Notes

1 Because universities are the dominant component of the nation's public research enterprise, we use the terms university and academic as a collective that also includes noncommercial academic and think-tank research centers and certain nonprofit centers formed by industry consortia, to which most of the observations in this chapter also apply.

2 The term technology transfer is sometimes used more broadly to embrace most any licensing of technology between entities, such as a catalytic process licensed by a major chemical corporation to a major refiner. We use it here in the narrower sense described earlier.

3 Caltech's OTT does no traditional technology marketing and yet is widely acknowledged to have among the country's most fertile tech transfer programs, despite the institute's small faculty.

4 Indeed, very large donations exceed amounts that any successful technology ever can be expected to yield directly. For example, Broadcom co-founder Henry Samueli contributed $30 million to the UCLA Engineering School, and venture capitalist Mark Stevens gave $22 million to USC for an Institute of Technology Commercialization. Inventor and businessman Arnold Beckman has contributed in excess of $100 million to Caltech and large sums to other schools as well, and Gordon Moore's commitments to Caltech exceed $500 million.

5 In the commercial world, patents are typically born as trade secrets by virtue of the implicit status of private information held by a company's researchers. In the academic world, one rarely counts on such protection for two intertwined reasons: The spirit of the academy has a big component of sharing knowledge, and so any initial discovery is soon out of the bagfor example, by disclosure at scientific symposia or by exchange between colleagues far and wide; moreover, participation in a lab and its discussions can be very fluid, so not only the number but also the diversity of people involved (students, visitors from other universities, lab techs) makes keeping secrets problematic. By contrast, effective legal enforcement of trade secret protection requires that the owner have treated the subject matter as a trade secret, which means, at least in court, a showing of reasonable security procedures and signed NDAs with all who have had access to the information. Relatively few university research facilities are likely to withstand the scrutiny of such a review.

6 The bulk of research funding for universities comes from the U.S. government and is subject to the 1980 Bayh-Dole Act (35 U.S.C. ยงยง 200-212). If a university does not want to carry the burden of prosecuting the patents associated with a discovery, it must timely so inform the U.S. government, which may choose to patent the invention.

7 Under the Bayh-Dole Act, where the research was at least partially supported by federal funding, the U.S. government retains significant usage rights even if the license agreement from the university to a third party is for exclusive rights.

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