WARF and Bayh-Dole



As the oldest university technology transfer office in the country, WARF has often provided leadership for the expanding technology transfer industry. Most significant is the fundamental role WARF played in the passage of the 1980 Bayh-Dole Act, which gave U.S. universities (and small businesses) the right to own their federally funded intellectual property and license it to companies for commercial development.

By the 1960s, the federal government had acquired some 30,000 patents from its funding programs for scientific research, due to a prevailing policy that "what the government (and public) pays for, it should own." But less than five percent of these inventions were licensed to companies and even fewer developed into commercial products, numbers that had government officials concerned.

It was at this time that WARF began attempting to persuade the Department of Health, Education and Welfare (DHEW, predecessor to the Department of Health and Human Services) and the National Science Foundation (NSF), to enter into agreements giving universities the right to patent inventions funded by those agencies.

WARF's emeritus patent counsel Howard Bremer. Bremer today provides guidance to WARF on patenting, licensing and technology transfer matters.

At the forefront of WARF's efforts was Howard Bremer, WARF's patent counsel and president of the newly formed Society of University Patent Administrators (SUPA). Bremer understood the need for collaboration between businesses and universities if the results of government sponsored research were ever to reach the marketplace. He understood the importance of a sympathetic and encouraging federal climate to technological progress. He also knew that left to their own devices, universities and industries would likely never generate the framework needed for regular cooperation.

In 1968, after a series of intense negotiations, Bremer, together with DHEW's patent counsel Norman Latker and UW-Madison special assistant to the president Bill Young, obtained the first of a new breed of contract between universities and federal agencies, known as the Institutional Patent Agreement (IPA). Signed between the UW-Madison and the DHEW, the IPA granted patent rights to the UW-Madison on DHEW-funded inventions, giving the university the freedom to license these technologies to companies. By 1973, Bremer and Reuben Lorenz, a financial officer at the UW-Madison, negotiated a similar agreement with NSF, and during the coming years, many universities and federal agencies followed suit.

The IPA not only signaled a change in the government's attitude toward university research and its commercialization, but more importantly, it also set the stage for the legislative effort culminating in the passage of the 1980 Bayh-Dole Act. In fact, Bayh-Dole is often seen as a codification of the terms and provisions contained in the first IPA between WARF and DHEW.

But WARF's part in the Bayh-Dole story didn't end with the signing of the first IPA. Over the coming years, Bremer and SUPA spent countless hours lobbying for the legislation, testifying before Congress, and assembling compelling examples of promising research whose development had been thwarted by the government policies then in place. In all, it took nearly 20 years to secure the passage of Bayh-Dole.