Patent Reform and University Research

by Doug Lederman
Published at

With Congress weighing legislation that would alter federal laws governing the process of patenting inventions, including the fruits of university research, there might have been any number of reasons why the Senate Judiciary Committee would hold a seemingly broad-based discussion like the one it scheduled Wednesday afternoon, entitled The Role of Federally Funded University Research in the Patent System.

But as the discussion unfolded, it became clear that there was a very specific explanation for the hearing — an effort by one prominent senator to draw attention to the plight of one of his constituents, Iowa State University. Sen. Charles Grassley (R-Iowa) was not shy about thanking the committee’s Democratic chairman, Sen. Patrick Leahy of Vermont (“You said you’d hold a hearing, and you always keep your word”) for essentially concocting a framework in which Iowa State officials could balk at a provision in federal patent law that requires nonprofit entities that operate federally owned labs to return funds to the government if the royalties they earn on federally licensed inventions exceed 5 percent of their annual budget.

Ames Laboratory, an Energy Department lab that Iowa State operates for the government, is the only such lab that has ever hit the threshold, paying the U.S. Treasury $1 million in 2006 because of its success in licensing the rights to a lead-free solder that was developed in part by researchers at the lab.

With encouragement from Grassley, Elizabeth Hoffman, executive vice president and provost at Iowa State, testified at Wednesday’s hearing that the 5 percent limitation unfairly affects small labs like Ames, while mammoth labs like Sandia National Laboratory, its partner on the solder research, never get close to the 5 percent threshold because their operating budgets are so much larger. She urged lawmakers to amend the Bayh-Dole Act — the 1980 law that set the guidelines for how nonprofit institutions have retained title to inventions resulting from federally funded research, filed patents and sold licensing rights to small businesses and corporations — by raising that threshold to 15 percent for “government-owned, contractor-operated” labs with annual budgets of under $40 million.

“Any such limitation must not discriminate against only a portion of government-owned, contractor-operated, nonprofit entities,” she said. “Certainly, it should not have an inequitable impact on a single, small and successful national laboratory.”

While Grassley endorsed Hoffman’s proposal — which was modeled on legislation that has been approved by the House of Representatives and introduced by Grassley in the Senate — Leahy, the only other senator to attend Wednesday’s hearing, expressed skepticism about it. If Congress raises the royalty threshold to 15 percent of a nonprofit’s budget instead of 5 percent, and Iowa State strikes gold with another invention, “won’t you want to change [the threshold] again?” Leahy asked.

“I hope we’re so successful,” Hoffman said. “At this point in time, we would be happy with the 15 percent.”

“At this point … I understand,” Leahy said with a smile.

Aside from the Iowa-centered pretext for Wednesday’s hearing, the discussion that unfolded did not point to any major transformative changes in the Bayh-Dole Act, even from witnesses who criticized some aspects of the law. Hoffman and the other witness who spoke on behalf of a university, Charles F. Louis, vice chancellor for research at the University of California at Riverside, heralded Bayh-Dole as an “inspired piece of legislation,” as Louis put it, that has helped universities transform the financial research support of the federal government into inventions and spinoff companies that have reaped huge benefits for taxpayers and the country. They, echoing calls by major higher education groups, urged Congress to take a hands-off policy and avoid any changes that would make it harder for universities to protect their patents and the rights to their inventions.

Arti K. Rai, a professor of law at Duke University School of Law, agreed that there was no need for lawmakers to contemplate “a major overhaul of the current system” by which universities patent government-funded research. But she argued that the incentive the government gives universities to patent inventions may not be as appropriate in all fields of research, singling out information technology in particular as an area in which the federal interest may lie more in having discoveries hit the market as open source applications rather than as patented products.
“At universities, there is sometimes too much emphasis on generating revenue,” Rai said. “Federal agencies and universities should show more sensitivity” to the idea that certain types of research might be better developed in non-commercial ways.

Robert Weissman, director of Essential Action, a nonprofit group that focuses on improving access to medical treatments and drugs, among other corporate issues, said Bayh-Dole had contributed to a situation in which medicines invented by university researchers have been licensed by drug companies that have priced the treatments out of the reach of many potential beneficiaries, in America and abroad. He also argued that the commercialization of university research, encouraged by the law, has helped create a culture of secrecy and increased institutional conflicts of interest.

He urged government officials — though not necessarily Congress — to ensure that the federal government does not let inventions it has helped pay for be priced and controlled in ways that rip off the government and its citizens, a threat that he envisioned increasing as the government sponsors more research into energy technologies in the coming years. “To address the frightening perils of climate change, we will need robust, competitive and efficient energy and energy services markets,” Weissman said. “There should be a presumption favoring open and collaborative development models that enable market players to obtain compensation through means other than enclosing the information commons and monopoly pricing.”