Restrictions on inventor mobility contradict stated goals of Bayh Dole

[Brenda M. "Preserving the Fruits of Labor: Impediments to University Inventor Mobility," Tennessee Law Review 89, no. 1 (Fall 2021): 1-66 heinonline gdi-tm]

This subsection describes how overly-broad limits on inventor mobility may be inconsistent with the legislative and financial underpinnings of universities, as well as their reputational aims. In terms of the legislative foundations of academic research policies, restricting inventor involvement in commercialization seems to contradict the main objectives of the Bayh-Dole Act, which will be described below.204 In addition, government funding of universities may affect how the public considers the role of universities in developing technology to advance social welfare.205 Further, unduly restricting inventor participation in development would seem to undermine the missions that universities strive to advance as well as their historical foundations.

Legislative Underpinnings

In 1980, Congress passed the Bayh-Dole Act largely in response to concerns about a lull in productivity in the United States as well as increasing international economic competition.207The Bayh-Dole Act has been the subject of both extensive praise and criticism.208 The primary goal of the highly-controversial Act was to encourage commercialization.209 In practice, Bayh-Dole moved the emphasis from the costs of invention to the costs of developing an invention into a product.210The Act permits academic institutions to obtain patents on inventions resulting from research that wasfunded by the federal government provided certain requirements are met, such as encouraging commercial development. 211 Legislators reasoned that enabling universities to retain ownership of inventions would provide a way for universities to attract firms with the resources to develop inventions and encourage them to make the necessary investments to bring inventions into the marketplace.212 Thus, the Bayh-Dole Act attempted to increase the likelihood of realizing federal research investments by encouraging commercialization of inventions.213

Whether the Act has effectively promoted commercialization has been the subject of debate.214 One prominent example questioning the necessity of university patents for development involves the previously-discussed discovery ofrecombinant DNA by Stanley Cohen and Herbert Boyer. 215 After. the inventors applied for patent protection, assignee Stanford entered into nonexclusive licenses with over 400 fums.216 Because a nonexclusive license would not confer an advantage over the competition, some have suggested that perhaps university patenting is not always necessary to encourage commercialization. 217 However, nonexclusive licensing can still support innovation, as a university could determine that it is simply more profitable to license technology broadly rather than exclusively.21s The revenue from nonexclusive licensing could then be used to support further university research, ultimately resulting in' increased innovation gains.

Many commentators have also lamented that the Bayh-Dole Act affected scientific norms in a negative way.219 As industry funding of university research and partnerships with universities thrived, a greater emphasis on secrecy and publication delays sometimes followed.220 Academic institutions and inventors began to reject the Mertonian norms of sharing and openness as they prioritized seeking patent protection for inventions.221 Examples of sharing affected by these changing priorities included not only data and research results but also research materials and tools. 222 Although the effects of increased patenting on academic culture have been fiercely contested,· some scholars have suggested that academic science was already trending toward increased competition, secrecy, and consideration of financial incentives long before Bayh-Dole was enacted.223

Encouraging university inventor engagement in development aligns with the main goals of Bayh-Dole in promoting the dissemination of new technologies. 224 At least two surveys have indicated that most university research falls within the definition of basic research, concluding that over 80% of licensed university inventions require further development. 225 In the precursor legislation to the Bayh-Dole Act, numerous experts testified before the Senate Judiciary Committee that inventor involvement is "absolutely essential" when inventions are in "the embryonic stage of development." 226 The special position of universities in enhancing access to faculty inventors and promoting the transfer of tacit knowledge also supported the adoption of the Act. 227 However, compelling financial incentives might dissuade universities from sharing technology, potentially leading academic institutions to reject traditional academic norms that would ordinarily encourage inventor mobility.