On December 12, 1980, Congress passed the Bayh-Dole
Act. This legislation gave universities the right to commercialize inventions
created with the support of federal funding. Congress' goal in passing the
Bayh-Dole Act was to commercialize more inventions and to make beneficial
technology available to more of the public.
The Office of Technology Management
at Washington University in St. Louis helps federally funded technologies
reach the public. According to the most recent data, the University
has over 150 NIH-funded inventions, with approximately half of these
being licensed to private companies through exclusive or non-exclusive
agreements. These license agreements have benefited society, the
University at large, specific departments and individual faculty
members.
The inventors at Washington University
play a crucial role in helping the University comply with the Bayh-Dole
Act. We urge you to disclose federally funded inventions to the Office
of Technology Management as well as to the funding agency (e.g.,
NIH, ACS, NSF, FDA). We will do our part to actively market these
technologies and report our activities to the funding agencies. Marketing
activities lead to the licensing of technologies for the public welfare.
Active reporting helps ensure further funding for Washington University
and its associated faculty and staff. If you have any questions about
government reporting, please call us at (314) 747-0920.
The University encourages you to publicly
disseminate the results of your research to provide the public with
the benefits of your endeavors. This is usually accomplished through
publication of your research results in peer-reviewed journals or
through oral presentations at seminars and symposia. An alternative
is to bring the fruits of your research to market with the assistance
of a commercial partner. This is a potentially valuable strategy,
particularly when the research results in an invention that can form
the basis of a product or process that meets a market need. Typically,
companies will not invest in a new technology without having proprietary
rights to the underlying invention. Therefore, to facilitate this
strategy, it is usual to seek protection of the intellectual property
(IP) through filing of a patent before disclosing the research results.
You can do this quickly and still meet publication deadlines.
Whether the research has been funded
by a federal or state government, by a foundation, or by a for-profit
industrial corporation, the University has a right of ownership in
all inventions that have been developed using significant University
resources. For federally funded research, this right has been granted
to the University through the Bayh-Dole Act, under which the University
can elect title to all inventions arising from government grants.
This right is predicated on the requirement that the University seek
IP protection (where feasible) and diligently pursue industrial partners
so that the public reaps the benefit of the research. When an industrial
partner has sponsored the research, it invariably allows the University
to own the fruits of the research and, in return, to grant the sponsor
an option to obtain a license to any inventions. For the University
to formalize its rights, you will be asked in certain circumstances
to sign a document transferring ownership of your invention to the
University.
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