Editor's note: Laura A. Schoppe is the president and founder of Fuentek, LLC, a consulting firm that provides intellectual property and technology transfer services.
On May 22nd, Sens. Moran and Warner were joined by Sens. Rubio and Coons in introducing Startup Act 2.0, a revised version of legislation proposed last December that contained questionable provisions to allow university professors to choose their own agents to help transfer their technology rather than be tied to their home university's technology transfer office (TTO)--the so-called free agency provision.
I dug into the new legislation, comparing it to the original wording, to figure out exactly what's changed (besides the fact that the accelerated commercialization of research provisions are now part of Section 8 rather than 7). Here's what I figured out.
This legislation is not much better than the original version when it comes to the free agency issue in managing university intellectual property (IP). All of my previously stated concerns (as well as those stated by AUTM®) about the practicality of giving individual innovators authority to commercialize their own technologies still holds.
But let's look at the specifics in the bill.
The Grant Program in General
Capacity Building Grants vs. Accelerator Grants
Awarding of Grants
At the end of Section 8 (on page 32), the bill explicitly states that nothing in the section changes the Bayh-Dole Act, which specifically authorizes the institution to hold the IP rights and therefore control the decisions on commercialization. This control also includes an institution's ability to "release" the technology to the innovators to allow them to expend their own resources (time and money) to patent, license, and otherwise commercialize the technology.
It's kinda funny that this aspect of how TTOs can release the IP to the innovator is equivalent to the desires of Kauffman's free agency concept but provides clarity on authority and responsibility.
Well, I guess you'd need a pretty dark sense of humor to find that funny.
This story originally appeared in TechCrunch.
