Here’s an opening to an article on the Axel patents at Columbia (my emphasis).
The Bayh-Dole Act of 1980 gave federally funded grantees and contractors, including universities, a clear and uniform mandate to patent and license inventions stemming from federally funded research. The principal objective of the Bayh-Dole Act was to “use the patent system to promote the utilization of inventions stemming from federally supported research or development… to promote the commercialization and public availability of inventions made in the United States by United States industry and labor…”1 (35 USC 200–212).
What I don’t get, from normally quite gifted folks such as the authors of this article, is why they construe Bayh-Dole as about commercialization. Bayh-Dole has no “mandate” to “patent and license inventions.” The Act makes uniform a set of conditionals with regard to inventions made in funding agreements. Where a federal contractor is a company, there is absolutely no mandate to patent and license. Where the contractor is a nonprofit or university, the conditional is: if you take ownership, then you have to work to promote practical application of the invention.
The authors, however, reduce the seven objectives stated in the Act to two, and piece these together to make it appear that commercialization is front and center when it is buried in the objectives, and throughout the Act, as a parallel to practical application.
Bayh-Dole works with two great traditions of technology change economics–diffusion of new technology and commercial sale of new technology. For the first, the key is practical application, and for the other, first commercial sale. These are measures of impact of federally supported research at universities. Who is using what you have discovered? Who is making new product based on what you discovered? Now, there would be something for universities to report every year. But, of course, they don’t.
Let’s look again at those objectives stated for Bayh-Dole. The Act sets out seven objectives as federal policy (enumeration and emphasis added):
It is the policy and objective of the Congress to use the patent system
1) to promote the utilization of inventions arising from federally supported research or development;
2) to encourage maximum participation of small business firms in federally supported research and development efforts;
3) to promote collaboration between commercial concerns and nonprofit organizations, including universities;
4) to ensure that inventions made by nonprofit organizations and small business firms are used in a manner to promote free competition and enterprise without unduly encumbering future research and discovery;
5) to promote the commercialization and public availability of inventions made in the United States by United States industry and labor;
6) to ensure that the Government obtains sufficient rights in federally supported inventions to meet the needs of the Government and protect the public against nonuse or unreasonable use of inventions; and
7) to minimize the costs of administering policies in this area.
You can see from the way I’ve laid out the objectives that using the patent system to promote use of inventions is independent of commercialization and public availability. If you are bothered by this arrangement, consider how the objectives are set out in the Federal Acquisition Regulations (my bold and comments, enumeration in the original):
27.302 Policy.
(a) Introduction. In accordance with chapter 18 of title 35, U.S.C. (as implemented by 37 CFR part 401), Presidential Memorandum on Government Patent Policy to the Heads of Executive Departments and Agencies dated February 18, 1983, and Executive Order 12591, Facilitating Access to Science and Technology dated April 10, 1987, it is the policy and objective of the Government to—
(1) Use the patent system to promote the use of inventions arising from federally supported research or development;
(2) Encourage maximum participation of industry [instead of small business firms] in federally supported research and development efforts;
[no collaboration between industry and universities]
(3) Ensure that these inventions are used in a manner to promote free competition and enterprise without unduly encumbering future research and discovery;
(4) Promote the commercialization and public availability of the inventions made in the United States by United States industry and labor;
(5) Ensure that the Government obtains sufficient rights in federally supported inventions to meet the needs of the Government and protect the public against nonuse or unreasonable use of inventions; and
(6) Minimize the costs of administering patent policies [instead of “policies in this area”].
Here, too, the objectives are stated as a series of independent clauses, not run together so that the idea is to use patents to commercialize. Perhaps words do matter. The objectives place commercialization in a context: they do not say, it is an objective for the contractor to commercialize inventions, but rather to “promote the commercialization and public availability” of inventions. The objective for the Government is to promote commercialization, not to require it, mandate it. And for all that, commercialization is one of a number of objectives. It is not the most important one in the list, not given any prominence–not first, not last, not in bold, not singled out. It isn’t. It isn’t a special objective. It isn’t the secret “real” objective, sneaked into the law by conniving technology transfer advocates, using the rest of the objectives to make folks feel good about passing the legislation.
If we return to the opening of the article, we can see that the authors split the first infinitive to create the impression that the objective of Bayh-Dole is to patent to promote use via commercialization. Rather that “to use the patent system to promote utilization” and “to promote the commercialization and public availability” (which might not involve patents at all), the authors use this construction:
to “use the patent system to promote utilization…to promote commercialization…”.
Essentially, the authors build a new objective out of pieces of existing objective by how they start their quote and what they leave out. The focus of the article is how Columbia has used its patent position to generate $790m or so of royalty income pre-Bayh-Dole, but with NIH requirements that are similar), and no doubt the authors want to make the connection between patents and commercialization–and from there to royalties, which is the topic of their next sentence and many words following. By the end, they are going to present policy arguments to make private revenue generation an express objective of federal patent policy (and then worry these arguments). Here at the opening, however, we get the typical restatement of Bayh-Dole that is current among so many university administrators and patent administrators–that Bayh-Dole’s objective is for them to try to make money by taking patent positions. May as well say God intends for you to be rich, or at least to make a valiant effort at it, no matter what. It’s a nice thought, but it isn’t federal patent policy, just administrative narcissism.