Intellectual Property Technology Transfer

Citation

Hannabuss, S. (2007), "Intellectual Property Technology Transfer", Library Review, Vol. 56 No. 2, pp. 157-159. https://doi.org/10.1108/00242530710730376

Technology transfer is the process of getting ideas and inventions out of the research environments where they are developed and into the hands of those who will commercialize them. This definition on page 3 sets the scene for what is to come in this important and authoritative work. Its scope is assured, bringing together, above all for a specialized US readership (of those engaged in the legal and administrative aspects of technology transfer), the key issues of how rights are regulated, intellectual property protected, technology transfer rights (in, say, university research) are managed, what risks and liabilities need to be considered and the importance of confidentiality, and conflicts of interest between stakeholders (such as those who fund and those who develop, innovators and licensees, organizations and employees). For readers unfamiliar with the output of BNA Books (websites www.bna.com and http://bnabooks.com), other intellectual property titles likely to be of interest include Lee Hollaar's Legal Protection of Digital Information, Hugh Scott's Computer and Intellectual Property Crime, G. Peter Albert et al.'s Intellectual property Law in Cyberspace, and Steven Lundberg and Stephen Durant's Electronic and Software Patents. There is also a series on patent and trademark law, as well as the widely known McCarthy's Desktop Encyclopedia of Intellectual Property by Thomas McCarthy (3rd ed., 2004). They are pricey but classic works.

By this token, Intellectual Property Technology Transfer captures many of the current concerns and developments in the field, from the interpretation of law by non‐profit enterprises and laboratories and universities, to the administrative processes emanating from that (including the legal documentation that needs to be drawn up to protect the interests of key participants). Central to the discussion in the USA is the Bayh‐Dole Act (1980) on inventions made by non‐profit organizations and small businesses, with of course its federal application, but equally important is the body of case law at more local (i.e. state) level, where cases like Genentech v. the University of California 1998 and Verizon v. Maryland 2002 open up the wide range of issues across which disputes arise (patents and trademarks and copyrights, in fields as varied as telecoms and pharmaceuticals, software and environmental impact control). Readers will know that the importance of case law in the USA, and the decisions there, tend to shape what happens more substantially than they do, say, in Europe.

Aline Flower has brought together a highly credible, and complementary, team of contributors for this work, including several from the Palo Alto (California) legal firm of Pillsbury, Winthrop Shaw Pittmann LLP (with contributions on university technology transfer rights and infringement and product liability in the transfer of university and laboratory‐owned technology, Chapters 4 and 5). Flower herself is the Manager of Legal Affairs at the Invention Licensing Technology Transfer Office at the University of Washington in Seattle. She contributes to Chapter 6, on the ownership of intellectual property in academic institutions and other federally‐funded research settings, along with Nicki McCraw from Carney Badley Spellman, also of Seattle. Wesley Blakeslee (Johns Hopkins University) and Michael Goldstein (Dow Lohnes of Washington, DC) contribute the final chapter, on entrepreneurship and conflicts of interest. There are some 120 pages of sample documents in the appendices, and these include numerous agreements for university technology transfer rights (reciprocal confidentiality agreement, and exclusive licence and software licence agreements), as well for the ownership of intellectual property in academic institutions and other federally‐funded research settings). The index is well‐designed and effective.

Bayh‐Dole realigned law by presuming patent ownership in non‐profit organizations and small businesses that received government funding. Exceptions exist, like for security. Patent rights are allocated to “subject inventions”, inventions being predictably those protectable and patentable under federal law. The operation of the Act is examined with reference to disclosure arrangements, rights to title, the rights of government, and obligations in procurement and commercialization. Trade secrets and copyright subsist under “data rights”, rights which can be limited or not. Collaborator factors and employee rights are also central. All this in Chapter 1. Federal law also provides for government to practise any US patent of copyright under certain conditions. Universities have become much more involved in entrepreneurial activities with spin‐out companies and the like, and so it is understandable that several chapters of the book are dedicated to them and their concerns. Complex issues emanate from this, like the suability of the government itself (the case of Hans v. Louisiana 1890 is reviewed) as well as due process issues associated with the 14th Amendment and the case of Florida Prepaid in 1994. This in Chapter 2.

There is an extensive chapter (4) on university technology transfer rights, likely to be read with greatest attention by anyone employed in that section of university work (more and more are because of the need to develop revenue streams from the commercialization of research and development). Some have done remarkably well, like MIT, but many initiatives fail to break even, arguably because of risk‐sensitive investment sentiment and, down the track, low royalty rates. “Publish or perish” also sits awkwardly with effective entrepreneurship. Models of IP management, the disclosure and determination of rights, reporting and marketing, the fit between universities and industry, sponsorship and licensing. A focus is given on spin‐out companies and business incubators, potential conflicts of interest there, and the dynamics set up by receiving grants from government and from working in collaborative partnerships. Details at this point are exclusively US in approach, known best and needed most by universities that deal with bodies like the National Science Foundation, and by federal laboratories themselves (that may deal with the Public Health Service or the Department of Defense). Here, too, are public access and freedom of information issues (under the Freedom of Information Act 1966), and act which fails to define a “trade secret” which is consequently interpreted widely under wider considerations of confidentiality. Case law, like Forsham v. Harris 1980, is relevant here.

Chapter 5 moves on to liability issues – infringement and product liability, and the dilemma of risk allocation when technology is transferred by/from the university or laboratory. This area of tort law seems straight‐forward (e.g. applicable copyright law) until we factor in sovereign immunity criteria for government and, again, the varied outcomes from US case law. Further to that (Chapter 6) is the issue of who owns the intellectual property rights when innovations are made in universities and other settings. Contracts have express and implied terms, and presumptions are made about ownership, but terms like “employee” and “within the scope of employment”, so familiar to anyone involved in knowledge work and the ownership of IP, are susceptible to interpretation, above all what the concept “works made for hire” really entails. If employees are “hired to invent”, or are seen to do so, then things get legally complex very quickly. A wide range of law is reviewed here, including decisions made by the US Supreme Court itself. Chapter 8 teases out entrepreneurship and conflicts of interest.

Finally there are matters like technology transfer considerations for research conducted at foreign universities (Chapter 7) and an analysis of export controls and national security, where not only are there issues of rights ownership and confidentiality, but also politically‐charged matters to do with national integrity and global corporate governance. Summing up, this is a topical and well‐designed study bringing together the main critical and procedural issues in this emerging and important field. Its US context makes it of particular value to readers there but the legal issues and decisions, and the impact of interpretations on policy‐making and practical administration in technology transfer, give it wider resonance. Small editorial slips (like a running head mis‐spelling “sovereign”) are peccadilloes when the merits of the book itself are considered. For any serious specialist legal and technology collection, and probably also a desirable addition to the office‐based resource base in a technology‐transfer and IP unit and a spin‐out company in a university, above all one actively involved with research park collaborators.