Recently the feds ripped apart the contents of the Bayh Dole Act to figure out whether the Act’s mandates permit universities to try new technology licensing strategies based on e-commerce or other creative approaches. Henry Wixen, Chief Counsel for the National Institute of Standards and Technology (NIST), wrote an open letter to Thomas Kalil, the Deputy Director for the Office of Science and Technology Policy (OSTP). In the letter, Wixen combs thru Bayh Dole’s legal underpinnings to conclude that “Neither Bayh Dole nor its implementing regulations imposes upon contractors [including universities] any particular approach to be used in licensing subject inventions…whether through e-commerce or other creative approaches.“
Here’s NIST’s definitive read of the Bayh Dole Act. My comments are in italics.
Universities that receive federal research funding must:
1. Require that university employees disclose in writing each invention they create while under contract
- This is a big point of confusion on campus: it’s mandatory for the university to require *disclosure* of the invention, but it’s not mandatory that the university *own* the invention. Alternative license approaches are entirely possible if the university gives up the traditional ownership —> commercial license model for some technologies.
To read the full, original article click on this link: Blogging Innovation » Time to Explore New Licensing Strategies
Author: Melba Kurman
