Patented University Technology Creates Jobs

autm-logo@2xOn Monday, August 5, 2013, the Association of University Technology Managers (AUTM) released the highlights of the AUTM U.S. Licensing Activity Survey: FY2012. The full results of the survey won’t be available until later this year, but the “highlights” release does provide some interesting quantitative information about licensing activities at U.S. universities, hospitals and research institutions.

Institutions responding to the survey reported startup companies formed by 70 institutions employed 15,741 full-time employees. The survey also showed:

  • 22,150 total U.S. patent applications filed (+11.3%)
  • 14,224 new patent applications filed (+7.2%)
  • 5,145 issued U.S. patents (+9.5%)
  • 5,130 licenses executed (+4.7%)
  • 1,242 options executed (+7%)
  • 483 executed licenses containing equity (+16.1%)
  • Total license income: $2.6 billion (+6.8%)
  • 705 startup companies formed (+5.1%)
  • 4,002 startups still operating as of the end of FY2012 (+1.9%)

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Defending Bayh-Dole Under Attack

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By: Gene Quinn (IPWatchdog.com)

On February 28, 2013, I spoke at the annual meeting of the Association of University Technology Managers (AUTM), which was held in San Antonio, Texas. I spoke there about what universities can do to fend off the challenges to Bayh-Dole. As crazy as it seems, there are those who are advocating a change to what has been described by The Economist as the most successful piece of domestic legislation since the end of World War II.

Prior to the enactment of Bayh-Dole in 1980, it was virtually impossible to license University technology. In fact, a grand total of zero… that is 0… drugs developed with university funding from the federal government had been commercialized. Now, the pharmaceutical industry is enormously involved with universities and university research and dozens upon dozens of drugs have been commercialized. University basic science is the very foundation of many of the most exciting drugs, which provide tremendous cures and life-saving treatments. So dialing back the clock to when government-funded research was locked up so tight that it didn’t do anyone any good is simply ridiculous.

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Stanford v. Roche and Ownership of Federally Funded Research: Navigating the Vagaries of Contract Law

Mary Hess Eliason, an Associate with Birch Stewart Kolasch and Birch, sent in this article discussing the recent Supreme Court decision of Stanford v. Roche .  The article highlights key points in both Chief Justice Roberts’ majority opinion and Justice Breyer’s dissent and questions whether this case presented the appropriate fact situation to address the issues at hand.

When an invention is conceived, it is generally presumed to be owned by the inventor under U.S. patent law.[1] The Supreme Court Opinion of Stanford v. Roche reinforces this maxim in the context of federally funded research.  The issue brought before the Supreme Court was, in the context of federally funded research, whether the ownership of the invention automatically arises with the federal contractor (i.e., Stanford) or with the inventor under the Bayh-Dole Act 35 U.S.C. §§ 200-212 and whether the inventor can interfere with any right of the federal contractor by assigning the invention to a third party.[2]

In their recent majority opinion, the Supreme Court decided that, based on contract law, an Inventor could assign an invention to a third party, even if the invention was federally funded under Bayh-Dole. (more…)

Gene Quinn on the Supreme Court’s Stanford v. Roche Decision

Big news for the technology transfer world…. earlier today, the Supreme Court issued it’s decision in Stanford v. Roche. The issue in the case was, in the context of federally funded research, the ownership of the invention first arises with the federal contractor (i.e., Stanford) or with the inventor under the Bayh-Dole Act 35 U.S.C. §§ 200-212 and whether the inventor can interfere with that right by assigning the invention to a third party.  Gene Quinn, of IPWatchdog and Practice Center Contributor, passed along this article summarizing the opinion and what lasting consequences, if any, it will have on the patent community.

This morning the United States Supreme Court issued its decision in Stanford v. Roche, a decision that has been much anticipated in the technology transfer world.  Technology transfer is the front line for the interfacing of University research and private sector commercialization, so it is no great wonder that this case captured the attention of academia and the private sector alike. At issue in the case was whether the Bayh-Dole Act automatically vested ownership of patent rights in Universities when the underlying research was federally funded.

It is not at all an exaggeration to say that Bayh-Dole is one of the most successful pieces of domestic legislation ever enacted into law. The Bayh-Dole Act, which was enacted on December 12, 1980, was revolutionary in its outside-the-box thinking, creating an entirely new way to conceptualize the innovation to marketplace cycle. It has lead to the creation of 7,000 new businesses based on the research conducted at U.S. Universities. Prior to the enactment of Bayh-Dole there was virtually no federally funded University technology licensed to the private sector, no new businesses and virtually no revolutionary University innovations making it to the public. Bayh-Dole set out to remedy this situation, and as a direct result of the passage of Bayh-Dole countless technologies have been commercialized, including many life saving cures and treatments for a variety of diseases and afflictions. In fact, the Economist in 2002 called Bayh-Dole the most inspired and successful legislation over the previous half-century. Nevertheless, the question remained, at least until this morning, whether ownership of patent rights immediately vested in the University as the result of federal funding.

Click here to read Gene Quinn’s full publication.

 

The Gold Seal of Ownership: Stanford v. Roche and Ownership of Federally Funded Research

Mary Hess Eliason, an Associate of Birch, Stewart, Kolasch an Birch, sent in this article she wrote discussing the Stanford v. Roche case.  Eliason highlights the issues being brought before the Supreme Court and the possible effects of this case if Stanford prevails.

When an invention is conceived, it is generally presumed to be owned by the inventor under U.S. patent law. [1] The case of Stanford v. Roche demonstrates that this may not be true in the context of federally funded research.  The issue being brought before the Supreme Court is whether, in the context of federally funded research, the ownership of the invention first arises with the federal contractor (i.e., Stanford) or with the inventor under the Bayh-Dole Act 35 U.S.C. §§ 200-212 and whether the inventor can interfere with that right by assigning the invention to a third party.[2]                                                    

The facts of Stanford v. Roche show a commonly occurring relationship between inventors, research institutions and collaborators, especially in the biotechnological field. [3]In 1988, inventor Holodniy joined a laboratory at Stanford University as a research fellow.  Upon joining the laboratory, Holodniy signed an agreement stating “I agree to assignor confirm in writing to Stanford . . . right, title and interest in . . . such inventions as required by Contracts or Grants”.  (more…)