Expert Group Report Management of Intellectual Property in ... - KoWi

o The Federal Government is granted a royalty free non-exclusive license for
Government procurement purposes only;
o The government retains march-in rights to undertake commercialisation if the contractor is
not fulfilling obligations as specified in the Act;
o Preference in licensing is to small businesses;
o If an exclusive license is granted in the United States, the licensee must agree to “substantially
manufacture” the licensed product within the United States.
As almost two-thirds of research funding for US PROs is from the Federal Government, this Act had a
serious impact on the behaviour of PROs. Since the stated purpose of the Act was to facilitate the
transfer of technology for the public use and benefit, adoption of this statement as a primary mission
for the ensuing TOs is not surprising.
Since the passage of the Act, most US PROs have created a Technology Transfer Office (TO) which
concentrates mainly on the central stream of the Innovation process depicted on Figure 1, namely the
cycle encompassing Invention Disclosure, IP protection and Licensing.
The results have been quite encouraging. The US Association of University Technology Managers
(AUTM) estimates on the basis of the FY2001 survey that in that year at least 358 new products were
introduced to the market under license from PROs. Without direct involvement of PROs in the
patenting-licensing process perhaps fewer than half would have been developed. Earlier AUTM
surveys attempted to measure a wide range of benefits, including spin-outs based on university
technologies, local and government taxes raised, all of which activities could be attributed to this new
PRO function.
In conclusion, as a result of many factors including the Bayh-Dole Act, a proactive approach to the
management of IPR by PROs appears to have stimulated more patenting activity, more company
formation and an overall positive impact on the economy.
The European Experience
Traditional technology transfer by PROs has always sought to ensure that potentially exciting new
technologies were offered to industry. But in reality, while there have been successful examples of
new products arising from PRO research, there is evidence to suggest that the volume of actual
research ongoing in European PROs should be leading to a far greater number of technologies being
developed in an industrial context. Studies in both the US and Europe have shown that there is a
correlation between levels of research activity and opportunities for new technologies. (See Chapter 4
below.)
It appears that without some pro-active management by PROs there is simply no way that industry is
able to find out about and invest development funding in all the opportunities available. Industrial
members of the Group declare that in their opinion and experience, industry benefits if PROs manage
new inventions because industry is more likely to become aware of them. There is an increased
likelihood that in partnership, PROs and industry will identify funding opportunities to develop early
stage ideas. It is also recognised by industry that for truly novel platform technology with no clear
routes to market, then an appropriate way to move ahead is often to identify high risk investment
funding sources such as venture capitalists so the route to market may be a new company.
For PRO inventions to be given a reasonable opportunity to be developed, it has been observed in
Europe that it is rarely sufficient for the PRO to simply file patent applications and secure industrial
development funding at that stage. It is often necessary to participate actively to the demonstration of
the proof of principle of the potential utility of such inventions before they are adopted by industry.
In Europe, only a few countries have thus far chosen to stimulate proactive knowledge transfer by
adopting specific laws concerning ownership of public research results and have encouraged the
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