An overview of University
Industry Technology Transfer :
Bayh-Dole Act and EU experiences
Devrim Göktepe, PhD Lund University
Max-Planck-Institute of Economics
Entrepreneurship, Growth and Public Policy
Group
Jena Germany
We know…
 Scientific research is accepted as one of the important driving
force of modern industrial development and long-run growth.
 Universities, the seed-beds of scientific research, contribute
substantially to the competitiveness of industries both in the
long-run and short-run
 Consequently, most economies at the national and regional levels
aim to bring the scientific and commercially oriented research
together.
 How UITT can be achieved?
Background
A substantial amount of literature on University
Industry Technology Transfer
• TTOs, Bayh-Dole, Start-ups, Venture Capital etc…AUTM Data,
US-dominated picture
• So-called “European Paradox”: Europe is not receiving an
adequate return on its investments into research and technology
because of less and slower commercialisation of research results.
• Swedish Paradox: High scientific investments and high scientific
results are not utilized in innovation
° Is this altruism true?
° ???
2 views…
 Optimistic view: The university is undergoing a cultural
transformation to play a significant role in the knowledge-based
society as an entrepreneur…Widely exemplified with US
universities, and MIT, Stanford …in particular (see H.
Etzkowitz); & regional growth impact Stanford, MIT) have aided
growth of high-technology regions (Silicon Valley, Route 128).
 Pesimistic view: Academic capitalisim, end of academic values,
open science, and freedom of research...(Slaughter, P.David, R.
Nelson, D. Mowery...)
Tech. Transfer Mechanisms
Questions?
• Can universities be entrepreneurial?
• Can UITT be achieved on an ad hoc basis between friends? (e.g.
professor and his/her former students employed in industry,
former colleagues etc….)
• Or should UITT be institutionalized & professionalized?
• If yes, how it should be institutionalized?
° US-system is a role model? Can we emulate Bayh-Dole Act in
Europe?
° Do we really need Bayh-Dole Act in Europe to stimulate
patenting, licensing and spin-off activities?
° Has Bayh-Dole been the main reason behind the rise of
entrepreneurial activities at US universities?
° What are the (intended and unintended) consequences of
such a trend?
US-System
• USA System:
• Famous/infamous Bayh-Dole Act:
• The BDA, rationalized and simplified federal
policy toward assignment of patent rights,
licensing.
• Emulation of Bayh-Dole Model
• Debates or initiatives in Japan, Italy, Canada,
Denmark, Norway, Germany, nearly all of
which refer to Bayh-Dole
US-System
• The number of U.S. academic patents quadrupled from
approximately 800 in 1988 to more than 3,200 in 2003.
• Universities then license the patent to industry, which
will further develop and market the invention.
• Universities may grant either exclusive or nonexclusive licenses to industry.
° An exclusive license gives a single company the sole
right to develop and sell the invention.
° A non-exclusive license allows many companies to
use and sell the invention.
• In either case, universities hope to receive royalties
and/or other payments in exchange for the license.
US-System
• Universities and industry interact through diverse,
interdependent channels: (depths of the iceberg)
• Training and industry employment of scientists and engineers.
• Published research, consultancy; conference-based and other
informal interactions with industry researchers.
• Establishment of new firms by faculty, graduates, and other
researchers.
• Patents and licenses for university inventions (tip of the iceberg)
• Surveys of US industrial R&D managers indicate that (outside of
pharmaceuticals), patents are relatively unimportant channels of
interaction.
• Interaction with industry typically is concentrated among a few
fields or departments within universities, which vary across
universities.
Outside US
• Many European & Japanese, universities now
emphasize a “patent-centered” model of
technology transfer.
• Not always one-to-one adoption but an
“emulation” of the “Bayh-Dole model.”
° E.g. Germany, Denmark, Norway, Finland,
Austria, Italy, Japan…
° UK and Israel have always similar systems to
BD-Act
EPO Member State
Current Legal Framework
AT Austria
University ownership, 2002
BE Belgium
University ownership since 1990’s (both Flanders/Wallonia)
BG Bulgaria
[to follow]
CH Switzerland
Complex situation:
Non-binding Guidance in laws and regulation
Depends on employer- employee contracts an d provision in agremenets between funder of research and
No explicit university legislation
Employer owns rights
Czech Republic
DE Germany
University ownership since 2001
DK Denmark
University ownership wef 2001
EI Eire
Employment law provides for employers to retain title to inventions by employees except as otherwise agreed in contracts
EL Greece
No specific regulations appear to exist
ES Spain
Spanish patent Law (1986) indicates that universities will apply for patents resulting from research of their professors
Obligation to disclose and declare intent to commercialise w/I three months
FI Finland
Until this year professor’s privilege. A distinction is made between open research and collaborative research. The HEI is entitled to acquire the rights to the Invention that is made in collaborative research within six months from the disclosure of the invention (sec. 7). When
the HEI has acquired rights in the invention, the inventor will be entitled to obtain reasonable compensation for the invention (sec 9). The HEI also has the competence to make contractual arrangements with third parties
concerning patentable inventions that may be made within research projects. The entitlement to inventions resulting from open research will remain with theinventor. Such inventions, however, are covered by the duty to inform the HEI about the invention.
FR France
Legislation is general, i.e. universities are considered as employers, which will own the rights on inventions made by staff. “France adopted a legislation very similar to the Bayh-Dole Act in the US”. Concerning patents, university professors are treated as “civil servants” by
the national legislation, and the IPR belongs to the State. Revenues resulting from patent licensing are shared in equal parts between the university, the department which sponsored the research, and the team of researchers and professors who produced the invention.
Individual scientists are encouraged to patent their inventions, while the university itself promotes all the efforts to pursue an effective transfer of patented technologies. In the case of CNRS, patents are either licensed to external firms, or sold in return for funding.
GB United Kingdom
1977 Patent Act and 1998 Copyright Act indicate that IP generated in the normal course of employment shall belong to the employer
Guidelines by the UK PO reaffirm that IP generated in publicly funded research should generally be vested in the organisation that does te research.
HU Hungary
Universities own the rights to faculty inventions
(recent change: Act CXXXIX of 2005 on Higher Education wef 2006)
IT Italy
Article 7 of National Law No 383 of 18 Oct 2001 assigns title of inventions at universities to researchers
2005 - the rules have changed again:the title of all the invention coming from externally funded research, and developed within a public institute, given to the institution, leaving to the researcher the possibility of a title only for research funded by the intra-institution source.
LT Lithuania
No special legal framework for patenting at universities in Lithuania. There can be internal regulation within the universities. Universities could claim ownership as employers
LV Latvia
NL Netherlands
No special legal framework for patenting at universities in Latvia. There can be internal regulation within the universities.
Patent law stipulates that if the State commissions particular scientific research or design relating to its sovereignty or security, the right to inventions, which may result while the contractor fulfills this work, shall belong both to the State institution and the contractor and the
provisions of use for such inventions shall be determined by a specific contract.
Legislation is general, i.e. universities are considered as employers, which will own the rights on inventions made by staff. (Van Looy et al., 2007). However, possibility of deviating agreement between parties (OECD, 2003)
NO Norway [not an
EPO member]
Norway has a specified Bill regarding innovation at public research organisation: University ownership,
Teachers’ exemption repealed in 2001
PG Portugal
No clear legal situation - Universities tend to claim ownership to faculty inventions The patent will in principle belong to the organisation in which the discovery is developed, unless it decides not to pursue a patent (but those researchers who are patent inventors may receive
a share of the royalties derived from their patented discovery).
PL Poland
There is no special legal framework for patenting at universities in Poland. There can be internal regulation within the universities.
ROM Romania
[to follow]
SE Sweden
Professor’s privilege.
SLK Slovak Rep
There is no special legal framework for patenting at universities in Slovak Republic. There can be internal regulation within the universities. Universities may claim ownership as employers of inventors.
SLO Slovenia
Employment related inventions Act of 25 July 1995( as in force from 13 January 2007
as last amended on 18 December 2006) allows university institutes to claim right to employees’ inventions
TR Turkey
There is no clear-cut rules, but Funding agency,
UK United Kingdom
legislation is general, i.e. universities are considered as employers, which will own the rights on inventions made by staff.
Germany
• Repeal of Hochschullehrerprivileg: Germany (2001
Reform of Employee Law): IPRs now belong to the the
university and not the individual inventor anymore.
• As a consequence, the German government supports
financially the setting up of Patent Valorisation
Agencies (Patentverwertungsagenturen/PVA). Each
PVA commercialises research potential and results on
behalf of a number of universities, university colleges
and research institutes.
• Nearly all German Universities have bonds to one of
the 20 PVAs.
Denmark
• Denmark (2000, Act on Inventions at Public
Research Institutions)
• Mixed results: Bio-tech patents started to
decrease in the aftermath of the introduction
of the BD-act like institutional set-up,
compared to Sweden where “teacher’s
exception” is intact.
Norway
• In the Norwegian case legislative changes
(BD-Act) went into effect in 2003 expressly to
encourage greater commercialization through
patenting research results.
• This policy ambition faces the problem that no
record of the patenting activity of academic
researchers is available before 2003 when the
country's "professor's privilege" was phased
out.
Japanese BD-Act
• In the past, the Japanese government, as a rule,
acquired ownership of all intellectual property that
was produced by the universities funded by the
government.
• However, in 1999 that long-standing policy was
abandoned in favor of a new system whereby the
government would transfer any intellectual property
produced by government-funded R&D to the private
sector.
• This new system, which was established in Article 30 of
the Industrial Revitalization Law, is known as the
Japanese Bayh-Dole clause (hereafter referred to as JBayh-Dole) after the United States Bayh-Dole Act.
Italy
• Shifts between abolishment and introduction of
University Teacher’s Exception along with the
establishment of a number of TTOs aiming to
commercialize university research results.
• Italy (2001 Legge Finanziaria …Article 7 of National
Law No 383 of 18 Oct 2001 assigns title of inventions
at universities to researchers
• 2005 - the rules have changed again: The title of all
the invention coming from externally funded research,
and developed within a public institute, given to the
institution, leaving to the researcher the possibility of
a title only for research funded by the intra-institution
source.
A Detailed view on Sweden
• IPR awareness campaigns
Sweden (1994; University holding companies and
jointly the creation of “Innovationsbro /bridge
Foundations”)
• Can university scientists patent without Bayh-Dole
Act?
• If yes, why & how do university scientists patent
without Bayh-Dole Act?
Empirical Research
• Stage-1: Identification of Inventors at a Swedish Research
Intensive University
° Name and address matching between EPO & University
Personal Records
° 250 faculty members are identified as inventors at EPO
° More than 400 patents have at least one Uni-inventor
• Stage-2: Survey of Inventors
• Stage-3: Interviews with selected Inventors & TTOs
Distribution of Patents on 5-year basis
University-invented Patents
• Inventors’ data as a unique source for tracking
not just “university patents”, but all of
“academic patents search by inventor, not just
by applicant!!!
• (Goktepe 2008 see Meyer 2003, 2005)
Mapping of Patenting at LU
Gambro
Automatic
Alfa
Control-17
Laval
Sternby Ericsson
Communication
Ericsson
Systems-10
Ahlfors
Switch
Core
Computer
Science-5
LTH
InformationSiemens
Technologies45
Goalart Smeets Ericsson
Larsson JE
Mathematics-41
Gambro
Lindoff Ericsson
Cellavision
AkenineMöller,Ericsson
T.
Electrical
Measurements-30
AZ
Laurell
Erysave
Gambro
Gyros
Telia
Electro Ericsson
Science-25
ShoushengInfineon
Lundonia
Heat & Power
BayerEng.2
Volvo
Denovastella Chemical Roche
Center-36
Johansson, B.
SternerEricsson Hahn-Hägerdal
Forskar
Helsinborg
Patent
ENG-3
Biotechnology27
Thomasson
Sanodor
Protista
Mattiasson
Applied
Biochem-25
Physics-44
Spectracure
Heidari Obducat
BTG-int
Mechanics-10
Telia
Cedell
Cellavision
Industriell
Electronic-28
Alakula
ABB
Gertmar
IGEN Mosbach
Food ENG.-19
PROBI
Molin
Immunology18
Alligator
Bio-invent Borrebaeck
Energy &
Building Design
-9
Diolog
semiconductors
Nilsson,J.2
Acoustics
Dalloz
Safety Hammer
Building
Science-5
Alsmarker
Södra
Timber
Medical Faculty
Experimental
Medicine Sciences-21
Clinical Sciences86
Cell-Biology-8
Johansson
Hansa
Neuroscience-4
Heptahelix
GS-dev
Schouenborg
Abbot
labs-US
Medicine-20
Berglund
NilssonJSteen
Clinical Chem-22
Thrombosis
Coagulation
AZ
Cardiology-7Vitrolife
Physiology-Camurus
Laboratory Medicine102
Jolife
Ortopedi- Bone
LidgrenSupport
KopylovDerma-13
Ascension
Handdevelop
Ortp
Dahlbäck
Immunology9
Bengmark
Björk,LAffitechNO
Actinova
AGY-US
Exp.Brain
Research-6
Tumor
ImmunologyWieloch
17 BM-Oxigine
'BristolMyers
Argmed
KB
Bacteriology-Asto
carotene
12
CrealBase
Prolight
Diognostic
Wadström Arla
Probi
LeanderssonActinova
Inflamation
Microbio-24
Surgery-5
Torsten
Arctic
Partner-FI
Molecular
Hansa
Pathogenesis-21
Pero
Clinical
Physiology-9
Lilja
Amersham
Svanborg
Medscand
Foods
Nordicbio
NATURE
Astronomi
Chemistry-27
Esytech
Anal-chemMathematics-1
Marko 10
Svendenius
Fagerhults
Belysning
AZ
Norberg
Thordarson
Akzo
Geography
Eco-system
Pysical-chem-Nobel
3
Lindman
Berol
Thuresson
Ecology
Geology
Nobel
Forskar
Patent
VTT-FI
Bio-chemPharmacia
8 Esperion
Persson
Tjerneld
Therapeutics-US
Amersham
Environment
Computer
Org-chemOxigine
6
Ek
Folkesson
Ekberg
Larsson
SufucellDE
Physics-3
Theoretical
Physics
Peterson
Agrovison
Cell-Organism
Biology-2
Jarl-Suneson Sandoz- Gene
CH/DE
Widegren
invent
2 main Modes of
Commercialization of
Patent
Skewed Distribution of
Inventors
• Licensing to existing
companies
° Giving or selling the
patent to the
company
• Start-up formation
140
120
Inventors
100
80
60
40
20
0
1
2
3
4
5
6
7
8
Patents
9
10
11
12
13
14
15
Mode of Commercialization
Non Spin-off=Passive versus Spin-off=Active
Inventors Typology
TYPE-3
Occasional-Active
Inventors
TYPE-4
Occasional-Passive
Inventors
TYPE-1
Serial-Active
Inventors
TYPE-2
Serial-Passive
Inventors
Frequency of Patenting
Have less than 3 versus 3 or more patents
Findings-i…
• Swedish university scientists also contribute a
number of patents.
• What differs are ownership patterns &
institutional features of national innovation
and academic systems
• Informal relations with industry, existence of
teacher’s exception
(Goktepe 2008 see Meyer 2003, 2005)
Findings-ii
• University scientists who were involved in competence centers,
like Bioseperation, Swegene, Functional Food Center, or in joint
centers of different faculties were listed as inventors more often
than non-participating scientists. These platforms also provide a
substantial number of patents and spin-off companies.
• A substantial amount of the patents resulted from the
individually initiated relations with industry, we see bottom-up
motivations.
• UITT is resulting from the synthesis of bottom-up (individual)
and top-down (government) initiations, instead of following a
single mode.
° E.g. abolishment of university teachers’ privilege law, and
adoption of Bayh-Dole model will not increase relations
between these actors.
Findings-iii
• We identified 4-different types of inventors
• Each type of inventors have similar but also different needs,
motivations and expectations
• This may imply customized approach according to their needs
° Universities should aim to integrate and utilize these
different types rather than marginalizing any of them
• The system provides the inventors with multiple channels and
multiple organizations.
° Higher dependence on the industrial partners makes the
system vulnerable!
° A change in the system may lead to backlash
° Catch-22 for TTOs
Discussion-i
• Patenting or commercial activities: voluntary &
instinctual behaviours or transformation of academics
• A kind of transformation in an evolutionary way,
rather than total transition to entrepreneurial
activities
° This transformation is unlikely to be achieved by topdown revolutionary changes, e.g. reforming the
university system.
Discussion-ii
• Individual ownership of IPR and alternative 3rd
Agents create positive motivations for university
scientists to patent their inventions.
• Current system provides the inventors with multiple
channels and multiple organizations
• But, none of the path is not clear enough for some!!!
• What matters: Nature or Nurture
• Innovation & creativity is difficult to be legislated but
possible to be protected and nurtured
Questions…
• Who are the serial inventors in the university? To whom /how do
they transfer their research results?
• The Decision to Participate in Technology Transfer is Influenced
by
° Imprinting: Where and When an Individual Trained.
° Social Learning: What their Chairman Does; What Others
Like Them Do.
° Boundary people, multiple-tasks
° Build/Define Culture Act as Role-Model—Can TTOs learn
from them?
• Would they resent TTO’s activity or cooperate with it?
• How do the local industry react to the role of TTOs?
° UITT is not only patenting and spin-offs