A legal perspective on university technology transfer

Abstract

In the thirty-five years after passage of the Bayh–Dole Act of 1980, a robust literature has documented the emergence of university technology transfer as a critical mechanism for the dissemination and commercialization of new technology stemming from federally-funded research. Missing from these investigations, however, is what this paper terms the legal perspective, an understanding of how the law and its attendant mechanisms impact university technology transfer. Specifically, the paper reviews the extant legal scholarship and provides examples of how case law, legal structures, and the unique nature of intellectual property law affects technology transfer, as well as higher education policy and management. Throughout, we propose critical questions for future investigation, which serve to form a cross-disciplinary research agenda that can contribute fresh insights to scholarly and policy discussions related to the role of universities in economic and social development.

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Notes

  1. 1.

    For notable exceptions, see Cohen (2004), Kenney and Patton (2009), Schneider (2011), and Hall et al. (2014).

  2. 2.

    While employing empirical data may lead to improved legal scholarship, obstacles exist for the legal academy in adopting empirical approaches wholesale (Robbennolt 2002).

  3. 3.

    IP is a broad area of law consisting of patents, copyrights, trademarks, and trade secrets. We use IP in reference to patents unless otherwise noted.

  4. 4.

    Inventorship—i.e., who is responsible for making an invention—is a legal determination that parties cannot alter by contract. For example, if a university researcher collaborates with someone in industry, and working together the researcher and his colleague make discoveries that result in an invention, both are inventors of the invention as a matter of law. The inventors may be under contractual obligations to assign their invention rights to their employers, which is how some patents come to be co-owned by universities and firms. A co-owner cannot sue another co-owner for patent infringement, as both enjoy full rights of ownership.

  5. 5.

    There are 13 federal courts of appeal in the United States. All but the CAFC are based on geography. For example, the United States Court of Appeals for the Fourth Circuit considers appeals from the states of Maryland, North Carolina, Virginia, and West Virginia. The CAFC enjoys exclusive appellate jurisdiction over patent cases. While patent infringement trials occur in federal district courts all across the country, appeals from decisions in those cases can only be heard at the CAFC, based in Washington, DC. Prior to the CAFC’s creation, appeals in patent cases were heard at the various regional courts of appeal.

  6. 6.

    Competing claims to invention rights may arise when a faculty member conceives of an invention while employed by one university, then actually reduces that invention to practice while later employed by a different university. Co-ownership of the invention by both universities can result in these circumstances.

  7. 7.

    Interestingly, Schneider (2011) examines so-called opposition filings in Europe, a legal procedure that allows any third party to challenge the validity of patents awarded by the European Patent Office, and finds that the opposition rate is far greater in plant biotechnology than in other emerging industries. However, related to the present discussion, universities face a much lower opposition rate compared to other types of organizations. The author posits that this is due to the basic nature of the protected technologies.

  8. 8.

    Though not specific to universities, Cremers (2009) explains the German system of patent enforcement and analyzes factors that may determine the likelihood of patent litigation resulting in settlement. She finds that neither the technology characteristics of the patent nor the absolute size or relative size of the plaintiff affects likelihood of settlement. However, differences in regional legal contexts and procedures do.

  9. 9.

    How a patent is licensed determines who is required and who is permitted by law to participate as a named party in litigation involving the patent’s infringement and validity. Owners of unlicensed patents are the only parties eligible to bring infringement actions of those patents or to defend their validity. Owners of patents licensed on a non-exclusive basis, to more than one party, are the only parties that have standing to sue for infringement of the patent or defend its validity; non-exclusive licensees themselves have no standing to participate. Finally, owners of patents licensed exclusively must participate as named parties in any litigation concerning their patent’s alleged infringement or invalidity, although the exclusive licensee also has standing to participate and may be required by a court to do so.

  10. 10.

    Though unexplored within the university context, tax law governing the international sale of technology may be relevant to university technology transfer (i.e. international licensing). See, for example, Finan et al. (1999) who explain the economic issues associated with ‘transfer prices’ and their relevance to tax issues that arise when technology is transferred across international boundaries within the same company.

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Acknowledgments

The order of the authors is alphabetical and each made equal contributions to the paper.

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Correspondence to Christopher S. Hayter.

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Hayter, C.S., Rooksby, J.H. A legal perspective on university technology transfer. J Technol Transf 41, 270–289 (2016). https://doi.org/10.1007/s10961-015-9436-5

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Keywords

  • Technology transfer
  • Bayh–Dole
  • Law
  • Patents
  • Legal research

JEL classification

  • O32
  • O34
  • O38