AUTM’s Recommends Narrow Changes to NIST on the ROI InitiativeJuly 27, 2018

The National Institute of Standards and Technology (NIST) recently issued a public Request for Information for the Return on Investment (ROI) Initiative. The Association of Technology Managers (AUTM), who supports the ROI Initiative, stresses in their response that the fundamental principles of the Bayh-Dole Act be preserved. As pointed out by AUTM, Bayh-Dole has significantly contributed to the commercialization of federally-funded projects due to four main principles. Specifically, decentralizing the ownership of technology, establishing clear rules that are uniform across all government agencies, create strong incentives for university-industry partnerships, and clarifying patent ownership. For example, prior to Bayh-Dole, not a single new drug was developed when the government would have owned the patent rights. However, since Bayh-Dole there have been approximately 200 new drugs and vaccines have been developed. AUTM also warned that lax oversight was threatening Bayh-Dole.

AUTM’s recommendations center around reinforcing the four reasons why Bayh-Dole has been so successful, such as improving clarity in subject matter eligibility and fixing inter partes review (IPRs). Further, AUTM recommends that a dedicated office at the Department of Commerce or additional resources be allocated to NIST to properly oversee Bayh-Dole to ensure that Bayh-Dole is maintained. Additionally, AUTM recommends streamlining procedures and adopting the best practices across all federal agencies to make it simpler for potential licencors to satisfy requirements like the public posting.

AUTM also urges federally funded researchers and private business to work more closely so as to better understand the needs of one another, for example, by clarifying policies and practices to the other and attending conferences outsides what they would normally attend. This would increase the potential for more licensing and more innovations being commercialized. AUTM also recommends providing more incentives, like factoring technology transfer into performance reviews, or tax-exempt bonds for business to work with research facilities.

Ultimately, AUTM argues for the clarity of Bayh-Dole to be maintained. This will allow research facilities, like universities, to continue to use federal funding to perform the basic research that private businesses won’t do, but still allow clear title of the invention for private businesses to feel secure investing in and bring those inventions to market, as most universities are unable to commercialize their inventions.

 

Oliver P. Couture is an Intellectual Property Attorney in the Biotechnology & Chemical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Oliver directly via email at oliver.couture @ipmvs.com .

 

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