Tech Transfer: Everything (Patent) is Never Quite Enough

35 Pages Posted: 7 Oct 2010 Last revised: 25 May 2014

See all articles by Llewellyn Joseph Gibbons

Llewellyn Joseph Gibbons

University of Toledo - College of Law; Fellow, Intellectual Property Rights Center

Date Written: May 5, 2010

Abstract

All forms of intellectual property may be necessary for the effective commercialization of a patent. Nevertheless, while the Bayh-Dole Act is an explicit recognition by Congress of the need to allocate patent rights in order to promote a policy of commercializing the products of federal research funding, it is silent on other salient intellectual patent rights such as trade secrets and copyrights. The ownership of trade secrets and copyrights must be clearly accounted for and their ownership allocated as part of the commercialization process. While state governments can provide clearer laws on the ownership of trade secrets, federal law would preempt most state laws that would purport to change the 1976 Copyright Act’s default rules. This article does not advocate a radical change in the status quo regarding the allocation of intellectual property rights between faculty members and universities. A university must have a carefully-nuanced intellectual property policy that promotes a myriad of goals from those of the university as trustee of our intellectual heritage of open publication and debate, to the university as a not-for-profit, revenue generating, self-sustaining research institution, to the duties of the university as a corporate body of independent self-governing scholars. Absent some statutory change, universities should adopt a nuanced set of intellectual property policies that recognize the university's interest in different forms of intellectual property and differing embodiments of intellectual property The university’s interest in a faculty-authored scholarly tome or journal article is quite different from its potential interest in a faculty-authored computer program or laboratory notebook - especially when these are associated with university owned patents. Without university capture, these works would not be developed, commercialized, or disseminated. In some cases, such innovations are necessary for the commercialization of university-owned patent rights.

Keywords: Bayh-Dole Act, University Technology Transfer, Intellectual Property, Faculty Intellectual Property Rights, Teacher Exception, University Trade Secrets

JEL Classification: O30, O31, O34

Suggested Citation

Gibbons, Llewellyn Joseph, Tech Transfer: Everything (Patent) is Never Quite Enough (May 5, 2010). University of Louisville Law Review, Vol. 48, pp. 843-876, 2010, University of Toledo Legal Studies Research Paper No. 2011-05, Available at SSRN: https://ssrn.com/abstract=1687425

Llewellyn Joseph Gibbons (Contact Author)

University of Toledo - College of Law ( email )

2801 W. Bancroft Street
Toledo, OH 43606
United States
419-530-4175 (Phone)
419-530-7878 (Fax)

Fellow, Intellectual Property Rights Center ( email )

No.143, Wuluo Road
Wuhan, Hubei 430073
China

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