Academic entrepreneurship (defined in this case as the involvement of university faculty and researchers in commercial development of their inventions) has been a unique…
Academic entrepreneurship (defined in this case as the involvement of university faculty and researchers in commercial development of their inventions) has been a unique characteristic of the U.S. higher education system for most of the past 100 years. This long history of interaction, as well as academic patenting and licensing, contributed to the formation of the political coalitions that led to the passage of the Bayh-Dole Act in 1980. This paper reviews the evidence on university–industry interactions and technology transfer, focusing in particular on the role of the Bayh-Dole Act in (allegedly) transforming this relationship. I also examine recent research that considers the Act's effects on the formation of new, knowledge-based firms that seek to exploit university inventions. This research is in its infancy, and much remains to be done if we are to better understand the relationships among high-technology entrepreneurship, the foundation of new firms, and the patenting and licensing activities of U.S. universities before and after 1980.
Licensing from US universities is done within the overall legal framework of the Bayh–Dole Act of 1980 and the employment agreements of universities. This chapter explains…
Licensing from US universities is done within the overall legal framework of the Bayh–Dole Act of 1980 and the employment agreements of universities. This chapter explains common contracts used by universities to license technologies developed by their faculty and students within the context of these laws. In addition to the legal framework, the nature of license agreements is affected by the embryonic nature of most university inventions, which necessitates faculty and student involvement in development, and the entrepreneurial goals of the university. Universities have diverse goals in terms of revenue, licenses executed, inventions commercialized, patents filed, and number of startups formed. The somewhat obvious problem is that the goals of faculty, students, the university, and the licensee may not be aligned. Common contracts used are meant to align these goals. While some contracts include multiple terms such as upfront fees, running royalties, annual payments, and equity, Express Licenses are increasingly being used to accommodate the entrepreneurial environment. This chapter discusses these issues and also the importance of the rights to sublicense inventions.
In this chapter we provide a general overview of the university licensing process and its dramatic growth over the past decade. We then discuss the role faculty play in…
In this chapter we provide a general overview of the university licensing process and its dramatic growth over the past decade. We then discuss the role faculty play in commercialization through the licensing process. Concerns have been voiced in recent years over the possibility that the recent growth in university licensing suggests that the traditional role of faculty in the generation of “basic” research results – as well, possibly, as their role in “open science” – has been compromised. We discuss the available evidence for this downside to faculty licensing. Finally, we consider several impediments to the licensing process.
Scientific knowledge has characteristics of a pure public good. It is non-rivalrous in the sense that once generated, it is neither depleted nor diminished by use…
Scientific knowledge has characteristics of a pure public good. It is non-rivalrous in the sense that once generated, it is neither depleted nor diminished by use. Knowledge is also non-excludable since, once it is made available, in the absence of clearly defined property rights, users cannot be excluded from using it. These aspects imply that private market mechanisms will not provide adequate incentives for knowledge creation. Legal property rights, such as patents, are one means of dealing with this problem. Patronage in the form of government support for research provides another solution, as does the priority system of awarding credit for scientific discoveries to the first to find them. In the last two decades, there has been a growth in the relative importance of the use of legal property rights in the university setting and with it a growing controversy as to whether the costs may be outweighing the benefits. In this chapter, we discuss issues and evidence with regard to the ownership and licensing of publicly funded research intellectual property rights (IPR). We begin with an overview of incentives created by the patent system and discuss the ways in which these incentives differ from traditional norms of science. We then draw on the legal and economic literatures which distinguish among the incentives to invent, disclose, and innovate, and argue that the rationale for providing IPR for university research stems from the last of these. Finally, we discuss the available evidence on the creation and diffusion of academic research under current IPR regimes.
This chapter explains the structure of two contracts commonly involved in university licensing: the license granting a company (or companies) outside the university rights…
This chapter explains the structure of two contracts commonly involved in university licensing: the license granting a company (or companies) outside the university rights to make, sell, or lease products or processes based on a university invention, and the nondisclosure agreement (NDA) that plays a role in the license negotiation process. In the context of the Bayh–Dole Act, the chapter explains that license contracts often contain a complex combination of payment terms intended to provide sufficient incentives for licensees to undertake the (often risky) development of embryonic research. The authors relate the intent of the Bayh–Dole Act to the concerns of university licensing professionals who often negotiate licensing agreements. The chapter then examines the same incentive issues (and the universal contract issues of money, risk, control, standards, and endgame) in the context of NDAs, used by potential licensing partners to protect their respective interests while sharing information about a licensable technology. The chapter concludes with an assignment that provides students with an opportunity to evaluate a license, not from the university's perspective but from that of a client interested in licensing an invention owned by the university.
The author considers the success in practice of small firms in obtaining technology and new products from universities, under licensing agreements and through other…
The author considers the success in practice of small firms in obtaining technology and new products from universities, under licensing agreements and through other technology transfer activities. His analysis draws heavily upon research into the use of technology licensing by small and medium sized firms, carried out at Bath University over the previous three years.
The purpose of this paper is to explore the relationship between consumers’ purchase motivations to show support for university programs and the influence of merchandise…
The purpose of this paper is to explore the relationship between consumers’ purchase motivations to show support for university programs and the influence of merchandise quality cues on their purchase decision, and examine how one's affiliation with a university (official or non-official) moderates this relationship.
This research utilized a mail survey of university bookstore customers from the USA and Canada. The university, located in the USA, has an international reputation for its academic programs, its athletic teams, and its religious affiliation.
Our findings demonstrate the significance of athletic programs over academic programs and religious values in motivating purchases of licensed university merchandise.
These findings have significant implications for several stakeholders in the business of retailing licensed merchandise. In particular, university licensors and their bookstore retailers may consider managing their inventory of licensed products to reflect the greater relative importance athletic teams have in the purchase decision process.
This paper adds to our understanding of customer motivations to purchase university licensed merchandise, and the conditions when merchandise quality is a key decision driver.
As the university–industry collaboration (UIC) gradually attracts the attention of various national governments, the number of studies on UIC has increased substantially…
As the university–industry collaboration (UIC) gradually attracts the attention of various national governments, the number of studies on UIC has increased substantially. Past UIC studies have mostly focused on investigating the incentives and the motivation for UIC, forms of UIC and performance output of UIC. However, they have not actively identified the key technologies and technology distribution that are conductive to the commercialization of UIC outcomes. Therefore, this study aims to adopt the licensed UIC patents as the basis for analysis and to construct a patent licensing technology network.
This study focused on licensed patents because past studies have indicated that such patents usually have higher value. Moreover, patent licensing can be seen as the final step for the commercialization of UIC outcomes. Finally, past studies have rarely explored patent examiners’ views on key technologies. However, during the substantive examination of patents, patent examiners often use their background knowledge regarding the technology to include citations to other patented technologies that they consider valuable or indispensable. Therefore, this study focused on investigating the patents recognized and cited by patent examiners and conducted key technology identification.
The results indicated that past key technologies in UIC focused on surveying, medicine, biochemistry and electric digital data processing; these fields are crucial to the commercialization of key UIC technologies. Finally, the USA, Japan, Sweden and Germany play critical roles in the network of global university–industry cooperation and technology licensing.
Patent examiners’ perspectives were adopted to establish a patent licensing technology network, through which the key technologies that could promote UIC patent licensing were mined. This study can also serve as a reference for resource allocation in university research and development and for governments to promote new technologies.
We review and synthesize the burgeoning literature on institutions and agents engaged in the commercialization of university-based intellectual property. These studies…
We review and synthesize the burgeoning literature on institutions and agents engaged in the commercialization of university-based intellectual property. These studies indicate that institutional incentives and organizational practices play an important role in enhancing the effectiveness of technology transfer. We conclude that university technology transfer should be considered from a strategic perspective. Institutions that choose to stress the entrepreneurial dimension of technology transfer need to address skill deficiencies in technology transfer offices, reward systems that are inconsistent with enhanced entrepreneurial activity, and education/training for faculty members, post-docs, and graduate students relating to interactions with entrepreneurs. Business schools at these universities can play a major role in addressing these skill and educational deficiencies through the delivery of targeted programs to technology licensing officers and members of the campus community wishing to launch startup firms.