• Technology Innovation and Development: Using the Bayh-Dole Act to Advance Development Goals
  By Pamela Passman, JD, Betsy Brady, JD, and Bill Guidera, JD
  

• The Bayh-Dole Act at Twenty-Five Years: Looking Back, Taking Stock, Acting for the Future
  By Michael J. Remington, JD

• Losing Patent Rights for Failing to Comply with the Bayh-Dole Act: The Implications of Campbell Plastics on Federally Funded University Research
  By Scott D. Locke, JD, and Eric W. Guttag, JD

• Letter to the Editor

Editors Preface

Twenty-five years ago, Congress enacted the Patent and Trademark Law Amendments of 1980 (Public Law 96-517). Further amendments were included in Public Law 98-620 that was enacted into law in 1984. Commonly known as the Bayh-Dole Act in recognition of its two lead sponsors in the U.S. Senate, Birch Bayh (D-IN) and Bob Dole (R-KS), this act has been hailed as “possibly the most inspired piece of legislation to be enacted in America over the past half-century.” (1) The Bayh-Dole Act has been credited with unlocking federally funded inventions and discoveries and providing platform technologies that have fueled our nation’s economic growth.

In this issue of the AUTM Journal, our contributing authors reflect on the Bayh-Dole Act twenty-five years after its enactment. Those of us in the university technology transfer community are well-aware of the impact that the Bayh-Dole Act has had upon the growth and development of our profession. The articles that follow will be of interest to our readership as the authors discuss the Bayh-Dole Act from global, political, and legal perspectives.

The first article, “Technology Innovation and Development: Using the Bayh-Dole Act to Advance Development Goals,” was written by Pamela Passman, JD, Betsy Brady, JD, and Bill Guidera, JD, all of whom are members of Microsoft Corp.’s Legal and Corporate Affairs Department. These authors state that the “Bayh-Dole Act has been remarkably successful in promoting the transfer of technology from federally funded research labs to the private sector,” and they propose that the United States should undertake initiatives to assist developing countries in utilizing components of our nation’s technology transfer system.

Passman and her co-authors provide a brief but thorough description of our nation’s experience of the Bayh-Dole Act and its effects on technology transfer and economic growth. They then describe technology development policies in other nations and provide examples of the adoption by other developed nations of policies similar to those contained in the language of the Bayh-Dole Act. The authors express curiosity as to why more attention has not been paid to Bayh-Dole-type policies in developing economies and provide possible explanations. They conclude their article with recommendations for the United States government and universities that encourage specific outreach efforts in developing countries.

The second article, “The Bayh-Dole Act at Twenty-Five Years: Looking Back, Taking Stock, and Acting for the Future,” was written by Michael J. Remington, JD, a partner in the Washington, DC, office of Drinker Biddle & Reath LLP, where he represents the Wisconsin Alumni Research Foundation among other clients. Remington’s perspective is a political one, and his article is not only a celebration of the successes of the Bayh-Dole Act over the past 25 years, but also a call to action to defend the act against current and future challenges.

The author contends that the Bayh-Dole Act has been a success but notes that it is subjected to review every five years by the comptroller general of the United States, it falls within the purview of congressional oversight and may be amended at any time, and it is subject to the court of public opinion. Remington then catalogs current challenges to the Bayh-Dole Act including decreases in federal funding of scientific research, concerns about the efficacy and quality of the U.S. patent system, requests that the federal government exercise march-in rights, attempts by federal agencies to avoid the provisions of the Bayh-Dole Act, creation of controversy over common law experimental use and research exemptions, and the ever-present possibility of legislative reform. The author also reviews challenges to the Bayh-Dole Act inherent in pricing proposals for drugs that are being presented in Congress as well as public administration proposals for modifications to the act. Remington concludes with a call to action: “After twenty- five years, it is time for the proponents to step forward and assist in a realistic appraisal of the act.”

The third article, “Losing Patent Rights for Failing to Comply with the Bayh-Dole Act: The Implications of Campbell Plastics on Federally Funded University Research,” was written by Scott D. Locke, JD, a partner with Kalow & Springut LLP, in New York, and Eric W. Guttag, a partner with Jagtiani + Guttag, Fairfax, Virginia. Locke and Guttag describe the Bayh-Dole Act as a “two-edged sword.” As they discuss, the Bayh-Dole Act allows universities and other recipients of federal funding to retain title to patent rights created during the conduct of federally funded research, but it also provides means whereby the federal government can require the funding recipients to forfeit their patent rights if they do not fulfill the obligations detailed in the act.

Locke and Guttag provide a framework for their discussion of Campbell Plastics by first reviewing for the recipients of federal funds their obligations under the Bayh-Dole Act. According to the authors, prior to Campbell Plastics, the risk of losing patent rights for failure to comply with these obligations was perhaps believed to pose only a theoretical threat. In the analysis of Campbell Plastics that follows this statement, Locke and Guttag provide ample evidence that such a belief is no longer justified. In the conclusion of their article, they provide recommendations for universities and other federally funded entities that desire to ensure compliance with the provisions of the Bayh-Dole Act.

This issue of the AUTM Journal concludes with a letter to the editors from Christopher T. Hill, PhD, PE, professor of public policy and technology, School of Public Policy, George Mason University and former president, George Mason Intellectual Properties Inc. Hill comments on the set of articles on university-based startups that was presented in the Fall 2004 issue of the AUTM Journal and identifies a key factor that was missing from all of the articles. According to Hill, a fundamental issue is whether or not the nature of the technology itself, in combination with the markets it is expected to serve, conditions whether a startup makes sense. Hill expands upon this issue, and we commend his comments to your attention.

The editors are grateful to the authors of these articles and letter for their willingness to share their thoughts and concepts with the readers of the AUTM Journal and devoting the time and energy necessary to produce these articles and work through the editing process prior to publication. The members of the Editorial Advisory Board also are deserving of gratitude for assisting in the selection of abstracts, and then, carefully reviewing and commenting upon various draft versions of these articles. Thanks also to the AUTM Journal Managing Editor Lisa Richter and her colleagues at The Sherwood Group Inc. for their efforts in making this an outstanding publication.

We believe that you will find this edition of the AUTM Journal useful and informative. Planning for the second 2005 issue of the AUTM Journal is already under way. We trust that our readers will join us in looking forward to this upcoming issue that will focus on “Licensing Success Stories.”

The AUTM Journal’s editors and Editorial Advisory Board appreciate and solicit suggestions and comments regarding the AUTM Journal. Please send your comments to us via e-mail at info@autm.net.

I also want to take this opportunity to thank everyone who has contributed to the successes of the AUTM Journal over the past few years as I near the end of my term as editor. We had a very special foundation upon which to build, and you all deserve to be very proud of what we have created. It has been a delight to work with all of you, and I am very grateful for your efforts and contributions. Effective July 1, 2005, Kirsten Leute of Stanford University will become editor of the AUTM Journal, and I wish Kirsten all the best as she continues to enhance and improve this publication for our readership.

Thank you.
Leona C. Fitzmaurice, Ph.D.
Editor

(1) “Innovation’s Golden Goose,” The Economist, Dec. 14, 2002,3.