Bayh-Dole 1) normalizes government agency approaches to claims on inventions made in government funded research; 2) places research institutions in a voluntary position to direct the disposition of claims on invention ahead of government agencies, provided the research institutions use the patent system to carry forward stated government objectives.
Bayh-Dole lists the US government’s objectives, including university-industry collaboration (not reported in any AUTM survey to my knowledge), support for small companies (treated as start ups, for the most part, in AUTM reporting), support for American manufacturing, practical application (use broadly, not simply creating products to be sold in lucrative markets paying a royalty), lowering administrative costs, protecting research from restrictions, and protecting the public from non-use and unreasonable use. Commercialization is in there, but not the star attraction. It’s practical application that gets the definition, and everyone one might look for commercialization words, there are also practical application and use words. Products and sales are part of it, but not the whole picture.
The big challenge is that Bayh-Dole provides no funding for university-led patent interventions. If it takes typically 10 to 20 years to build a sufficient patent portfolio, expertise, and relationships to receive significant income from efforts toward practical application, then we’re looking at an initial investment by the research institution of between $5m and $20m over 10 to 20 years, and more like the upper end of that, before one is in a position to be breakeven on an annual basis. Recovering that initial investment takes significant relationship–an important technology with one or more industry partners happy to support the research institution via royalty or research payments. If the institution is not worthy of support, if the partners are not happy, or if the technology is not important–well, then, darn.
This is one reason why there are efforts to argue other ways of recognizing research institution investment in technology transfer. That the initial investment is recoverable through other forms of income, not just licensing. So, donations or industry sponsored research or favorable placement to compete for federal grants, or state support. I worked in a program where the metric was all income from industry sources, whether gift, grant, license, or equity. There was no mandate to maximize license at the expense of the others, and the vision was long term–10 years–to the chagrin of some other administrators, who looked at cash each year as their measure of success–making sure they spent all of it, trying to find more of it.
If one wanted to vary Bayh-Dole, one could ask whether it makes sense to treat all government research the same with regard to use of the patent system. Even Bayh-Dole has break outs for naval nuclear propulsion, DOE weapons related programs, and exceptional circumstances.
One could also ask whether appropriate incentives and protections are in place to keep research institutions–especially administrators–focused on the broad objectives of Bayh-Dole, and not a narrow one, such as exclusive licensing for product development, even while recognizing that in some circumstances, this is indeed the expected practice. For that, one might audit each of the stated objectives of Bayh-Dole against actual use of the patent system by research institutions, not just looking at “success stories” but at all the stories and non-stories, the fights with inventors, the bitternesses and sadnesses with industry partners, the failed or moribund startups, the research teams that fought, the research teams that were indifferent, the research teams that were secretive, the research teams that were so focused on the next grant that they could not afford to be distracted to deal with the outcomes of the current one.
Unfortunately, Bayh-Dole also puts utilization reports under FOIA protections. I don’t know of any university that releases its utilization reports, even in redacted form. So we have more darkness on the matter. I find it odd that universities roundly resist efforts by companies to control publication, on the concern that the company would allow only positive results to be published and not adverse ones, to the detriment of the public, but then do just this thing in their reporting of their IP practices–never an anti-portfolio, never a plain account of all the efforts that are presently inconsequential and unremarkable, nothing much about disputes. No wonder the academics studying tech transfer practice have such a difficult time getting into practices and so resort to reasoning from assumptions and inferences and partial statistics.