Home > Topics > The Policy and Legal Environment for Innovation > U.S. Laws Affecting the Transfer of Intellectual Property > Editor's Summary, Implications and Best Practices

This chapter provides an overview of key legislative bills that have profoundly affected the evolution of IP rights and technology transfer in the U.S. It references the provisions of the specific bills as codified in U.S. law and explains their goals and historical context. While not an exhaustive treatment of U.S. IP law, the codification references will provide a useful starting point for those researching the applicability of these laws to particular situations.

In the U.S., the fundamental basis underlying the transfer of technology as property is in the U.S. Constitution, which also embraces trademarks and copyrights within its scope. The terms and provisions governing these forms of intellectual property are codified in various statutes, but two pieces of legislation are especially important.

The first is the Stevenson-Wydler Act, which seeks to promote the utilization of technology owned by the Federal government and generated with its help. It aids the transfer of that technology to the private sector and state and local governments. The second law is the Patent and Trademark Amendment Act of 1980—known as the Bayh-Dole Act. The Bayh-Dole Act changed the presumption of title in and to inventions made in whole or in part with Federal monies at non-profit organizations (including universities) from the government to those entities. It also established a uniform Federal patent policy and provided the first statutory authority for the U.S. government to take title to and hold patents through its agencies. The success of this Act makes it of special interest to countries seeking to establish IP regulatory systems, and this chapter explains its structure and history.

Other laws seeking to restrict or enhance the licensing of intellectual property (such as the Cooperative Research and Technology Enhancement Act (CREATE) and the legal foundations for Cooperative Research and Development Agreements (CRADAs)) are briefly considered to provide a more comprehensive view of IP law in the U.S.

This chapter also discusses patents and antitrust laws. The early historical perception that patents and antitrust principles are antithetical has been ameliorated over the years; today they are recognized as complimentary tools that enhance competition. At present, patents, per se, are not viewed as conveyers of market power. But when coupled with other assets, or when patents are acquired in order to build a monopolistic position (that is, a cartel) the can create market power. Thus, when combined with apparent predatory practices that restrain trade, such a situation will trigger antitrust scrutiny.

As this chapter makes quite clear, understanding the legal foundations for IP protection in the U.S. requires more than an understanding of the law. The legal codes respond to a dynamic IP environment, and perhaps this chapter’s most valuable contribution is its explanation of the motivation and reasoning behind the development of these laws.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• The ability for protected intellectual property to speed and support innovation has been globally recognized and accepted. Therefore, do not discourage the potential for foreign investment by erecting restrictive barriers to technology transfer and assimilation. Intellectual property is an important facet of trade and has in many circumstances become the preferred currency in foreign affairs.
• To help achieve a competitive stance in the global economy, develop a fair and balanced system for protecting intellectual property. Be aware of obligations regarding intellectual property that attach to becoming a member of WTO.

For Senior Management (university president, R&D manager, etc)

• The term “intellectual property” embraces much more than just patented technology and that, therefore, the transfer of technology can be affected by many seemingly disparate laws and regulations.
• Highly trained, creative, and imaginative technology transfer personnel, or ready access to them, are an essential ingredient for a successful technology transfer program.
• Think globally and strategically when considering IP protection. This will then, ideally, influence how an institution’s IP policies, infrastructure and implementation proceed.

For Scientists

• Your research can generate valuable intellectual property. Strive to imagine the practical commercial applications of this research.
• Understand the obligations that attach to government funding, as well as its impact on co-mingled financial support from other sources, for example corporate and government funding sources.
• If collaboration is international, know the national laws and regulations that attach to technology export and import.

For Technology Transfer Officers

• Inform any scientists that you work with about the obligations that attach to any sponsorship of their particular research programs or endeavors.
• If collaboration is international, seek counsel about restrictions applying to the exportation or importation of technology, and be sure that collaborating scientists understand their respective obligations. In addition, collaborative arrangements should be drafted so that the IP rights of all parties are preserved.
• Insure compliance with all laws and regulations governing sponsored research, especially in relation to the effect of co-mingled funds from different sources on the research and the dissemination of research results.
• Be aware of potential or actual conflicts of interest that might arise or exist. Realize that even where actual legal conflict does not exist, the perception of conflict can be damaging.
• Keep in mind the possible incursion and effect on a contractual relationship that ancillary laws or regulations may have.
• Be alert to changing laws and regulations that may affect technology transfer arrangements.