Tech Transfer Difficulties

At tomorrow's meeting of the Regents' Special Committee on Innovation Transfer and Entrepreneurship, there will be a segment on a change in federal policy that may make such transfers less attractive to outside firms:

The [presentation] will update the Special Committee on intellectual property provisions implemented in June 2021 by the U.S. Department of Energy (DOE) for the purpose of enhancing U.S. competitiveness. Through a Determination of Exceptional Circumstances (DEC), the DOE implemented enhanced U.S. competitiveness provisions requiring domestic manufacturing in patent rights clauses in its grants and cooperative agreements. There is concern that, because the DOE language deviates from the Bayh-Dole Act standard patent rights clauses in several meaningful ways, there may be downstream impacts, including possible chilling effects on licensing DOE-funded inventions. For such inventions that are licensed, UC will need to monitor licensees’ compliance with DOE’s substantial U.S. manufacturing requirements or risk significant penalties, including loss of invention ownership and the retained right to use the UC-generated invention for research and education purposes...

In June 2021, through a Determination of Exceptional Circumstances (DEC), the DOE implemented enhanced U.S. competitiveness provisions requiring domestic manufacturing in patent rights clauses in its grants and cooperative agreements. DOE determined that despite funding many breakthrough technologies over the years, “too often the transition of these technologies has resulted in manufacture being offshored.”

UC campus technology transfer offices (TTOs) are beginning to receive invention disclosures subject to the DOE DEC. TTOs have expressed concern that DOE’s right to impose the above-noted penalties may make such inventions less attractive to potential licensees and investors. For companies willing to engage in the waiver request process, it is not clear how many waivers or modifications to U.S. competitiveness provisions will be granted and what the timeline for the process will be...

Full agenda item at https://regents.universityofcalifornia.edu/regmeet/june23/s6.pdf.