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Suggested Citation:"Front Matter." National Research Council. 2011. Managing University Intellectual Property in the Public Interest. Washington, DC: The National Academies Press. doi: 10.17226/13001.
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MANAGING UNIVERSITY INTELLECTUAL PROPERTY IN THE PUBLIC INTEREST

Committee on Management of University Intellectual Property: Lessons from a Generation of Experience, Research, and Dialogue

Board on Science, Technology, and Economic Policy

Committee on Science, Technology, and Law

Policy and Global Affairs

Stephen A. Merrill and Anne-Marie Mazza, Editors

NATIONAL RESEARCH COUNCIL
OF THE NATIONAL ACADEMIES

THE NATIONAL ACADEMY PRESS

Washington, D.C.
www.nap.edu

Suggested Citation:"Front Matter." National Research Council. 2011. Managing University Intellectual Property in the Public Interest. Washington, DC: The National Academies Press. doi: 10.17226/13001.
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THE NATIONAL ACADEMIES PRESS
500 Fifth Street, N.W.
Washington, DC 20001

NOTICE: The project that is the subject of this report was approved by the Governing Board of the National Research Council, whose members are drawn from the councils of the National Academy of Sciences, the National Academy of Engineering, and the Institute of Medicine.

The members of the committee responsible for the report were chosen for their special competences and with regard for appropriate balance.

This study was supported by Contract/Grant No. 30700699 between the National Academy of Sciences and the Andrew W. Mellon Foundation; Contract/Grant No. 9903375 between the National Academy of Sciences and The Robertson Foundation; Contract/Grant No. 07-90086-000-GEN between the National Academy of Sciences and the John T. and Catherine D. Mac-Arthur Foundation; Contract/Grant No. 20080270 between the National Academy of Sciences and the Ewing Marion Kauffman Foundation; Contract/Grant No. 1007160 between the National Academy of Sciences and the Burroughs Wellcome Fund; Contract/Grant No. 2007129 between the National Academy of Sciences and the Doris Duke Charitable Fund; The High Q Foundation, Myelin Repair Foundation, the FasterCures Center of the Milken Institute, and an anonymous foundation. Any opinions, findings, conclusions, or recommendations expressed in this publication are those of the author(s) and do not necessarily reflect the views of the organizations or agencies that provided support for the project.

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Committee on Science, Technology, and Law

National Research Council

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E-mail: cstl@nas.edu

Additional copies of this report are available from the

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COVER DESIGN: Athena, goddess of wisdom (symbolized by her owl), supporting Heracles (Hercules) in the course of his twelve labors, which earned him immorality. Medallion from a drinking cup, 480-470 BC, in the collection of the Staatliche Antikens ammlungen, Munich, Germany.

Copyright 2011 by the National Academy of Sciences. All rights reserved.

Printed in the United States of America

Suggested Citation:"Front Matter." National Research Council. 2011. Managing University Intellectual Property in the Public Interest. Washington, DC: The National Academies Press. doi: 10.17226/13001.
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THE NATIONAL ACADEMIES


Advisers to the Nation on Science, Engineering, and Medicine


The National Academy of Sciences is a private, nonprofit, self-perpetuating society of distinguished scholars engaged in scientific and engineering research, dedicated to the furtherance of science and technology and to their use for the general welfare. Upon the authority of the charter granted to it by the Congress in 1863, the Academy has a mandate that requires it to advise the federal government on scientific and technical matters. Dr. Ralph J. Cicerone is president of the National Academy of Sciences.


The National Academy of Engineering was established in 1964, under the charter of the National Academy of Sciences, as a parallel organization of outstanding engineers. It is autonomous in its administration and in the selection of its members, sharing with the National Academy of Sciences the responsibility for advising the federal government. The National Academy of Engineering also sponsors engineering programs aimed at meeting national needs, encourages education and research, and recognizes the superior achievements of engineers. Dr. Charles M. Vest is president of the National Academy of Engineering.


The Institute of Medicine was established in 1970 by the National Academy of Sciences to secure the services of eminent members of appropriate professions in the examination of policy matters pertaining to the health of the public. The Institute acts under the responsibility given to the National Academy of Sciences by its congressional charter to be an adviser to the federal government and, upon its own initiative, to identify issues of medical care, research, and education. Dr. Harvey V. Fineberg is president of the Institute of Medicine.


The National Research Council was organized by the National Academy of Sciences in 1916 to associate the broad community of science and technology with the Academy’s purposes of furthering knowledge and advising the federal government. Functioning in accordance with general policies determined by the Academy, the Council has become the principal operating agency of both the National Academy of Sciences and the National Academy of Engineering in providing services to the government, the public, and the scientific and engineering communities. The Council is administered jointly by both Academies and the Institute of Medicine. Dr. Ralph J. Cicerone and Dr. Charles M. Vest are chair and vice chair, respectively, of the National Research Council.


www.national-academies.org

Suggested Citation:"Front Matter." National Research Council. 2011. Managing University Intellectual Property in the Public Interest. Washington, DC: The National Academies Press. doi: 10.17226/13001.
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COMMITTEE ON MANAGEMENT OF UNIVERSITY INTELLECTUAL PROPERTY: LESSONS FROM A GENERATION OF EXPERIENCE, RESEARCH, AND DIALOGUE

Mark S. Wrighton, Chair Chancellor and Professor of Chemistry

Washington University in St. Louis

Mark C. Fishman, Vice Chair President and Chief Executive Officer

Novartis Institutes for BioMedical Research

Craig A. Alexander Vice President and General Counsel

Howard Hughes Medical Institute

Margo A. Bagley Professor of Law

University of Virginia

Wendy H. Baldwin Director

Program on Poverty, Gender, and Youth The Population Council

Alan B. Bennett Executive Director, Public Intellectual Property Resource Associate Dean for Agriculture

University of California, Davis

Wesley M. Cohen Frederick C. Joerg Professor of Business Administration and Professor of Economics, Management, and Law Faculty Director,

Center for Entrepreneurship and Innovation The Fuqua School of Business, Duke University

Robert Cook-Deegan Director

Center for Genome Ethics, Law, and Policy Institute for Genome Sciences and Policy Duke University

Mark S. Kamlet Provost and Professor of Economics and Public Policy

Carnegie Mellon University

Greg Kisor Vice President and Portfolio Architect

Intellectual Ventures

Suggested Citation:"Front Matter." National Research Council. 2011. Managing University Intellectual Property in the Public Interest. Washington, DC: The National Academies Press. doi: 10.17226/13001.
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David Korn Vice Provost for Research

Harvard University

Katharine Ku Director, Office of Technology Licensing

Stanford University

Edward D. Lazowska Bill and Melinda Gates Chair in Computer Science and Engineering

University of Washington

Marshall C. Phelps, Jr. Corporate Vice President,

Intellectual Property Policy and Strategy (retired) Microsoft Corporation

Dorothy K. Robinson Vice President and General Counsel

Yale University

N. Darius Sankey Managing Director

Zone Ventures

Jerry G. Thursby Professor of Strategic Management & Ernest Scheller, Jr. Chair

College of Management Georgia Institute of Technology

Jennifer L. West Isabel C. Cameron Professor of Bioengineering and Director,

Institute of Bioscience and Bioengineering Rice University

STAFF

Stephen A. Merrill Study Director

Anne-Marie Mazza Study Director

Steven Kendall Senior Program Associate

Daniel Mullins Program Associate

Cynthia Getner Financial Officer

Guru Madhavan Christine Mirzayan Science and Technology Policy Graduate Fellow

Merlina Manocaran Christine Mirzayan Science and Technology Policy Graduate Fellow

Leah Nichols Christine Mirzayan Science and Technology Policy Graduate Fellow

Shaun McGirr Research Fellow

Eric S. Douglas Research Fellow

Suggested Citation:"Front Matter." National Research Council. 2011. Managing University Intellectual Property in the Public Interest. Washington, DC: The National Academies Press. doi: 10.17226/13001.
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BOARD ON SCIENCE, TECHNOLOGY, AND ECONOMIC POLICY (STEP)

For the National Research Council (NRC), this project was overseen by the Board on Science, Technology, and Economic Policy (STEP), a standing board of the National Research Council established by The National Academies of Sciences and Engineering and the Institute of Medicine in 1991. The mandate of the STEP Board is to integrate understanding of scientific, technological, and economic elements in the formulation of national policies to promote the economic well-being of the United States. STEP bridges the disciplines of business management, engineering, economics, and the natural social sciences to bring diverse expertise to bear on issues of innovation, productivity, and national competitiveness. The members of the STEP Board and associated NRC staff are listed below.

Paul L. Joskow, Chair President

Alfred P. Sloan Foundation

Lewis Coleman President & CFO,

DreamWorks Animation

Alan Garber Henry J. Kaiser, Jr. Professor

Stanford University School of Medicine

Ralph Gomory Research Professor

Stern School of Business New York University

Mary Good Donaghey University Professor and Dean

College of Information Science and Systems University of Arkansas at Little Rock

Amory Houghton Former Member of Congress

William Meehan Lecturer in Strategic Management and Raccoon Partners Lecturer in Management

Stanford Graduate School of Business

David Morgenthaler Founding Partner

Morgenthaler Ventures

Joseph Newhouse John D. MacArthur Professor of Health Policy and Management

Harvard University

Edward Penhoet Director

Alta Partners

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Arati Prabhakar General Partner

U.S. Venture Partners

William Raduchel Independent Director and Investor

Laura Tyson S.K. and Angela Chan Professor of Global Management

Haas School of Business University of California at Berkeley

Alan Wolff Partner

Dewey & LeBoeuf LLP

EX-OFFICIO MEMBERS

Ralph J. Cicerone President

National Academy of Sciences

Charles M. Vest President

National Academy of Engineering

Harvey V. Fineberg President

Institute of Medicine

STAFF

Stephen A. Merrill Executive Director

Sujai J. Shivakumar Senior Program Officer

McAlister Clabaugh Program Officer

Daniel Mullins Program Associate

Charles Wessner Program Director

David E. Dierksheide Program Officer

Cynthia Getner Financial Officer

David Dawson Senior Program Assistant

Suggested Citation:"Front Matter." National Research Council. 2011. Managing University Intellectual Property in the Public Interest. Washington, DC: The National Academies Press. doi: 10.17226/13001.
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COMMITTEE ON SCIENCE, TECHNOLOGY, AND LAW (CSTL)

David Korn, Co-Chair Vice Provost for Research

Harvard University

Richard A. Meserve, Co-Chair President,

Carnegie Institution for Science, and

Senior Of Counsel, Covington & Burling LLP

Frederick R. Anderson, Jr. Partner

McKenna, Long & Aldridge LLP

Arthur I. Bienenstock Special Assistant to the President for Federal Research Policy and Director,

Wallenberg Research Link Stanford University

Barbara E. Bierer Professor of Medicine

Harvard Medical School and

Senior Vice President,

Research Brigham and Women’s Hospital

Elizabeth H. Blackburn Morris Herzstein Professor of Biology and Physiology

University of California, San Francisco

John Burris President

Burroughs Wellcome Fund

Arturo Casadevall Leo and Julia Forchheimer Professor of Microbiology and Immunology Chair,

Department of Biology and Immunology and

Professor of Medicine

Albert Einstein College of Medicine

Joe S. Cecil Project Director,

Program on Scientific and Technical Evidence Division of Research, Federal Judicial Center

Rochelle Cooper Dreyfuss Pauline Newman Professor of Law and Director,

Engelberg Center on Innovation Law and Policy New York University School of Law

Drew Endy Assistant Professor,

Bioengineering Stanford University and

President,

The BioBricks Foundation

Paul G. Falkowski Board of Governors Professor in Geological and Marine Science

Department of Earth and Planetary Science Rutgers, The State University of New Jersey

Suggested Citation:"Front Matter." National Research Council. 2011. Managing University Intellectual Property in the Public Interest. Washington, DC: The National Academies Press. doi: 10.17226/13001.
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Marcus Feldman Burnet C. and Mildred Wohlford Professor of Biological Sciences

Stanford University

Alice P. Gast President

Lehigh University

Jason Grumet President

Bipartisan Policy Center

Gary W. Hart Wirth Chair in Environmental and Community Development Policy

University of Colorado, Denver

Benjamin W. Heineman, Jr. Senior Fellow

Harvard Law School and Harvard Kennedy School of Government

D. Brock Hornby Judge

U.S. District Court District of Maine

Alan B. Morrison Lerner Family Associate Dean for Public Interest and Public Service

George Washington University Law School

Prabhu Pingali Deputy Director of Agricultural Development, Global Development Program

Bill & Melinda Gates Foundation

Harriet Rabb Vice President and General Counsel

Rockefeller University

Barbara Rothstein Director

The Federal Judicial Center

Jonathan M. Samet Professor and Flora L. Thornton Chair

Department of Preventative Medicine, Keck School of Medicine and

Director,

Institute for Global Health University of Southern California

David S.Tatel Judge

U.S. Court of Appeals for the District of Columbia Circuit

Sophie Vandebroek Chief Technology Officer and President,

Xerox Innovation Group Xerox Corporation

STAFF

Anne-Marie Mazza Director

Steven Kendall Senior Program Associate

Guruprasad Madhavan Program Officer

Suggested Citation:"Front Matter." National Research Council. 2011. Managing University Intellectual Property in the Public Interest. Washington, DC: The National Academies Press. doi: 10.17226/13001.
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Preface

This study of the organization, functioning, and effects of university technology transfer activities involving formal intellectual property rights resulted from the deliberations of two standing National Research Council (NRC) committees: the Board on Science, Technology, and Economic Policy (STEP) and the Committee on Science, Technology, and Law (CSTL). Aware of both claims for the success and criticisms of the system that has evolved since passage of P.L. 96-517, the Patent and Trademark Act Amendments of 1980 (the Bayh-Dole Act), members of the two committees concluded that an Academy review was appropriate and that the eve of the Act’s 30th anniversary made it timely.

The Academies sought private funding for the project and ten philanthropic institutions responded: the Andrew W. Mellon Foundation, Robertson Foundation, John T. and Catherine D. MacArthur Foundation, Ewing Marion Kauffman Foundation, Burroughs Wellcome Fund, Doris Duke Charitable Fund, High Q Foundation, Myelin Repair Foundation, FasterCures Center of the Milken Institute, and one foundation whose grant-making is anonymous. The Academies and the committee assembled to conduct the study are grateful for their support.

The NRC Governing Board Executive Committee presented the committee with the charge to

conduct a consensus study distilling lessons from research and experience since the Bayh-Dole Act of 1980 for the acquisition, licensing, defense, and sale of intellectual property arising from publicly and privately sponsored research at U.S. academic institutions. The project will involve synthesizing existing research, commissioning a survey of university officials and consulting with private and public research sponsors, holding a national conference, evaluating the various objectives of technology transfer, and

Suggested Citation:"Front Matter." National Research Council. 2011. Managing University Intellectual Property in the Public Interest. Washington, DC: The National Academies Press. doi: 10.17226/13001.
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recommending good practices for research institutions and research sponsors. Those practices will take into account significant differences in the role of intellectual property in different fields of technology, differences in the constraints on and resources of universities, objectives of different research sponsors, and differences among potential commercial licensees of university-owned intellectual property. The incentives that influence the behavior of researchers, administrators, and public policy makers will be examined and related to public goods.

In the course of preparing this report, the committee met five times. At four of the meetings, oral presentations were made by individuals from government, universities, and industry listed in Appendix B. Committee members presided over sessions of a two-day national conference held in Washington on November 20-21, 2008. Invited presenters are listed in Appendix A. The conference also provided an opportunity for interested members of the public to articulate their views. In addition, the committee commissioned an original background paper, Legal Context of University Intellectual Property and Technology Transfer, by Sean O’Connor, University of Washington, Gregory Graff, Colorado State University, and David Winickoff, University of California at Berkeley, that is available on the Academy website at http://sites.nationalacademies.org/PGA/step/ PGA_058712.

The committee also provided partial support for a previously planned survey of university technology transfer personnel, conducted by Professor Maryann Feldman, University of North Carolina at Chapel Hill, and Janet Bercovitz, University of Illinois at Urbana-Champaign. The results made available to the committee can be found under the title “Commissioned Papers” at http://www.nationalacademies.org/step. Other results will be reported in due course. The papers by O’Connor et al. and Feldman and Bercovitz were subject to external review. Finally, the committee received very preliminary results of an examination of invention disclosures filed with technology transfer offices of the University of California system over a five-year period, 1992 to 1997, by Kyriakos Drivas, Zhen Lei, and Brian Wright. See http://www.nationalacademies.org/step. The committee is grateful to all of these important contributors to its understanding of the system and its consequences.

The report has been reviewed in draft form by individuals chosen for their diverse perspectives and technical expertise, in accordance with procedures approved by the National Academies’ Report Review Committee. The purpose of this independent review is to provide candid and critical comments that will assist the institution in making its published report as sound as possible and to ensure that the report meets institutional standards for objectivity, evidence, and responsiveness to the study charge. The review comments and draft manuscript remain confidential to protect the integrity of the process.

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We wish to thank the following individuals for their review of this report: Robert Blackburn, DNAlex.com; Michael G. Borrus, X/Seed Capital Management; Wylie Burke, University of Washington; Joseph DeSimone, University of North Carolina at Chapel Hill; Maria Freire, The Albert and Mary Lasker Foundation; Rebecca Henderson, Harvard University; Krisztina Holly, University of Southern California; Trevor Jones, ElectroSonics Medical; Richard Nelson, Columbia University; Marvin Parnes, University of Michigan; Lori Pressman, Harris & Harris Group; Luis Proenza, University of Akron; Tim Quigg, University of North Carolina at Chapel Hill; John Raubitschek, U.S. Department of Commerce (retired); and Catherine Woteki, Mars, Inc.

Although the reviewers listed above have provided many constructive comments and suggestions, they were not asked to endorse the conclusions or recommendations, nor did they see the final draft of the report before its release. The review of this report was overseen by Johanna Dwyer, Tufts University, and Joseph Cecil, The Federal Judicial Center. Appointed by the National Academies, they were responsible for making certain that an independent examination of this report was carried out in accordance with institutional procedures and that all review comments were carefully considered. Responsibility for the final content of this report rests entirely with the authoring committee and the institution.

The committee’s work was ably assisted by staff of both the STEP Board and the CSTL. We wish to thank Stephen Merrill, Executive Director, STEP, and Anne-Marie Mazza, Director, CSTL, who served as study directors, and their colleagues Steven Kendall, Daniel Mullins, and several Academy science and technology policy fellows.

Mark S. Wrighton, Chair

Committee on Management of University Intellectual Property: Lessons from a Generation of Experience, Research, and Dialogue

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Thirty years ago federal policy underwent a major change through the Bayh-Dole Act of 1980, which fostered greater uniformity in the way research agencies treat inventions arising from the work they sponsor. Before the Act, if government agencies funded university research, the funding agency retained ownership of the knowledge and technologies that resulted. However, very little federally funded research was actually commercialized. As a result of the Act's passage, patenting and licensing activity from such research has accelerated.

Although the system created by the Act has remained stable, it has generated debate about whether it might impede other forms of knowledge transfer. Concerns have also arisen that universities might prioritize commercialization at the expense of their traditional mission to pursue fundamental knowledge--for example, by steering research away from curiosity-driven topics toward applications that could yield financial returns.

To address these concerns, the National Research Council convened a committee of experts from universities, industry, foundations, and similar organizations, as well as scholars of the subject, to review experience and evidence of the technology transfer system's effects and to recommend improvements. The present volume summarizes the committee's principal findings and recommendations.

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