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Missing the point on Bayh-Dole

By Lawrence B. Ebert, Esq.

In early September 2008, the New York Times had an article titled When Academia Puts Profit Ahead of Wonder which was negative to the Bayh-Dole Act and included text such as

The primary concern is that its original intent ? to infuse the American marketplace with the fruits of academic innovation ? has also distorted the fundamental mission of universities.

AND

today?s universities function more like corporate research laboratories. Rather than freely sharing techniques and results, researchers increasingly keep new findings under wraps to maintain a competitive edge. What used to be peer-reviewed is now proprietary. ?Share and share alike? has devolved into ?every laboratory for itself.?

In trying to power the innovation economy, we have turned America?s universities into cutthroat business competitors, zealously guarding the very innovations we so desperately want behind a hopelessly tangled web of patents and royalty licenses.

One blog criticized the Times article, and then another blog criticized the first blog, writing:

It remains unclear what justifies Noonan's position, the very premise behind Bayh-Dole: that universities should be able to profit from government (theoretically public) funds in such a manner. To hell with the patent sovereign immunity of state universities, that can have their cake and eat it too. Equitably, state university patenting is a game of dirty pool. If the public paid for the research, put it in the public domain, and let the conglomerates run with it, if only because the government is too stupid to make money with patents, and Joe Sixpack taxpayer can't use it, but might get a job with Mega-Tech Corporation, shipping the box out that holds the patented invention.

The New York Times article was not well thought out. A better criticism of the Bayh-Dole Act appeared in Fortune in 2005 (see IPBiz post: Fortune on Bayh-Dole: a litigious scrum of data-hoarding and suspicion. The Supreme Court case Merck v. Integra could have been captioned Scripps v. Burnham. The recent case of Carnegie-Mellon v. Hoffmann-LaRoche, as well as the internally-cited University of Rochester case were marvels of university overreaching, each case lost on summary judgment. The Axel patent cases revealed the greed of Columbia.

Comments within the first blog were not well thought out:

Similarly wrong are the purported consequences of the infiltration of filthy lucre into the ivory towers of academe. The piece bemoans that "[b]lue sky" research... has largely been set aside in favor of projects considered to have more immediate market potential." Perhaps a quick perusal of the grant proposals to the National Institutes of Health or the National Science Foundation would have helped, since these are replete, even today, with exactly this kind of "blue sky" research.

In IPT in 1999, LBE wrote:

In a guest editorial in the September 6, 1999 issue of Chemical & Engineering
News n10 (at the invitation of Madeleine Jacobs), Professor Allen J. Bard
observed that there is a trend in scientific writing in which "applications are
implied to be just around the corner and, generally, the tone is more
appropriate to Madison Avenue than sober science" and "in which, all too
frequently, the obstacles to real world applications are never mentioned." Bard
further noted: "As the pressure has increased to show applications of research,
scientists who are doing sound and interesting basic research feel it is
necessary to tie these studies, however tenuously, to possible applications.
The danger here is that unfulfilled promises can lead to good programs being
canceled when practical systems aren't immediately forthcoming."

[Inherent Difficulties, p. 28, IPT (Nov. 1999)]

Also in the article was the text:

In the July, 1999 issue of IPT, we discussed issues associated with the
alliance of Novartis with the Department of Plant and Microbial Biology at the
University of California at Berkeley. n7 The present economic reality is that
less than half of the funding of research arises from the federal government,
with the bulk from private enterprise. n8 An issue that has been raised is
possible bias in the reporting of science results because of the possibly
"interested" nature of the private support. n9 Less frequently discussed is the
influence on the reporting of science results because of pressures from
government funding.

In the context of a later article about the Busch report, which investigated the propriety
of the Berkeley/Novartis interaction, LBE noted some odd-doings with some
Bayh-Dole patents, which would render nugatory some of the NYT text, such as

R. Stanley Williams, a nanotechnologist from Hewlett-Packard, testified to Congress in 2002 that much of the academic research to which H.P. has had difficulty gaining access could be licensed to several companies without eroding its intellectual property value.

***See also

Thinking negatively about Bayh-Dole

Busch report on Novartis/Berkeley research arrangement

And, of course, how could one criticize Bayh-Dole without mentioning the Metabolite case, Crichton, and Lemley?

See Michael Crichton assails Metabolite case but ignores the academic connection

And, of course, to see how some of the premises behind Bayh-Dole can become problematic, see Proposition 71 and CIRM.
QED. But, at least that won't be happening in New Jersey in the near future.

Full post as published by IPBiz on September 09, 2008 (boomark / email).