Optimizing the Nation's Investment in Academic Research A New Regulatory Framework for the 21st Century (2016) / Chapter Skim
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10 Reporting of Intellectual Property and Technology Transfer
10 Reporting of Intellectual Property and Technology Transfer
Pages 171-176
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From page 171... ...
In most instances, research institutions are permitted to take title to inventions derived from basic research supported with federal funding, and the act encourages universities to become much more active in seeking to commercialize their faculties' inventions. 2 However, the primary goal of academic technology transfer is the dis 1 National Research Council.
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From page 172... ...
The document set expectations that: "Universities should reserve the right to practice licensed inventions and…allow other non-profit and governmental organizations to do so"; "Exclusive licenses should be structured in a manner that encourages technology development and use"; "Universities should anticipate and help to manage technology transfer related conflicts of interest"; and Universities should "be mindful of the implications of working with pa tent aggregators" and "consider including provisions that address un met needs, such as those of neglected patient populations or geographic areas, giving particular attention to improved therapeutics, diagnostics and agricultural technologies for the developing world." The 2010 NRC report Managing University Intellectual Property in the Public Interest later examined the role and significance of the Bayh-Dole Act on technology transfer: One purpose of the Act was to provide consistency within federal agen cies with respect to inventions developed with federally funded re search. The broader purpose of the Act was to ensure that publicly funded inventions should, whenever possible, enhance the public wel fare through commercialization of technology to contribute to public hereby assign to the university the rights to inventions and patents conceived or developed using university resources or facilities.
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From page 173... ...
Nature of Concern While the Department of Commerce issued the regulations implementing provisions of the Bayh-Dole Act, federal research funding agencies are responsible for overseeing university management of intellectual property in accordance with the act. The act requires institutions to provide data to agency sponsors of research on inventions that result from the funded research.
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From page 174... ...
The concepts enshrined in the act, wherein universities are empowered to self-govern their actions, are a model for other regulations for the oversight and management of federally funded research. As the authors of the 2010 NRC report observed, "The Bayh-Dole Act removed the inconsistencies with regard to performer rights and was followed by a surge in patenting and licensing activity as well as in universities' capacities to undertake this activity." 11 Upgrades to the iEdison invention reporting system and uniform data reporting requirements would help expedite the entry of data by university technology transfer offices and reduce the administrative workload for university inventors and technology transfer offices.
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From page 175... ...
10.3 Congress should authorize the Department of Commerce to require that the invention data reporting obligations imposed on recipients of federal funding by all agencies are aligned with agreed-upon reporting requirements. 12 The Director, National Institute of Standards and Technology, has authority over "functions relating to the promulgation of regulations pertaining to the ownership of inventions made with federal funding, the licensing of inventions owned by the Federal Government, and the ownership of inventions made by Federal employees under Section 6(a)
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