transfer offices it has spawned at hundreds of small US universities and research institutions.
 
Greenbaum’s claims include that smaller universities might benefit by adopting a regional, rather than individual, tech-transfer approach; that university technology commercialization might be improved if faculty inventors, and not the university, retain the rights to their own innovations; and that developing nations seeking to boost their economies through science and innovation needn’t necessarily adopt a Bayh-Dole framework to encourage and protect innovation.
 
Greenbaum, who has written a pair of unpublished papers outlining his argument, presented some of his findings and opinions last week at the 2008 Intellectual Property Scholars Conference at Stanford Law School.
 
This week, Greenbaum recapped some of the key aspects of his presentation, “Hochschullehrerprivileg: A Modern Incarnation of the Professor’s Privilege to Promote University-to-Industry Technology Transfer,” in an interview with BTW.
 

 
What was your impetus for writing this paper? What concerned you about the current state of technology transfer?
 
When I was at law school at UC-Berkeley, I was at the Samuelson Law, Technology & Public Policy Clinic. We were providing pro bono consulting to a developing nation relating to its patent act. I’m not at liberty to say which nation it was, but we were helping them rework their patent system. Something that kept coming up was that universities thought, ‘Hey, we’ve got all this technology – we can make money off it, license it, and fund our institution.’ I became interested in trying to think of ways that developing nations can transfer technologies.
 
Thinking about that I became somewhat disillusioned with the Bayh-Dole Act. It sort of came to me piecemeal, but in the end it is a position that I took after several iterations.
 
Did your experience with this developing country in particular or your research on other developing nations in general lead you to believe that most of them are interested in adopting a Bayh-Dole type of framework?
 
I think so. I think a lot of people look at the supposed results of Bayh-Dole, look at the biotech industry in the US, and say, ‘Hey, we can do it, too.’
 
There are large countries – I believe China, Japan, and India … are at least discussing [adopting] something like Bayh-Dole. For a lot of them it means where intellectual property rights were initially granted to the institution, or granted to the individual; or there weren’t any sort of real rules – people are now saying, ‘Let’s do what the US has done: grant them to the institution.’
 
Additionally, a lot of countries – developing nations, in particular – see science and innovation as a way to boost their economy, as opposed to a service economy, or manufacturing economy. And in developing nations, science and innovation tends to occur in universities. So this sort of the next step – how do we get these technologies out to grow our economies?
 
Do you believe that science and innovation are keys to boosting a nation’s economy, but that a Bayh-Dole framework is not necessarily the right way to do it?
 
One of the problems with IP in general is that there isn’t sort of a ‘one-size-fits-all’ rule, even within one particular nation. IP has to be sort of customized. In the US, the overall law is static, but the US Patent and Trademark Office and the judiciary sort of mold it based on the technology.
 
These universities are producing innovations, and are producing things that can be patented and licensed, and would [benefit] both the university and the country. Local innovation is always good for the economy.
 
One of the main themes through your papers is that an increase in university commercialization in the US, while coinciding with Bayh-Dole, can not be attributed to it.
 
I think Bayh-Dole is probably a component of it. Granted, if we had the mess we had before Bayh-Dole, we potentially wouldn’t be where we are. But I think that Bayh-Dole is given too much credit. I think others share this opinion. Bayh-Dole is a component of the success of biotech in the US, but [there were] a number of other things – cultural, environmental, and scientific – that were in the making and that sort of propelled the industry before Bayh-Dole came along.
 
‘Propelled the industry’ in that it accelerated university technology transfer in general, or triggered a boom in university biotech innovation?
 
I think people see biotech first and foremost – at least I do, but it’s my bias because that’s my background. It’s hard to say what would have happened had there not been Bayh-Dole. I think that it could have worked with a different sort of policy.
 
I definitely think that now that we are where we are, it doesn’t need a Bayh-Dole system to work.
 
Some of the alternative scenarios that you propose include allowing professors to retain rights to IP protecting discoveries made in their laboratories, and encouraging universities to work with regional tech-transfer offices.
 
Yes. Initially, I thought that when you look around, so many universities have technology transfer offices, but don’t have the resources to properly fund them or properly staff them. And often their missions are not clear – they make mistakes in licensing, and are ineffective, or worse.
 
I saw all these universities putting together technology transfer offices because it was hard to get these regional offices off the ground. There were some efforts in this area. Regional offices can use economies of scale; take advantage of better staffing and funding; have repeat customers; and put together licensing deals with multiple patents.
 
But at the end of the day, I found that one of the biggest impedances to creating regional tech-transfer offices was that universities weren’t willing to share. Or maybe it’s better to say that you have to deal with so many people when you’re trying to get two radically different universities to come together and cooperate. In this sense, what prompted Bayh-Dole to grant IP rights to universities 25 or 30 years ago, is not the case today. Twenty-five or 30 years ago no one would have thought that professors would be pro-patenting, or that there would be this culture of patenting. It made sense at that time to give the rights to universities, and they would have the infrastructure, ability, and motivation to go and patent and put it out to the world. But today I think that motivation exists within the university with many of the professors themselves. And even more so, I think that granting IP rights to universities may serve as somewhat of a disincentive to academics to put out their research. Potentially you would have a greater incentive for someone to follow their innovations along if they knew they might get a bigger chunk of the return, or knew they could direct it more.
 
I think there is data out there that suggest that innovations more closely tied to the innovator are more likely to succeed than those where the innovator is no longer involved. I think regional offices might work much better than these individual little pieces that are created by universities creating their own tech-transfer offices. And there are many reasons why universities do this. You’ve got local pressure from the administration; pressure from local officials that think [their region] can be the next Silicon [Valley], or something like that. And you’ve got pressure from researchers who see their colleagues doing well. There is no reason to think that professors are immune to this. They don’t live in an ivory tower. They live in reality. They see someone doing well, and they also want to do well.
 
Supporters of tech-transfer offices might argue that the majority of professors do not have the business savvy to successfully commercialize their inventions, and that’s where the tech-transfer offices come in.
 
Sure, and I’m all for tech-transfer offices; I just think they should be disassociated from the university. If I was an academic, and I wanted to patent something, and it was a choice between doing it on my own and going to the tech-transfer office down the street, or in the region where I could talk with them on the phone or connect on the internet just as easily; and all my colleagues are doing that, then there is no reason I wouldn’t just go there.
 
I think there is a need for the tech-transfer office because most academics can’t do this on their own. I’d like to disassociate the offices from the university, and if you grant IP rights to the university, the logistics don’t work. But if you grant the IP rights to the inventor, I think it could work.
 
Are there university tech-transfer offices in the US that are doing their job well?
 
Yes, I think places like [the University of California at] Berkeley and Stanford [University] are doing it very well. UC-Berkeley has been pushing for social consciousness in its licensing, and that takes into account a lot of the issues. I think there is a place for a university tech-transfer office. The major institutions could do well with a tech-transfer office and have it tied to the institution. The problem is when every institution wants one and creates one. The UC system, Stanford, Columbia, MIT, Harvard, [the Wisconsin Alumni Research Foundation] – the major players – do very well, partially because they’re well-established, they’ve made their mistakes, and they know what they’re doing; and partially because they are well-funded, and have innovations that are providing funding. Those are institutions where it works, and this comes back to the idea of there not being one size that fits all. Where it works, it works; but where it doesn’t, it really doesn’t.
 
Have you identified any other countries that are using models that might serve as an example to the US?
 
I think the US is probably entrenched in this system. It’s been a quarter of a century or more. In some respects you could contractually do this. Nothing is stopping universities from contractually saying, ‘The IP rights that have been granted to us, we will grant to you if you innovate.’ It doesn’t have to be legislatively done.
 
I’m not sure I could point to any one nation that is doing it better or right. I do think that there are components that each individual nation has that clustered together might make an optimal system. But again, even this system would definitely have to be tweaked for every country, because every country is different, and has its own culture, its own environment, venture capital environment, academic culture. You can look at something and decide you want to model yourself after it, but at the end of the day each country has to look internally and decide what is optimal for it.

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