Intellectual Property Revenue Sharing as a Problem for University Technology Transfer

The Bayh-Dole Act, often credited with the explosion of university technology transfer, requires universities to incentivize invention disclosure by sharing the royalties generated by patent licensing with inventors. Many scholars have debated the effectiveness of university implementation of this requirement, and, indeed, the low rate of invention disclosure by academic researchers to the university is often a bottleneck in the technology-transfer process. Unfortunately, most discussions focusing on inventor compliance with Bayh-Dole Act requirements have explored faculty-inventor motivations. However, in most cases, university inventions are joint products of a group of university members including not only faculty but also post-doctoral researchers or graduate students. This collaborative nature of scientific research seems to have been lost in the design of the technology-transfer system. Some scholars have discussed inventorship determinations and the impact of incorrect inventor identification in pre-America Invents Act patent law. Generally, however, the dynamic interactions between joint inventors with different positions within the university are a little studied area of the technology-transfer process. Less well studied is the Bayh-Dole Act requirement that all inventors share in the revenue from a university licensed patent. The distribution of licensing revenue among inventors creates a question of how to divide the portion of the royalties allocated to inventors by the university. This Article explores that revenue distribution. To the extent that the university asks the input of the inventors, many of the problems in the initial recognition of students and post-doctoral fellows as joint inventors become again important in assigning a percentage of the revenue. Additionally, the negotiation power imbalance between joint inventors may indicate that the university should play a larger role in revenue allocation than it does in initial inventor determinations

Ritalin to Roundup: Expanding the Pharmaceutical Industry Statutory Experimental Use Exception to Agriculture

The modern agricultural biotechnology industry developed from a small cottage industry based on selective crop breeding into a multi-billion dollar industry based on the isolation and insertion of genes that code for commercially valuable crop traits. As it grew, the industry relied on patent protection to recoup its investment into new research and development of genetically engineered (GE) crops. A recent billion dollar patent infringement damage award to Monsanto based only on research activities of its competitors testifies to the importance of that patent protection. Had the Monsanto patent infringement case been between two pharmaceutical companies creating genetics-based drugs, the outcome would have been different. Instead of a one billion dollar award, the patent verdict would have been one of noninfringement. The difference between the two patent infringement cases lies with the Hatch-Waxman Act's statutory experimental use exception. The Hatch-Waxman Act controls the regulation of generic drugs by the Food and Drug Administration (FDA). Along with an abbreviated generic drug approval process, the Hatch-Waxman Act includes a statutory experimental use exception to patent infringement allowing pharmaceutical companies to conduct research on patented drugs if the research might be used in a regulatory submission to the FDA

Beyond Einstein and Edison: Claiming Space for Non-Faculty Inventors in Technology Transfer

Article published in the Indiana Law Review

Unveiling the Distinction between the University and its Academic Researchers: Lessons for Patent Infringement and University Technology Transfer

This Article explores the idea that a faculty member acting in the role of an academic researcher in the scientific disciplines should be viewed in the context of patent law as an autonomous entity within the university rather than as an agent of the university. The structure of the university laboratory within the university and the social norms associated with the activities that members of the research laboratory conduct supports such a view. Additionally, the data from the implementation of the Bayh-Dole Act reveal that universities and faculty scientists have different goals and motivations regarding the transfer of new technology to the private sector. Acknowledging a distinction between the university and its academic researchers would revive the application of the experimental use exception as a defense to patent infringement for the scientists who drive the innovation economy of our country. Also important, this distinction has implications for the way that entrepreneurship is defined in the context of academic researchers. A better understanding of academic entrepreneurship may lead universities to restructure incentives to encourage academic researchers to participate in transferring new inventions from the laboratory to the private sector

Defining Limits to the Application of the Statutory Experimental Use Exception Within the Agricultural Biotechnology Industry

Article published in the Michigan State Law Review

Emergent Neurotechnologies and Challenges to Responsibility Frameworks

"It is not my fault; it is my brain implant which made me do it." Some scholars have argued that this could become a common strategy: defendants might argue that as the result of a defective brain implant, an autonomous brain implant, or someone hacking into their implant, they should not be held responsible, or at least not fully responsible. In the past few years, a neuroscientific revolution has been underway. Neuroscience has rapidly increased our knowledge of the functioning of the human brain, providing us with an insight into the mental processes underpinning human behavior. This explosion of interest in neuroscience has resulted in the development of many neurofields: from neuroaesthetics to neuroeconomics and neuromarketing. But as we learn more about the brain, we also learn more about human thought and motivations. These new understandings and knowledge about the functioning of the human brain are of great relevance to ethics and law, given that these are disciplines primarily concerned with the normative dimension of human behavior. That is why ethicists and legal scholars have been interested in the impact of neuroscientific advances, resulting in the rapid development of neuroethics 2 and neurolaw.

Defining Limits to the Application of the Statutory Experimental Use Exception Within the Agricultural Biotechnology Industry

Article published in the Michigan State Law Review

Unveiling the Distinction between the University and its Academic Researchers: Lessons for Patent Infringement and University Technology Transfer

This Article explores the idea that a faculty member acting in the role of an academic researcher in the scientific disciplines should be viewed in the context of patent law as an autonomous entity within the university rather than as an agent of the university. The structure of the university laboratory within the university and the social norms associated with the activities that members of the research laboratory conduct supports such a view. Additionally, the data from the implementation of the Bayh-Dole Act reveal that universities and faculty scientists have different goals and motivations regarding the transfer of new technology to the private sector. Acknowledging a distinction between the university and its academic researchers would revive the application of the experimental use exception as a defense to patent infringement for the scientists who drive the innovation economy of our country. Also important, this distinction has implications for the way that entrepreneurship is defined in the context of academic researchers. A better understanding of academic entrepreneurship may lead universities to restructure incentives to encourage academic researchers to participate in transferring new inventions from the laboratory to the private sector

Unveiling the Distinction between the University and its Academic Researchers: Lessons for Patent Infringement and University Technology Transfer

This Article explores the idea that a faculty member acting in the role of an academic researcher in the scientific disciplines should be viewed in the context of patent law as an autonomous entity within the university rather than as an agent of the university. The structure of the university laboratory within the university and the social norms associated with the activities that members of the research laboratory conduct supports such a view. Additionally, the data from the implementation of the Bayh-Dole Act reveal that universities and faculty scientists have different goals and motivations regarding the transfer of new technology to the private sector. Acknowledging a distinction between the university and its academic researchers would revive the application of the experimental use exception as a defense to patent infringement for the scientists who drive the innovation economy of our country. Also important, this distinction has implications for the way that entrepreneurship is defined in the context of academic researchers. A better understanding of academic entrepreneurship may lead universities to restructure incentives to encourage academic researchers to participate in transferring new inventions from the laboratory to the private sector