Team A Pontedera, 23/01/2015 Ali, Anand, Giuseppe, Yasmin 1 2015 - - PowerPoint PPT Presentation
Summary of the Article Reconsidering the Bayh -Dole Act and the Current University Invention Ownership Model Martin Kenney, Donald Patton 2009 Research Policy, 38(9): 1407 - 1422. Team A Pontedera, 23/01/2015 Ali, Anand, Giuseppe,
Summary of the Article
Martin Kenney, Donald Patton 2009 Research Policy, 38(9): 1407 - 1422.
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Pontedera, 23/01/2015
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Shuzo Saito – Nippon Telegraph and Telephone Fumitada Itakura – Nagoya University
Dane Janus Friis Swede Niklas Zennström
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“provided U.S. universities with the right to commercialize employees’ inventions made while engaged in government- funded research”
“In the name of providing the fruits of university inventions to society in an efficient, effective, and socially optimal manner, Congress designed the BD Act to allow federal contractors including universities to claim title to inventions made as a result of federally funded research. The public policy objective was to incent the transfer of the benefits
federal funded research to society.”
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By 1978, Government owned title to 28,000 patents and had licensed fewer than 4% of them (Included royalty-free licenses) Professor were licensing his own inventions
Source: «The Opportunity and the Challenge: You own the technology. So now what?” Ashley J. Stevens, D.Phil Associate Director; Boston University, 2006
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Sources: David C. Mowery;Bhaven N. Sampat, Journal of Technology Transfer, 2005 - Association of University Technology Managers
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Paper suggest two alternative, vest ownership with inventor, free to contract with university TLO’s or other entities, All invention should be publically available or licensed through non exclusively
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The academic writings on TLOs have been theoretically confused: Markman, 2004: “TLO is an inventor’s agent” Kenney, Patton 2009: “An excellent idea, but in the current situation, an impossible formulation because the inventor has no contractual authority over the TLO” Jensen, Thursby (2001): “TLO as an agent of both the inventor and the university” Kenney, Patton 2009: “Contradictory situation. TLO is an agent of the university, although for success it depends upon the inventor’s knowledge and cooperation. Oddly, the researchers are also university agents”
TLO Inventor Accusation IO Model WO Model Conclusion Universities have a long history of generating inventions with commercial value, which are used by industry and TLOs dedicated to commercializing inventions have become commonplace at research universities, as suggested by the patent literature, demonstrates how university TLOs need different procedures, methods, and goals for differing industries
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What TLO exactly do? Office under the administrator responsible for research (University); After BD:
resources to market and manage the invention, and in return negotiate a license contract with an outside firm;
inventor; When the inventor forms a startup, the inventor pays an initial fixed fee to the university for use of the invention and royalties which are contingent upon successful commercialization
The financial returns from TLOs vary significantly, but the most successful have gross returns of between $20 million and $60 million, while most have returns under $5 million. There are outliers such as NYU, which received $197 million. TLO Inventor Accusation IO Model WO Model Conclusion
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Case Study 1: TLO in development of Electronics and Software Sector
NOT HAVING UNIVERSITY LICENSE
Sun Microsystem (Stanford); Yahoo (Stanford); Netscape (University of Illinois)
HAVING UNIVERSITY LICENSE
Google (Stanford); Lycos (CMU); Cisco (Stanford)
The significance of university patents in software and electronics in terms of facilitating technology transfer is dubious (Jaffe and Lerner, 2004).
TLO Inventor Accusation IO Model WO Model Conclusion Case Study 2: TLO in development of Biological Sciences
PUBLIC DOMAIN Monoclonal Antibodes (MABs) - 1975 Georges Köhler/César Milstein (Cambridge) (Hybritech and other MABs-based firms)
General Purpose technologies such as C-B and MABs contributed to an efflorescence of entrepreneurship, but patenting had no impact on their adoption.
UNIVERSITY OWNED-PATENT Cohen-Boyer (C-B) patent – 1980s ($255 million in Revenue For Stanford and University of California)
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Case Study 3: TLO as a Negative Impact
Develpoment of Stem Cell Technology at University of Madison
Foundation)
reserachers.
inventions using this technology.
It seems that the goal of the TLO was more income- based than technology diffusion
TLO Inventor Accusation IO Model WO Model Conclusion
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Is it useful?
Thomas Hellman (2007): assumes that the TLO, acting on behalf of the university owning the patent, has knowledge superior to that of the inventor on how the invention may be used and by which firms. Kenney, Patton (2009): are we sure about that? Who has more knowledge?: The commercial entity, because it operates in specific business areas, almost invariably has a better understanding of the value of the invention than does the TLO. Asymmetry of Information and Monetary gain: if inventor has ownership vs TLO has more experience? If TLO has ownership vs. inventor has more exploitation skills? Bureaucracy/Politic: decisions to patent may not be made purely on merit (i.e. Patenting to retain Professors with large federal grants); promoting a particular person Complicate or retard commercialization s badly managed TLO with an intention of only protecting invention can impede commercialization TLO Inventor Accusation IO Model WO Model Conclusion
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Even though faculty members are obligated to disclose their inventions, there is no concrete university administration model to keep this in check (Siegel et al., 2003; Markman et al., 2008). The literature suggests that the best way to encourage disclosure on the part of university employees is to increase their share of the invention’s income. TLO Inventor Accusation IO Model WO Model Conclusion
When an inventor discloses to a TLO, tensions may arise if the inventor believes, rightly or wrongly, that the TLO is mismanaging the process
Many professors have established firms or developed intimate relationships (very often including tangible economic incentives) with firms undertaking research in fields closely allied with their university
market” for inventions (Markman et al., 2006; Mody, 2006: 79). Establish a firm prior to generate a patentable invention and then transfer the “discovery”; Publishing the invention, vitiating the possibility of a patent (given that Inventor knows better the invention and can provide consultant services to private firms). What can Improve relations with TLO Factors deterring relation building between Inventor and TLO
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The model is plagued by:
inventors, potential licensees, the Universities and university TLOs (Technology Licenses Office);
technology transfer.
BD was the result of lobbying efforts by interested parties (corporations and university licensing officials) hoping to monetize the inventions. At the time BD was passed, far fewer university researchers, particularly in biology, had an interest in commercializing inventions. This disinterest changed in the 1980s as biology, the largest recipient of federal funding, underwent a technical and commercial revolution making research results more commercializable and, in certain cases, quite lucrative (Kenney, 1986; Jong, 2006; Colyvas, 2007). TLO Inventor Accusation IO Model WO Model Conclusion
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Authors point of view These findings suggest that at least some TLOs, in their search for more licensing revenues, are treating the research enterprise itself as an opportunity to generate revenues. Current ownership-based TLO model is a troubled organizational solution for maximizing the social benefits of university-generated inventions.
TLO Inventor Accusation IO Model WO Model Conclusion
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TLO Inventor Accusation IO Model WO Model Conclusion
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TLO Inventor Accusation IO Model WO Model Conclusion
All university inventions would be placed in the public domain and available to all users; The university administration would no longer be involved in licensing; The university would return to its role as a platform for research and instruction. Inventor disclosure and university
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TLO Inventor Accusation IO Model WO Model Conclusion
CONSEQUENCES
licensing);
patent protection;
commercially valuable propriety knowledge).
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TLO Inventor Accusation IO Model WO Model Conclusion
CONCLUSION Authors suggest:
public domain models might operate;
sufficient number of foreign universities operating using it;
relatively large number of projects that directly stipulate that all inventions are
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