Columbia university's axel patents

Technology transfer and implications for the Bayh-Dole Act

Alessandra Colaianni, Robert Cook-Deegan

Research output: Contribution to journalReview article

20 Citations (Scopus)

Abstract

Context: The Bayh-Dole Act of 1980, which gave federal grantees and contractors the right to patent and license inventions stemming from federally funded research, was intended to encourage commercial dissemination of research that would otherwise languish for want of a patent incentive. The case of Columbia University's Axel patents, which claimed a scientific method to introduce foreign proteins into nucleated cells, illustrates a secondary outcome of the Bayh-Dole Act: the incentive for federal grantees and contractors to pursue royalty revenues from patented research, even for inventions for which commercial use did not require patents. Methods: This article describes oral interviews with two of the three inventors and a former high-ranking administrator at Columbia; correspondence with several faculty members at Columbia to obtain key royalty figures and information about Columbia's licensing strategy; patent searches; examinations of legal records of court proceedings; and analysis of citation trends for the seminal papers disclosing the invention of cotransformation. Findings: Columbia University and the inventors profited handsomely from the Axel patents, earning $790 million in revenues through licensing arrangements that tapped profits from end products made by biotechnology and pharmaceutical companies. Columbia's aggressive effort to extend the patent duration also led to considerable legal expenditures and fierce controversy. In particular, obtaining and enforcing a 2002 patent proved costly, politically difficult, and financially fruitless and attracted intense criticism for behavior unbecoming a nonprofit academic institution. Conclusions: This case study raises several important questions about the logic and future revisions of the Bayh-Dole Act: Are revenue generation and financial rewards for inventing valuable technologies legitimate goals for this act? If so, does the federal government need credible mechanisms for oversight of, or checks and balances on, the rights conferred?

Original languageEnglish (US)
Pages (from-to)683-715
Number of pages33
JournalMilbank Quarterly
Volume87
Issue number3
DOIs
StatePublished - Sep 2009
Externally publishedYes

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Technology Transfer
Patents
Licensure
Inventors
Motivation
Research
Federal Government
Biotechnology
Health Expenditures
Administrative Personnel
Reward
Interviews
Technology
Pharmaceutical Preparations
Proteins

Keywords

  • Biotechnology
  • History
  • Intellectual property

ASJC Scopus subject areas

  • Public Health, Environmental and Occupational Health
  • Health Policy

Cite this

Columbia university's axel patents : Technology transfer and implications for the Bayh-Dole Act. / Colaianni, Alessandra; Cook-Deegan, Robert.

In: Milbank Quarterly, Vol. 87, No. 3, 09.2009, p. 683-715.

Research output: Contribution to journalReview article

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