Further questioning of the Bayh-Dole Act
These proposals are not radical; if U.S. taxpayers are funding the risky research, they should have a hand in how its successes are
commercialized. This is not to say that private patent rights should be weakened; where private capital is at risk, reward should flow to the risk taker. But where public funds are at risk, IP policy for those patents that result should be adjusted to produce the maximum economic return for the public. n194 If recipients of
federal funding are able to own and exclusively license foundational IP in nanotechnology, this delegates this IP policy making to the owners or exclusive licensees of the IP - typically private universities. While it appears this has on occasion been successful in the past (in the case of the Boyer-Cohen patent), success is not guaranteed because this delegation would then take place without
public accountability. The evidence presented to support the passage of the Bayh-Dole Act came out of the pharmaceutical field, where a single patent covers an entire substance and the costs of commercialization justify exclusionary rights. n195 In contrast, where there are interlocking inventions that cumulatively build up a technology (information technology being one and [*514]
nanotechnology likely another), n196 the blunt edge of the Bayh-Dole
Act may need some honing. The public funding agencies should be exercising their authority to determine and execute IP policy of publicly funded patented innovations in nanotechnology in a manner that, as the statute states, promotes the most rapid adoption of foundational innovations in the field and produces the most beneficial result for the U.S. economy.
15 Alb. L.J. Sci. & Tech. 477 (2005)