This article was coauthored by Kevin Noonan, attorney and partner with McDonnell Boehnen Hulbert & Berghoff LLP.
Academic health systems are innovation hubs that foster advancement in care through their research and innovation arms. In doing so, health care intellectual property (IP) may arise that includes patents, trademarks, copyrights, and trade secrets, all of which may originate within the health system or its academic partner(s). Under the Bayh-Dole Act of 1980, federal research grant recipients were allowed to obtain IP that protected their inventions when working with private sector partners to further develop inventions for commercialization. Unfortunately, in practice the activities of many technology transfer offices can work against the goals of the Bayh-Dole Act through unintentionally creating commercialization barriers. As a result, many organizations are focused on developing appropriate IP governance and supporting policies and procedures to minimize these impediments to effective tech transfer, i.e., efficient commercialization of inventions stemming from federal funded scientific research. This article will highlight the best practices associated with managing academic IP, including a review of the benefits and risks in commercializing research and innovation.
This article was originally published in the American Health Law Association Journal in November 2023.
