les Nouvelles - December 2010

  • Les Nouvelles - December 2010 - Full Issue
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  • Commemorating The U.S. Bayh-Dole Act And Its Impact On Technology Transfer Around The World
  • Sun Kim
    This year marks the 30th anniversary of enactment of the Bayh-Dole Act (BDA) in the U.S., which has paved the way for technology transfer in universities and research institutes. The Act allows government funded agencies, such as universities, to retain intellectual property rights to innovation stemming from the government–funded research. (35 USC Sections 200-212) This has made innovations and discoveries from the government funded research projects more accessible to private industry. The passage of the BDA has accelerated technology growth in the U.S. and permitted the government to capitalize on research discoveries through commercial exploitation. The challenges faced by the U.S. in the pre- Bayh-Dole period are not unique to the United States. Governments world-wide spend billions of dollars every year funding national public research, yet the scientific knowledge created through such funding often encounter difficulties incorporating it into society.
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  • Bayh-Dole: Don’t Turn Back The Clock
  • Senator Birch Bayh
    Speech of Birch Bayh at the Licensing Executives Society 2006 Annual Meeting, New York, New York Tuesday, September 12, 2006. After a quarter century of what by most objective standards has been an exceptional success, the Bayh-Dole law is under increasing attack today. Most of the attacks have come from individuals who have little experience with the comprehensive nature of how the law is implemented. They do not know what Bayh-Dole does and does not do, and why certain features were incorporated into the law. Equally important, these nay-sayers have no appreciation for the factors that motivated our efforts to develop this legislation in the first place. Most unfortunate of all, these modern- day experts in technology transfer apparently do not understand the basic factors upon which our nation’s free enterprise system is based.
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  • The Bayh-Dole Act Turns 30
  • Vicki Loise, CAE, and Ashley J. Stevens CLP
    So, what is all the hoopla about? What on earth is Bayh-Dole? Why is Senator Birch Bayh remembered not for his substantial role in fundamentally changing U.S. society—he authored the 25th and 26th amendments to the Constitution (respectively, changing the rules for the Presidential and Vice Presidential succession and lowering the voting age to 18) and Title IX, the law which, by changing how women are treated in college athletics, transformed women’s role in society—but instead, for an obscure law which changed the way universities manage their patents?
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  • The Collaborative Research House That Bayh-Dole Built: Perfectly Constructed Or In Need Of Repairs?
  • William H. Pratt
    In many ways, one might argue that we live in the golden age of collaborative research. As technological challenges continue to grow in complexity, we appear to depend more and more on the ability of governmental, non-profit, and for-profit entities to pool their intellectual resources to meet such challenges. Without a doubt there are numerous reasons for this increase in collaborative research, including the transformation from a manufacturing-driven society to a technology-driven one. The complexity of the technological challenges facing industry, the increase in government research, and the influx of venture capital have all helped to fuel this development. Last, and perhaps most important, the increased status of patents and their recognition as a valuable income-producing asset have helped justify the increased investment in collaborative research.
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  • Intellectual Property Based On Publicly Funded Research: Japanese Experience
  • Toshiya Watanabe - Prof. Dr., RCAST
    This paper focuses on how the system of intellectual property management of research results based on public funding have changed over time in Japan. The paper also aims to examine how outcomes of publicly funded research contributed to the national innovation system in Japan as a result of such a transition, and to describe the strengths and weaknesses of such contributions by publicly funded research. The system resembling that of the U.S. Bayh-Dole Act was introduced to Japan with the establishment of Technology Licensing Organizations (TLOs) at universities in 1998. At that time, many Japanese universities were not yet the major management bodies of their own intellectual property. A further five years were required since then for the actual completion of the Bayh-Dole system at the entire Japanese university level, until the incorporation of national universities in 2004. As a result of this change, Japanese universities currently receive approximately 10,000 cases of invention disclosures per year, file for approximately 7,000 patents applications per year, and conclude cumulatively more than 5,000 cases of technology transfer contracts. Such statistical records suggest that Japan managed to successfully introduce the U.S. type Bayh-Dole Act.
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  • German Law On Employees’ Inventions Regarding University Employees
  • Christian Czychowski and Klaus Dieter Langfinger - Boehmert & Boehmert
    The legal background concerning inventions made by university professors or other university staff is primarily governed by Sec. 42 German Employees Invention Act (Arbeitnehmererfindergesetz). This Act has been subject to some major changes in recent legislation. Because of some transitional provisions concerning inventions made by university staff before February 7th 2002, it is important to know the former legal provisions. The general structure of employees’ inventions is as follows: According to the general rule in Sec. 4—7 of the German Employees Invention Act, inventions made by an employee in connection with his employment are allocated to his employer. The employer can claim the invention (so called Inanspuchnahme) by stating so to the employee (Sec. 6 sub-section 1 German Employees Invention Act). The invention is deemed to be claimed if the employer does not release the invention to the employee within four months (Sec. 6 sub-section 2 German Employees Invention Act). In any case the respective inventor has to give notice (Erfindungsmeldung) to his employer about the invention (Sec. 5 German Employees Invention Act). An exemption is only made for such inventions that have not been made within business operations and do not build up on the experiences or results achieved in connection with the employment (free inventions) or such inventions for which the employer doesn’t want to file a patent. These free inventions are assigned to the inventing employee himself. If an invention is assigned to the employer, the inventing employee has to be adequately compensated for his invention according to Sec. 9, 10 German Employees Invention Act.
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  • Review Of The Legal Scheme And Practice Of Science & Technology Basic Law In Taiwan: Taiwanese Version Of Bayh-Dole Act
  • Paul C.B. Liu, Wei-Lin Wang and David Su
    To follow the experience of the United States, Taiwan mimicked the system of the Bayh-Dole Act and passed the Science and Technology Basic Law in 1999. As a result, this Law not only generates valuable patents to promote commercial development, but also saves the additional cost of the investment in technology transfer by the government. Ever since the passage of the Law, it has generally been recognized to have positive effects on society as a whole. However, there have been mounting criticisms claiming that this Law corrupts the university’s basic mission to educate and conduct research, and there are strong voices arguing that knowledge and research results should be freely and openly disseminated, especially when they are funded by the government.
    PDF, 96.02 KB
  • UK Perspective On The Bayh-Dole Act
  • Teri Willey, Richard Jennings
    The UK does not have legislation like the Bayh-Dole Act, but events in the mid-1980’s leading to university invention ownership and responsibility, resulted in comparable impact. This was reinforced by significant financial support for technology transfer from the UK Government leading to many similarities between UK and U.S. technology transfer and some subtle but important differences.
    PDF, 110.14 KB
  • Technology Transfer Landscape Since The Enactment Of The Technology Transfer Promotion Act Of 2000 In Korea
  • Sun R. Kim
    This article will address a brief history of technology policy and changes to the technology transfer landscape since the passage of the Korean Technology Transfer Promotion Act of 2000 (Enacted Act no. 6229, January 2000) Korea, as a “catch-up” economy based country, was more prone to imitate than innovate with technological innovations being led by a chaebol firm (a South Korean form of business conglomerate, powerful global multinationals owning numerous international enterprises) that benefited from large-scale investment in R&D and governmental support. Increased and structured investment has been viewed as improving economic performance and boosting productivity.
    PDF, 111.55 KB
  • Brazil After 5 Years Of Innovation Law
  • Rosana Ceron di Giorgio
    This report gives a brief summary of technology transfer landscape five years after the creation of Innovation Law, the Brazilian equivalent of the Bayh-Dole Act. The research presented here involved 84 institutions, among universities and research centers, private and governmental, distributed among the five existing regions of Brazil. Government institutions, where most of the country’s research is concentrated, represented 70 percent of the sample and federal government universities, 48.8 percent. Among the discussed subjects there are: Brazilian Laws concerned to ownership rights and benefit sharing, government incentives to innovation and progress obtained in patenting and licensing activities, after the Innovation Law was released
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  • Lost In Translation: A European Perspective Of Bayh-Dole
  • Thomas L. Bereuter and Peter Heimer
    The Bayh-Dole Act in the U.S. is seen as a role model for legislative bodies in many jurisdictions. European regulations have been improved and harmonized to a significant extent in the last decade. In particular the “professor’s privilege” or similar regulations have been substituted by institutional ownership. Nevertheless, the new regulations are not as effective as the Bayh- Dole Act. Funding guidelines in Europe are frequently lacking the commitment to principally attribute ownership of intellectual property (IP) to the institution creating the IP. Another layer of regulation is provided often resulting in fragmented ownership of IP rights. Therefore, further improvement of the regulations in combination with a more committed execution of already existing regulations is a future challenge in order to achieve a comparable positive impact on the innovation track record in Europe as in the U.S.
    PDF, 99.50 KB
  • Public Sector Research In Australia—IP Ownership And Commercialisation Issues
  • John Walker
    Before considering any “Bayh-Dole type issues” in the Australian IP protection/commercialization landscape, a brief overview of the Australian public sector R&D framework is helpful. First, “public sector” in the context of Australian R&D principally covers research undertaken in the university system and research by government owned research agencies, such as Commonwealth Scientific & Industrial Research Organisation (CSIRO). Government funding for these activities is provided through two principal mechanisms: research grants through the Australian Research Council (ARC) and the NHMRC which flow through principally to the university/medical research sector; and the funding of specific government owned research institutes including CSIRO, ANSTO, AIMS, DSTO (the largest of which is CSIRO).
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  • Public Funded Research In India—A Reckoner On Recent Legislative Actions
  • Rajashree Sharma
    Post independence India has seen rapid development of human resources and infrastructure for science and technology, growth of indigenous industries in diverse sectors apart from other socio-economic aspects. To compete in a global environment, wherein it is necessary to promote creativity and innovation, India realized the need to protect and utilize the intellectual property created out of public funded research and development. It is thus necessary to develop a framework in which the protection and utilization of intellectual property is put in place. With this intent the Government of India has introduced the “Protection and Utilization of Public Funded Intellectual Property Bill 2008” (hereinafter the Bill) in the Upper House of Parliament. The Bill will provide the protection and utilization of intellectual property originating from public-funded research. The Bill has been modeled on the United States Patent and Trademark Law Amendments Act, commonly known as Bayh-Dole Act (BDA). However, the Bill invited criticism from various stakeholders that a Bayh-Dole kind Act is not relevant in a developing nation such as India, as the environmental conditions that prefaced the adoption of Bayh-Dole in the U.S. are different from those prevailing in India. Furthermore, there had been much criticism of this Bill even before it was introduced in Parliament as it received the assent of the Union Cabinet without benefit of a public debate. Therefore, the Bill was referred to the Parliamentary Standing Committee for review, and recently the committee has come up with their comments after taking responses from various stakeholders. The Bill has been revised drastically relaxing patenting norms for inventions and giving the government more control over the institutions. A total of 52 amendments have been made to the original draft. In August 2010, the Bill was laid on the tables of upper and lower house of the Parliament.
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  • The Ownership Issues For Patentable Inventions Resulting From Publicly Funded Research In Turkey
  • Yucel Hamzaoglu and Omer Hiziroglu
    Under Turkish Patent Law, the Decree Law 551 (1995), the legislator has given the so called academic or professor’s privilege to inventions made by university researchers. Thus, inventions made by university researchers are considered to be free inventions. Researchers are free to contractually assign their inventions to third parties but may be required to reimburse the university for actual costs incurred (i.e.: lab space, material used, etc.) by the institution if the invention is commercialized. The 551 is silent regarding the issue of ownership of academic inventions that result from publicly funded research. Furthermore, there is no other legislation in force that purports to regulate the particular issue of ownership of intellectual property arising from publicly funded research.
    PDF, 83.10 KB
  • Legislation And Technology Transfer In Switzerland
  • Françoise Chardonnens
    Does Switzerland have its Bayh-Dole Act? The answer is “yes, but.” Indeed, due to the decentralized Swiss political and legal system, more than one Act governs technology transfer in Switzerland. Higher education institutions consist of: Two federal institutes of technology (namely ETH Zurich and EPFL, Lausanne), governed by federal legislation; Ten cantonal universities, mainly governed by cantonal legislation; Seven universities of applied science, mainly governed by cantonal legislation. Technology transfer was not addressed per se until 1991, although federal and cantonal law did contain provisions about ownership of inventions made by civil servants (ownership being allocated to the federal or cantonal state). The application of this legislation in the higher education institutions was not straightforward mainly because of the many different possible employment status of their staff, whereby it was generally very difficult to know which categories of university staff were subject to such provisions. Typically, it was not clear whether inventions generated by professors belonged to themselves or to the institution hiring them; without talking about the other aspects of technology transfer like patenting and licensing, which were not addressed at all.
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les Nouvelles