[House Report 109-409]
[From the U.S. Government Publishing Office]



109th Congress                                                   Report
                        HOUSE OF REPRESENTATIVES
 2d Session                                                     109-409

======================================================================



 
   EXPRESSING THE SENSE OF THE CONGRESS REGARDING THE SUCCESSFUL AND 
SUBSTANTIAL CONTRIBUTIONS OF THE AMENDMENTS TO THE PATENT AND TRADEMARK 
 LAWS THAT WERE ENACTED IN 1980 (PUBLIC LAW 96-517; COMMONLY KNOWN AS 
THE ``BAYH-DOLE ACT''), ON THE OCCASION OF THE 25TH ANNIVERSARY OF ITS 
                               ENACTMENT

                                _______
                                

   April 5, 2006.--Referred to the House Calendar and ordered to be 
                                printed

                                _______
                                

 Mr. Sensenbrenner, from the Committee on the Judiciary, submitted the 
                               following

                              R E P O R T

                    [To accompany H. Con. Res. 319]

                [Including the Committee Cost Estimate]

  The Committee on the Judiciary, to whom was referred the 
concurrent resolution (H. Con. Res. 319) expressing the sense 
of the Congress regarding the successful and substantial 
contributions of the amendments to the patent and trademark 
laws that were enacted in 1980 (Public Law 96-517; commonly 
known as the ``Bayh-Dole Act''), on the occasion of the 25th 
anniversary of its enactment, having considered the same, 
report favorably thereon without amendment and recommend that 
the concurrent resolution be agreed to.

                                CONTENTS

                                                                   Page
Purpose and Summary..............................................     2
Background and Need for the Legislation..........................     2
Hearings.........................................................     3
Committee Consideration..........................................     3
Vote of the Committee............................................     3
Committee Oversight Findings.....................................     3
New Budget Authority and Tax Expenditures........................     4
Committee Cost Estimate..........................................     4
Performance Goals and Objectives.................................     4
Constitutional Authority Statement...............................     4
Section-by-Section Analysis and Discussion.......................     4
Changes in Existing Law Made by the Bill, as Reported............     4
Markup Transcript................................................     4

                          Purpose and Summary

    The purpose of H. Con. Res. 319 is to recognize the 
successful and substantial contributions of the amendments to 
the patent and trademark laws that were enacted in 1980 (Pub. 
L. No. 96-517, commonly known as the ``Bayh-Dole Act''), on the 
occasion of the 25th Anniversary of its enactment.

                Background and Need for the Legislation

    On December 12, 1980, former President Carter signed the 
``Government Patent Policy Act of 1980'' into law,\1\ which 
became better known as the ``Bayh-Dole Act'' after its two 
principal Senate sponsors. To commemorate the silver 
anniversary of the act, Representative Sensenbrenner, the 
Chairman of the Judiciary Committee and a former Chairman of 
the Science Committee, introduced H. Con. Res. 319, along with 
the current Chairman of the Science Committee, Representative 
Boehlert, the Ranking Members of the Judiciary and Science 
Committees, Representatives Conyers and Gordon respectively, 
and 14 other Members of Congress on December 16, 2005.
---------------------------------------------------------------------------
    \1\ Pub. L. No. 96-517
---------------------------------------------------------------------------
    Art. I, Sec. 8, cl. 8, of the United States Constitution 
provides Congress with authority ``to promote the Progress of 
Science and useful Arts, by securing for limited Times to 
Authors and Inventors the exclusive Right to their respective 
Writings and Discoveries.'' Two centuries after the 
establishment of the Republic, the drafters of the Constitution 
could not have foreseen that the Federal Government would, 
itself, become a significant catalyst for and investor in the 
development of advanced technologies. As such, the Federal 
Government and American citizens have a continuing interest in 
ensuring the applied research and development of innovative 
technologies that result from Federal funding.
    Before Bayh-Dole was enacted, the Federal Government 
permitted the private sector to commercialize fewer than five 
percent of the Government's patent portfolio. As former Senator 
Robert J. Dole stated in July 2005, the Government's ``track 
record'' of promoting the adoption of new university-born 
technologies by industry during the 1960's and 1970's was 
``dismal.'' The failure to capitalize on the knowledge that 
resulted from Federal funding of basic research delayed 
innovations and denied the benefits of further development, 
disclosure, exploitation, and commercialization to the American 
people.
    This result was attributed, in part, to the prior 
application of at least 26 distinct Federal agency policies 
that governed the use of the results of federally funded 
research and development. Bayh-Dole fundamentally changed the 
Government's patent policy by replacing the disparate agency-
level patent licensing policies with a ``single, uniform 
national policy designed to . . . encourage private industry to 
utilize Government financed inventions through the commitment 
of the risk capital necessary to develop such inventions to the 
point of commercial application.'' The new law encouraged small 
businesses and non-profits, including universities, to patent 
inventions that resulted from federally funded research.
    Today, Americans benefit from a variety of applied 
techniques and technologies that help to lengthen and improve 
their lives that are directly attributable to the enactment of 
the Bayh-Dole. Some of the extraordinary products and services 
that have been attributed to the act include: 1) Magnetic 
Resonance Imaging (MRI), which was developed at the University 
of Wisconsin--Madison; 2) a lithography system to enable the 
manufacturing of nano-scale devices, which was developed at 
University of Texas-Austin; and 3) a new effective aneurysm 
treatment, which was developed at University of California, Los 
Angeles.
    The Bayh-Dole Act has helped to facilitate a culture of 
cooperation and collaboration among Government, university, and 
private sector researchers and has been credited with 
significantly contributing to the commercial deployment of 
technologies that led to the development of new industries such 
as biotechnology and nanotechnology. In 2003, the President's 
Council of Advisors on Science and Technology (PCAST) affirmed 
the importance of the act by reporting that it ``dramatically 
improved the nation's ability to move ideas from research and 
development to the marketplace and into commerce.'' PCAST went 
on to find that the system for transferring technology from 
nonprofit institutions--which includes universities, hospitals, 
and Government laboratories--to the private sector has worked 
well.
    H. Con. Res. 319 reaffirms Congress' commitment to the 
policies and objectives of the Bayh-Dole Act, which has helped 
to catalyze a quarter century of enhanced research and 
development within the United States and led to dramatic 
improvements in public health and safety, a strengthened and 
better resourced higher education system in the U.S., and the 
development of new domestic industries that have created tens 
of thousands of highly skilled jobs for American citizens.

                                Hearings

    The House Committee on the Judiciary held no hearings on H. 
Con. Res. 319.

                        Committee Consideration

    On March 15, 2006, the Committee met in open session and 
ordered favorably reported the bill H. Con. Res. 319 by voice 
vote, a quorum being present.

                         Vote of the Committee

    In compliance with clause 3(b) of Rule XIII of the Rules of 
the House of Representatives, the Committee notes that there 
were no recorded votes during consideration of H. Con. Res. 
319.

                      Committee Oversight Findings

    In compliance with clause 3(c)(1) of Rule XIII of the Rules 
of the House of Representatives, the Committee reports that the 
findings and recommendations of the Committee, based on 
oversight activities under clause 2(b)(1) of Rule X of the 
Rules of the House of Representatives, are incorporated in the 
descriptive portions of this report.

               New Budget Authority and Tax Expenditures

    Clause 3(c)(2) of Rule XIII of the Rules of the House of 
Representatives is inapplicable because this legislation does 
not provide new budgetary authority or increased tax 
expenditures.

                        Committee Cost Estimate

    In compliance with clause 3(d)(2) of Rule XIII of the Rules 
of the House of Representatives, the Committee estimates the 
costs of implementing the concurrent resolution would be 
minimal. The Congressional Budget Office did not provide a cost 
estimate for the concurrent resolution.

                    Performance Goals and Objectives

    H. Con. Res. 319 does not authorize funding. Therefore, 
clause 3(c)(4) of Rule XIII of the Rules of the House of 
Representatives is inapplicable.

                   Constitutional Authority Statement

    Pursuant to Rule XI, clause 2(1)(4) of the Rules of the 
House of Representatives, the Committee finds the authority for 
this legislation in art. I, Sec. 8, cl. 8 of the Constitution.

               Section-by-Section Analysis and Discussion

    Introduced on December 16, 2005, H. Con. Res. 319 expresses 
the sense of Congress that the Bayh-Dole Act has made 
successful and substantial contributions to the advancement of 
scientific and technological knowledge, fostered dramatic 
improvements in public health and safety, strengthened the 
higher education system in the United States, served as a 
catalyst for the development of new domestic industries that 
have created tens of thousands of new jobs for American 
citizens, strengthened States and local communities across the 
country, and benefitted the economic and trade policies of the 
United States.
    H. Con. Res. 319 reaffirms Congress' commitment to the 
policies and objectives of the act by acknowledging its 
contributions and commemorating the silver anniversary of its 
enactment.

         Changes in Existing Law Made by the Bill, as Reported

    In compliance with clause 3(e) of Rule XIII of the Rules of 
the House of Representatives, the Committee notes that H. Con. 
Res. 319 makes no changes to existing law.

                           Markup Transcript



                            BUSINESS MEETING

                       WEDNESDAY, MARCH 15, 2006

                  House of Representatives,
                                Committee on the Judiciary,
                                                    Washington, DC.
    The Committee met, pursuant to notice, at 10:13 a.m., in 
Room 2141, Rayburn House Office Building, the Honorable F. 
James Sensenbrenner, Jr. (Chairman of the Committee) presiding.
    [Intervening business.]
    Chairman Sensenbrenner. Pursuant to notice, I now call up 
House Concurrent Resolution 319, expressing the sense of 
Congress regarding the successful and substantial contributions 
of the amendments to the patent and trademark laws that were 
enacted in 1980, commonly known as the Bayh-Dole Act. That is 
spelled Bayh, B-A-Y-H, for purposes of markup and move its 
favorable recommendation to the House.
    Ms. Waters. Mr. Chairman.
    Chairman Sensenbrenner. Without objection, the resolution 
will be considered as read----
    Ms. Waters. Mr. Chairman.
    Chairman Sensenbrenner. --and open for amendment at any 
point, and the Chair recognizes himself for 5 minutes to 
explain the resolution.
    [The resolution, H. Con. Res. 319, follows:]
  



    Chairman Sensenbrenner. This resolution is a resolution 
that marks the 25th year of the patent and trademark law 
amendments of 1980, more commonly referred to as the Bayh-Dole 
Act, in honor of its two principal sponsors. Before Bayh-Dole, 
there were at least 26 different Federal agency policies that 
controlled the use of Federally funded research and 
development, and government licensed fewer than 5 percent of 
its patents to the private sector.
    The act established a single uniform national policy to 
encourage private industry to utilize government financed 
inventions through the commitment of risk capital necessary to 
develop such inventions to the point of commercial 
applications.
    I have a lengthier opening statement that I will put in the 
record at this time and recognize the gentleman from Michigan, 
Mr. Conyers.
    [The prepared statement of Chairman Sensenbrenner follows:]

  Prepared Statement of the Honorable F. James Sensenbrenner, Jr., a 
 Representative in Congress from the State of Wisconsin, and Chairman, 
                       Committee on the Judiciary

    H. Con. Res. 319 is a resolution that marks the 25th year, of the 
``Patent and Trademark Laws Amendments of 1980,'' more commonly 
referred to as the ``Bayh-Dole Act'' in honor of its two principal 
sponsors.
    Before Bayh-Dole, there were at least 26 different Federal agency 
policies that controlled the use of the results of federally-funded 
research and development and the government licensed fewer than five 
percent of its patents to the private sector.
    The Act established a ``single, uniform national policy designed 
to--encourage private industry to utilize government financed 
inventions through the commitment of the risk capital necessary to 
develop such inventions to the point of commercial application.''
    The legislation encouraged U.S. government laboratories and other 
non-profit entities that receive federal support for basic research to 
identify technologies that might have commercial potential, to 
collaborate with entities in the private sector to help finance, 
develop, and apply that research, and through the grant of a patent, 
licensing, and the receipt of royalties to reap the benefits of further 
innovation.
    Bayh-Dole has been a clear success. It has led to many innovative 
technologies and techniques that have helped enable medical researchers 
and practicing physicians to discover, diagnose, and better treat human 
illnesses.
    Two of the many examples that can be cited in this regard are the 
development of Magnetic Resonance Imaging (MRI) technology, much of 
which was conducted at the University of Wisconsin- Madison, and the 
development of a new more effective aneurysm treatment by researchers 
at UCLA. There are countless similar technology transfer success 
stories from across the nation.
    Indeed, the Act led to the creation of numerous technology transfer 
offices within Universities, hospitals, and other non-profit entities. 
Technology transfer serves as the bridge between researchers who spend 
thousands of hours conducting basic research and the business community 
that can turn a discovery into a practical and marketable invention for 
the benefit of the public.
    H. Con. Res. 319 reaffirms Congress' commitment to the policies and 
objectives of the Bayh-Dole Act, which has contributed substantially to 
our public health and safety, the strengthening and enhanced resourcing 
of our Universities and research centers, and the development of new 
cutting-edge domestic industries that have employed tens of thousands 
of American citizens in highly-skilled jobs.
    I urge support of the resolution and recognize the Ranking Member, 
and cosponsor of the resolution, for his statement.

    Mr. Conyers. Mr. Chairman, I rise in support of the 
legislation, and as an original cosponsor, I am happy to tell 
everyone that it expresses the sense of Congress regarding the 
substantial contributions that Bayh-Dole and the amendments to 
the patent and trademark laws in 1980.
    Prior to the Bayh-Dole Act, the United States was 
confronted by great economic uncertainty and presented with 
unprecedented new challenges from foreign industrial 
competition. Only 5 percent of the patents owned by the Federal 
Government were used by the private sector. To further economic 
development and innovation, in 1980, the 96th Congress enacted 
the public law, and it was named in honor of its two lead 
sponsors, the Democratic Senator from Indiana and the 
Republican Senator from Kansas.
    What the act did was establish a single Federal policy for 
commercializing inventions, eliminating the 26 agency policies 
that had existed regarding the use of results of Federally 
funded research and development. I think that this is a fitting 
and appropriate way to recognize that the Bayh-Dole Act has 
contributed to the advancement of science and resulted in tens 
of thousands of new jobs for American citizens.
    I urge support of the measure 319 and return my unused 
time.
    Chairman Sensenbrenner. Without objection, all Members may 
place opening statements in the record at this point. Are there 
amendments?
    Ms. Waters. Mr. Chairman.
    Chairman Sensenbrenner. For what purpose does the 
gentlewoman from California rise?
    Ms. Waters. I move to strike the last word.
    Chairman Sensenbrenner. The woman is recognized for 5 
minutes.
    Ms. Waters. Mr. Chairman, I rise in support of this 
resolution commemorating the 25th anniversary of the enactment 
of the Bayh-Dole Act.
    Because of the great advancements in the health sciences 
that were facilitated by Bayh-Dole through California 
individuals and institutions such as the University of 
California, I would like to ask unanimous consent that a letter 
from U.C. assistant vice-president A. Scott Suddeth dated March 
14, 2006, be entered into the record.
    The letter references the fact that the University of 
California holds 5,209 patents from inventions that were 
generated by its faculty and scientists in the course of 
conducting research. It goes on to talk about what the letter 
states.
    Society has clearly benefited from the provisions of Bayh-
Dole, and we ought to celebrate its passage. On that basis, I 
fully support H.Con.Res 319, and I would yield back.
    Chairman Sensenbrenner. Without objection, the letter 
referred to in the gentlewoman's remarks will be included in 
the record.
    [The information referred to follows:]

    
    
    Chairman Sensenbrenner. Are there amendments?
    If there are no amendments, a reporting quorum is present. 
The question occurs on the motion to report the bill, House 
Concurrent Resolution 319 favorably. All in favor will say aye.
    Opposed, no.
    The aye appears to have it. [Laughter.]
    The aye has it, and the motion to report favorably is 
agreed to. Without objection, the staff is directed to make any 
technical and conforming changes, and all Members will be given 
2 days, as provided by the House Rules, in which to submit 
additional, dissenting, supplemental, or minority views.
    [Intervening business.]
    Chairman Sensenbrenner. This concludes the items on the 
agenda. The Chair would like to thank everybody for their 
efficient processing of today's business, and without 
objection, the Committee stands adjourned.
    [Whereupon, at 11:16 a.m., the Committee was adjourned.]

                                 
