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Witnesses Say Universities Too Rigid In Licensing Patent Rights Under Bayh-Dole

Publication Date: 
July 18, 2007
Source: 
BNA Patent, Trademark & Copyright Journal
Author: 
Anandashankar Mazumdar and Yousuf Siddiqui

Professor Mark A. Lemley is quoted by BNA's Patent, Trademark and Copyright Journal commenting on the difficulties involved in patenting and licensing new technologies at universities:

Mark A. Lemley, a law professor at Stanford University, said that problems often arise from the bureaucratic structure of some universities' technology licensing offices. In order for such partnerships to be successful, he said, universities must be flexible. He suggested that the federal government might take a more active role in overseeing such licensing negotiations to ensure that they are executed more efficiently.

Bayh-Dole has been largely beneficial in encouraging the commercialization of federally funded research, Lemley said, but there have been some negative consequences, in that some universities "too often look to the short-term bottom line" in terms of "maximizing licensing fees, not improving technology transfer for the better of society."

Lemley did not encourage radical legislative action, however. He said that the "solution is largely in the hands of universities" in ensuring maximization of technology transfer.

...

Lemley emphasized that universities must make themselves aware of different licensing models and not insist on a single model across the board. For example, exclusive licensing might be appropriate for pharmaceutical applications, but in the IT field, non-exclusive licenses might be more beneficial. In some cases, it might be appropriate to forego patent protection altogether, he said.

When a university is being too rigid in its licensing negotiations, Lemley said, the government has "an important oversight role" and should "step in to require reasonable licensing," which might include imposing "march-in rights," or non-exclusive licensing schemes.