Intellectual Property Technology Transfer, Second Edition, with 2016 Supplement

This treatise explores the full legal framework of technology transfer, highlighting critical legal issues surrounding interactions between industry and laboratories conducting research. The book, written by seasoned experts in the field, analyzes issues associated with federally-funded innovation, national security and export controls on technologies, university technology transfer rights, infringement liability, tech transfer considerations for research at foreign institutions, entrepreneurship and conflicts of interest, and more.

Meet The Author

Aline C. Flower


Finally, a resource that demystifies the process of technology transfer—for both sides of the negotiating table

Intellectual Property Technology Transfer, Second Edition, provides the legal framework for the licensing and research transactions between industry and federally and privately funded research laboratories over technology development and transfer and associated intellectual property (IP) rights. Mapping out the legal landscape in the burgeoning field of technology transfer, this resource provides a comprehensive analysis of all of the central legal issues confronting and governing the interactions between industry interests and laboratories conducting basic research.

The treatise provides analysis and insights on national security and export controls on technologies; elimination of the research exemption from IP infringement for universities, and the impact on industry-sponsored university research; recent developments in the federal government’s march-in rights and the extent of federal authority over technologies resulting from federally funded research; review of new entrepreneurial models for transferring technology into the marketplace; analysis of laws governing the ownership of intellectual property developed at universities; and international technology transfer.

Highlights in the revised, reorganized, and expanded Second Edition are:

  • Analysis of Limelight Networks, Inc. v. Akamai Techs., Inc., holding a defendant may not be held liable for inducing infringement of a patent under 35 U.S.C. §271(b) when no one has directly infringed the patent under §271(a) or any other statutory provision
  • Revised discussion of the Bayh-Dole Act, governing transfer and allocation of intellectual property rights created with the involvement of the government, in light of the effect of the America Invents Act, adding recent case law and updates regarding revised Federal Acquisition Regulations relaxing U.S. government acquisition requirements of developments by foreign contractors
  • New section in the chapter on transfer of university and lab-owned technology regarding the status of congressional abrogation of state sovereign immunity after the Supreme Court’s Florida Prepaid decision and state legislative responses
  • Expanded discussion of ownership of patent rights in university and federally funded settings
  • Completely revised chapter on export controls, national security, and technology transfer
  • Updated analysis of recent AUTM data regarding University tech transfer activity

Supplement Information  

The 2016 Supplement adds the following:

  • Expanded discussion on the export control reform initiative, the international traffic in arms regulations and the export administration regulations
  • New topics on fraud under the SBIR and STTR programs and on the Freedom of Information Improvement Act of 2016 (limiting the government’s ability to withhold records under the FOIA exemptions)
  • The Federal Circuit’s decision in Lexmark International, Inc. v. Impression Products, Inc., holding that a patentee selling a patented article subject to a single-use/no-resale restriction that is lawful and clearly communicated to the purchaser does not give the buyer or downstream buyers the resale/reuse authority that has been expressly denied
  • A federal district court in Delaware’s ruling in Transcenic, Inc. v. Google, Inc., on whether a sole inventor’s attempt to strike the employer’s proposed language that would have obligated him to assign his inventions not only to his employer but also to “any parent, associated or affiliated corporation, or subsidiary of the Company” was supported by the evidence



Bloomberg BNA authors and editors are practicing professionals with insider perspectives and real-life experience. Learn more about this book’s authors and editors.

Aline C. Flower is the associate general counsel for global development with the Bill and Melinda Gates Foundation, Bainbridge Island, WA

About the Authors         


View full tables of contents and read the book’s preface or introduction.


Read what others have to say about this Bloomberg BNA book.

Many businesses, including universities, never quite realize the value of intellectual property (IP) until it is too late. Many commercial lawyers know the basics of IP, but the details can be lost in translation of either overly complex contracts and/or licensing agreements or the dollar signs in people's eyes! Aline C Flower has brought together an excellent team to tackle in 445 pages (plus a further 126 pages of practical appendices including sample agreements) the key issues of technology transfer. We all know there are many great ideas out there in the world (and especially in universities and other research centers and government think-tanks) which do not receive commercial exploitation.

The book is divided into eight chapters, which deal with the heart of IP technology transfer. Obviously the book is written for a North American audience, but there are valuable insights which would have a global impact on both IP and the concepts around technology transfer. The first chapter deals with the unique legislation of the Bayh-Dole Act and the government's involvement in intellectual property. This is followed by constitutional matters and infringement issues (always a hot topic in IP). Chapters 3 and 4 concentrate on export controls, national security and the role of university technology transfer rights. Reading this book from within a university context as a law professor and as a Law Dean, I can see the major benefits of understanding chapters 5 and 6 which deal with infringement liability and product liability from university transfers and the whole question of ownership. The USA has a much clearer law than the equivalent provisions in countries like the UK and Australia. The final chapters deal with technology transfer from foreign universities and entrepreneurship and conflicts.

I found the appendices with the practical samples very useful to follow from exporting agreements to ownership of IP agreements and for universities all the various confidentiality agreements and software licenses. This book would be an excellent resource for many IP lawyers and university and research center administrators that need to look after IP and help academics and Institutions to gain commercial benefit from all those good ideas which can be taken to the next step.

Professor Michael A Adams

Head of the School of Law, University of Western Sydney, 2009 President of Australasian Law Teachers Association