Bayh-Dole Coalition Statement on the U.S. Patent and Trademark Office’s Flawed Call for Ideas to Accelerate American Innovation

Bayh-Dole Coalition Statement on the U.S. Patent and Trademark Office’s Flawed Call for Ideas to Accelerate American Innovation

WASHINGTON, D.C. (April 15, 2024) — The U.S. Patent and Trademark Office (PTO) recently issued a request for comments “on ways to accelerate and incentivize the commercialization of innovation, including green, critical, and emerging technologies.” Joseph P. Allen, Executive Director of the Bayh-Dole Coalition, released the following statement on the request:

“The USPTO’s recent request for comments appropriately notes that ‘American innovation is a cornerstone of our strong, vibrant economy. Bringing emerging and early-stage innovations to the marketplace spurs entrepreneurship and other economic activity, helps create jobs, and contributes to economic prosperity. Intellectual property (IP) plays a key role in the commercialization process, forming the bridge that moves innovation to impact for the benefit of society. Without IP commercialization, we might not have the search algorithm, the artificial lung, or lifesaving COVID-19 therapies.’

Unfortunately, the USPTO’s notice contains a fatal flaw. It precludes mentioning the Biden administration’s recently proposed framework to undermine the Bayh-Dole Act, which forms the cornerstone of America’s innovation system.

While we recognize that this constraint was forced on our friends at the USPTO by political operatives, we are compelled to speak out on behalf of our members who have been asked to submit comments under this constraint. The USPTO’s request is analogous to removing the foundation of a building while asking for recommendations on interior paint colors. It is a futile exercise.

The Bayh-Dole Act has been appropriately called “possibly the most inspired piece of legislation to be enacted in America over the past half century,” and according to The Economist Technology Quarterly, “more than anything, this single policy measure helped reverse America’s precipitous slide into industrial irrelevancy.”

That is not just an exaggeration. Before its passage in 1980, federally-funded research mostly gathered dust on the proverbial shelves of federal agencies which owned the patent rights on any discoveries, because there were virtually no incentives for private companies to invest the considerable funds and effort required to turn that research into useful products.

Bayh-Dole changed all that by decentralizing the management of federally-funded research from Washington agencies to the academic research institutions, small companies, and federal laboratories that receive research grants. It provided the incentives and authorities to license that research for commercial development, forming the basis for our system of public and private-sector collaboration which makes the United States the most innovative country in the world. Small companies receive more than 70% of university patent licenses and drive innovation in all fields of technology.

Unfortunately, all of that is now at risk under the looming shadow of the Biden administration’s pending march-in framework. It turns Bayh-Dole on its head, making the law a cudgel to attack entrepreneurs by allowing anyone to petition the government to relicense patents whenever they feel the price of a product stemming from federally funded research isn’t “reasonable” — a completely undefined term. This weapon could be employed by competitors, those seeking to shake down innovative small companies, or even foreign interests.

In one fell swoop, the framework reverts us to the pre-Bayh-Dole-era, when government-funded inventions were considered toxic by our private sector.

With this in mind, consider some of the questions the USPTO poses, where this fundamental attack on our system cannot even be mentioned:

  • Please identify the biggest challenges to, and opportunities for, commercialization of innovation through use of the intellectual property system.
  • Please identify any IP-related challenges that interested parties face when licensing or acquiring technologies and identify any changes in the law, policies or practices which could help alleviate these challenges.
  • Are there any IP-related challenges or opportunities that are specific to commercializing green technology and climate technologies?
  • Please identify challenges that interested parties face when attempting to identify potential licensees, and when licensing intellectual property.

An honest answer to these, and other questions being posed, is that the most serious challenge is the destructive impact of the march-in framework which threatens not only green technologies, but desperately-needed breakthroughs across the board.

The Bayh-Dole Coalition appreciates the USPTO’s efforts to improve our intellectual property system and are eager to assist that effort. Unfortunately, the current solicitation cannot possibly succeed given the limitations imposed on it.”

About the Bayh-Dole Coalition: The Bayh-Dole Coalition is a diverse group of innovation-oriented organizations and individuals committed to celebrating and protecting the Bayh-Dole Act, as well as informing policymakers and the public of its many benefits.