Managing University Intellectual Property in the Public Interest (2011) / Chapter Skim
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1 The Growth of University Technology Transfer
1 The Growth of University Technology Transfer
Pages 13-28
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From page 13... ...
together with a number of important changes in the patent system2 has stimulated extensive patenting and licensing activity among research universities in the United States. Although a substantial amount of research has centered on this means of transferring technology developed by university scientists and engineers, there is a lack of consensus about the intended and unintended effects of university management of technology transfer and the lessons learned from more than three decades of experience.
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From page 14... ...
alumni found that an estimated 6,900 MIT alumni companies with worldwide sales of approximately $164 billion are located in Massachusetts alone and represent 26 percent of the sales of all Massachusetts companies, and 4,100 MIT alumni-founded firms are based in California and generate an estimated $134 billion in worldwide sales. Kauffman Foundation.
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From page 15... ...
First, patenting and licensing activities by universities are easier to observe and measure than several of the other mechanisms, for example, movement of students and consulting arrangements. Second, in contrast with scholarly publications and most professional interactions, patenting and licensing activities are characterized by readily apparent economic value or distinct potential revenue streams for businesses, universities, and faculty inventors.
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From page 16... ...
With agencies disagreeing on a uniform technology transfer policy, no simple consistent mechanism existed for universities to move academic research to the marketplace. Agencies varied widely in whether they allowed university ownership of inventions and in the speed with which they handled requests to transfer title to inventions.
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From page 17... ...
The Bayh-Dole Act was intended to minimize the likelihood that government-funded inventions would languish for lack of incentives or government capacity to license them to private firms that could develop them into products and services. It also aimed to establish a more uniform policy that would reduce the transaction costs to institutions, give them incentives to acquire and license rights, and limit the risks to firms of investing in and commercializing inventions developed with federal funds.11 In giving universities the right to retain title, the government imposed a number of balancing conditions and limitations that do not apply to patent holders more generally and that would shape implementation of this ownership scheme.
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From page 18... ...
1978. Government patent policy.
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Participation in the AUTM survey varies year by year, and it is possible that non-participation in a particular year is not random (e.g., a university choosing not to respond to the survey in a year of weak licensing activity)
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From page 20... ...
Naturally, the distribution differed by institution, but six universities with medical schools and one institution without a medical school reported that the life sciences accounted for 100 percent of their licenses.24 In an ongoing study of all of the invention disclosures reported to technology transfer offices in the University of California system (12 universities and laboratories in all) during the five-year period July 1, 1992, to June 30, 1997, Brian Wright and colleagues found that the life sciences and medical and pharmaceutical categories accounted for nearly 75 percent of the invention disclosures with a field identification, followed by electronics, software, and communication (10 to 12 percent combined)
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From page 21... ...
; patent grants ranged from 0 to 331 (mean 26.3, median 18.5) ; licenses from zero to 231; and licensing income from $6,000 to $136 million.26 Licensing income can be impressive for some institutions, and this phenomenon has attracted attention and raised some controversy; some have expressed concern that the prospect of receiving income from licenses has shifted the emphasis of technology transfer activity away from careful consideration of broad dissemination and impacts on overall social welfare, an issue further explored in Chapter 2.
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From page 22... ...
Some institutions have been reluctant to report single-year windfall events, and a few major research institutions do not participate in the AUTM survey at all. Two decades of data collected from institutions by AUTM have shown that only 0.5 percent of license agreements generate more than $1 million in royalty income, suggesting that on average an institution would need at least 200 active license agreements to have one that generated more than $1 million.
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From page 23... ...
Examples include CISCO, Sun Microsystems, Rambus, Yahoo! , and VMWare.32 An analysis of the AUTM licensing activity surveys of 1995-2004 indicates that the annual income generated by licensing university inventions was 1.7 percent of total research expenditures in 1995 and 2.9 percent in 2004.33 A 2006 the universities.
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From page 24... ...
In part, this difference reflects the fact that a substantial number of clinical faculty members are primarily engaged in clinical work."36 Moreover, technology licensing income is highly skewed among institutions; a small number of technology transfer operations generate substantial net income, but for a very large number the costs incurred (e.g., salaries, legal fees) are a net drain on university resources.37 Although there are notable exceptions (e.g., discoveries instrumental to the development of new blockbuster drugs and royalty streams or other payments to universities)
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From page 25... ...
Despite the evidence that patenting and licensing are important modes of commercializing the results of academic scientific research,42 there has been growing concern about relying solely on invention disclosures, patent applications, patents granted, and licenses as measures of the commercialization of university research, which "could lead to a systematic underestimation of commercialization and innovation emanating from university research."43 Other modes of technology transfer are far less easily quantified, except in laborious studies such as that sponsored by the Kauffman Foundation of MIT alumni.44 Moreover, some especially effective mechanisms of technology transfer -- for example, the flow of students and trainees into industry and faculty consulting agreements -- are not reported at all. Finally, the different mechanisms of technology transfer (publications, conferences/meetings, informal interactions, and consulting)
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2009. Why university inventions rarely produce income?
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From page 27... ...
innovation system today is much more collaborative than it was several decades ago and the federal government is playing a much more supportive and important role in innovation, total industry spending is now twice that of the federal government. Chapter 2 examines issues that have dominated discussion of the influence of IP-based university technology transfers on university research norms and quality since the current system of institutional ownership and centrally administered licensing became the norm.
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