RETHINKING OWNERSHIP OF THE PATENTS GENERATED FROM A FEDERALLY-FUNDED RESEARCH

The governmentally-funded research has a long history in the United States. The major change in the federal level is the passage of the Bayh-Dole Act of 1980 which authorizes the federal agencies to apply for and hold patents generated from federally-sponsored researches and further to grant an exclusive or non-exclusive license of such patents to private sectors. Under the Bayh-Dole Act, universities may retain titles to inventions from federally-sponsored researches. But, there may be a question of whether a university or inventor may own the patent right. This article will discuss the patent ownership issue, and particularly focus on the management aspect. A model of four stages is proposed for resolving the patent ownership issues. The first stage is default assignment. A university may rely on a professor’s intent of taking over a licensing job to decide whether to retain the ownership itself or to have a professor retain the ownership. The second stage is adjustment. A university may adjust the allocation by estimating a professor’s ability to handling licensing, the nature of the patent, the potential private licensees or funding resources, and the resources of the UTT office. The third stage is continuous monitoring. A UTT office should regularly review the licensing project of a patent. The fixed-term approach is proper because it can give a trend of the marketability of a patent. The last stage is reconsideration of ownership. At this stage, the information collected during the third stage will help a UTT office reconsider the proper allocation of the patent ownership.