This paper reviews salient points of the Bayh-Dole Act and focuses on those provisions that have been particularly helpful in promoting university involvement in technology transfer. A discussion of the current practice of university technology transfer emphasizes provisions in university intellectual property policies that, with the act, serve to promote and provide incentives for faculty and institutional patenting and licensing activity. Training activities and programs available to university technology transfer professionals are summarized. Finally, statistics reflecting the growth and sophistication of university involvement in technology commercialization are provided.
The Bayh-Dole Act
The Bayh-Dole Act and its amendments provide the foundation on which current university technology transfer activity is based. As noted, the act was passed in 1980 (Public Law 96-517). It was amended in 1984 (Public Law 98-620). The following aspects of the legislation are notable:
- Bayh-Dole provisions apply to all inventions conceived or first introduced into practice as a result of a project funded either in whole or in part by the federal government.
- Universities must report each new invention to the sponsoring government agency within two months of disclosure of the invention to the university.
- The university must decide whether it wishes to retain title to the invention within two years of reporting the invention to the sponsoring agency. This time is shortened if a publication has triggered the one-year grace period for patent protection, as provided in the U.S. law. If this period has been triggered, the university must decide whether to retain title to the invention at least sixty days before the end of the grace period.
- Within one year of electing to retain title, the university must file a patent application for the invention. Within ten months of filing a U.S. patent application, the university must report to the government sponsor whether it wishes to file foreign applications. If the university fails to proceed on these fronts, the government may proceed with such filings on its own behalf.
- The federal government is given a nonexclusive, royalty-free, irrevocable license to use the invention to which the university retains title or have the invention used on its behalf.
- Any licensee holding an exclusive license for sales of products in the United States must substantially manufacture the product in the United States. This rule can be waived by the sponsoring agency if the university can show that a reasonable effort was made to find a company that would manufacture the product in the United States.
- Universities must give preference to small businesses in their licensing activities. Diligence is required, however: the small firm must be capable of properly developing the invention. A large company that has provided some