Abstract
This paper documents the importance of foreign patents for the technology transfer of inventions created in the laboratories of the U.S. federal agencies. First, we describe the patent portfolios of the 11 federal agencies with 98 percent of the research performed within the laboratories of all U.S. federal agencies. Second, we estimate the distributed lag function showing the effects on license revenue of an agency’s history of patent applications for inventions granted U.S. patents. The estimation shows that those effects depend on whether the agency also obtained foreign patent protection for its inventions. Third, we estimate a dynamic panel data model of license revenues as a function of the history of applications and granted patents. The evidence supports the view that an agency that obtains U.S. patents for its technologies but does not obtain foreign patent protection disadvantages the corporations that license the agency’s technologies and then face international competition from firms that copy those technologies and compete with lower costs because they do not incur full development costs or pay royalties for licensing the technologies. An increase in foreign patents would increase the willingness of companies to undertake the development costs necessary to have successful commercial products, and technology transfer—with more remuneration to U.S. taxpayers via license royalties—of inventions from the laboratories of U.S. federal agencies would increase.
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Notes
Link and Scott (2019) discuss the history of the U.S. technology policy toward technology transfer and describe the key legislation—the Stevenson-Wydler Technology Innovation Act of 1980, Public Law 96–480, and its amendment, the Federal Technology Transfer Act of 1986, Public Law 99–502—underlying the goal of technology transfer of the technologies developed in federal laboratories. For discussion of both the legislative history and also the metrics used to assess the federal agencies’ technology transfer activities, see Choudhry and Ponzio (2020).
The case studies in Leech and Scott (2021) illustrate the long road to commercialization and the challenges from international competitors faced by the licensees of federal agencies’ inventions.
NIST (2018, p. 8) defines a federal laboratory as “any laboratory, any federally funded research and development center, or any center established under Sect. 7 or Sect. 9 of 15 U.S.C. § 3705 or § 3707 that is owned, leased, or otherwise used by a Federal agency and funded by the Federal Government, whether operated by the Government or by a contractor.”.
In Sect. 4′s estimated models, in addition to using the pooled sample of agencies, the models will be estimated separately for these four agencies because they have large numbers of granted patents throughout the years (not the much smaller numbers that are sometimes sparsely distributed as is the case for the other agencies).
NIST’s Technology Partnerships Office (TPO) provides the annual report to Congress for the 11 federal agencies. For this paper, we use NIST (2018), which for fiscal years 2003 through 2015 reports various annual technology-transfer metrics, such as each agency’s income from invention licenses. Each fiscal year for the agencies runs from October 1 of the preceding year through September 30.
Thus, an invention family is defined for each of a federal agency’s patent applications to the USPTO. For each of a federal agency’s patent applications to the USPTO, the invention family consists of that application and all other patent applications by the agency that are based on essentially the same technology—the same “invention”—regardless of the patent authority to which the other applications are made. The notion of an invention here is the one used by the European Patent Office for what it calls the DOCumentDataBase (DOCDB) simple patent family: “A simple patent family is a collection of patent documents that are considered to cover a single invention. The technical content covered by the applications is considered to be identical. Members of a simple patent family will all have exactly the same priorities.”(https://www.epo.org/searching-for-patents/helpful-resources/first-time-here/patent-families/docdb.html) One might ask, why multiple applications for the same invention? One reason is because the agency wants to file applications in other jurisdictions to obtain foreign patent protection to accompany its protection with a patent from the USPTO. Additionally, there may be multiple applications to the same patent authority for broader or narrower claims about the IP associated with an invention.
The patents obtained by the agencies are almost entirely utility patents. For the U.S. patents (column 5 minus column 6) of the distinct patents reported for each federal agency, for DHS, 1 of the 22 U.S. patents was a design patent; the rest were utility patents; for DOC, all 198 U.S. patents were utility patents; for DoD, of 6,932 U.S. patents, all were utility patents except for 46 design patents; for DOE, the 5,842 U.S. patents were all utility patents except for three design patents; for DOI, all 47 U.S. patents were utility patents; for DOT’s 29 U.S. patents, two were design patents and the rest were utility patents; for EPA, all 99 U.S. patents were utility patents; for HHS, its 2170 U.S. patents were all utility patents; for NASA, among its 1,371 U.S. patents, only one is a design patent, and the rest are utility patents; for USDA, there are 75 plant patents among its 789 U.S. patents, with the patents other than the plant patents being utility patents; for the VA, there are 464 U.S. patents, with two of those being design patents and the rest utility patents. Thus the patents are almost entirely utility patents, as contrasted with design or plant patents (see https://www.uspto.gov/patents-getting-started/general-information-concerning-patents#heading-2). The patent authority for each country differs in the codes used to identify the types of patents granted, and we have the appropriate code for each of the patents. The codes for different kinds of patents are specific to the particular patent office issuing the patent. An up-to-date concordance with each country’s “Kind Code” for the various types of patent documents is available as Concordance_20190909.xls and is also in PUBL1_20190909.xls at https://www.epo.org/searching-for-patents/helpful-resources/data/tables/regular.html.
Columns (4) and (7) will in general differ for two reasons. For one, some of the applications in column (2) did not themselves result in a patent, but another application based on the same invention resulted in a patent. For another, the number of foreign patents for each USPTO patented invention can range from zero to several; and so, the percentage of foreign patents in the total patents will not in general be the same as the percentage of patented inventions that have foreign patents.
Leech and Scott (2021) provide much more detail about the patent applications and grants and the methodology for searching the EPO’s PATSTAT worldwide patent database.
The authors tabulated the patent counts from the worldwide patent database (EPO, Spring, 2019).
The United States Government Accountability Office (U.S. GAO, 2018), reports “DOD, DOE, NASA, and NIH officials … stated that getting the technology into the marketplace is their primary goal in licensing (U.S. GAO, 2018, p. 28). [Emphasis added.] Also, Ferguson and Kaundinya (2014, pp. 191–192) observe: “Compared to biomedical licensing from corporations, the federal laboratories and universities bring a different focus and perspective to the table when negotiating the technology transfer agreements. Because these agreements are used to further overall institutional missions, representatives from such nonprofit institutions consider the public consequences of such licenses as their first priority, not the financial terms that may be involved.” See also, Rubenstein (2003).
U.S. Code, Title 35, Sect. 207 grants wide latitude to “Each Federal agency” in “acquiring rights for and administering royalties to the Federal Government in any invention …” U.S. GAO (2003, p.8) observes that under federal law and agency policy multiple uses for the royalties from licensing are possible, and it discusses the ways that the National Institutes of Health (NIH) uses the royalties from licensing its patented inventions. U.S. GAO (2003, p. 8) observes “… the royalty payments can be used to (1) reward employees of the laboratory, (2) further scientific exchange among the laboratories of the agency, (3) educate and train employees of the agency or laboratory, (4) support other activities that increase the potential for transfer of the technology of the laboratories of the agency, (5) pay expenses incidental to the administration and licensing of intellectual property by the agency or laboratory, and (6) support scientific research and development consistent with the research and development missions and objectives of the laboratory.”.
Erlich (2001, p. 91), writing about the licensing of government-owned inventions, observes, “How, then, can reasonable royalty payments be established? As stated in Georgia-Pacific Corporation v. Plywood-Champion Papers, Inc. (166 USPQ 239) “Where a willing licensor and a willing licensee are negotiating for a royalty the hypothetical negations would not occur in a vacuum of pure logic. They would involve a marketplace confrontation of the parties, the outcome of which would depend upon such factors as their relative bargaining strength; the anticipated amount of profits … and any other economic factor that normally prudent businessmen would … take into consideration in negotiating the hypothetical license.”.
See U.S. GAO (2018, p. 14, and limited exceptions noted there, and then more generally pp. 12–16).
See U.S. Code, Title 35, Sect. 207. Federal agencies have authority to acquire, maintain, and manage portfolios of U.S. and foreign patents for the technologies generated by them, and grant licenses and collect royalties for patented technologies.
For a description and analysis of the invention disclosures of the U.S. federal agencies, see Link and Scott (2020).
The USPTO patent life is twenty years, and each agency’s foreign patent applications for USPTO-patented technologies have the same dates for priorities as stated in the USPTO applications. Thus, the set of the last 20 years of an agency’s USPTO applications covers essentially all of the technologies with unexpired patent protection.
In Sect. 4 where we introduce a dynamic panel data model that uses each agency’s numbers of foreign and U.S. patents granted in addition to its applications to USPTO, we divide the agencies differently. In Sect. 4′s model, we divide the sample into the group of four agencies with 90% of the patenting activity and the group of the remaining agencies. The individual agencies within each group can have different estimated parameters for the explanatory patent variables, while each of the two groups can have its own estimated parameters for the variables with common parameters across the group’s agencies. In the simpler distributed-lag model here in Section III with just the USPTO application histories, two agencies in addition to the four agencies with most of the patenting activity have a full deep history of USPTO applications for inventions that were ultimately granted U.S. patents and, for a subset of those inventions, were also ultimately granted foreign patents.
For the remaining five agencies among those for which NIST (2018) provides the invention-license revenues for the fiscal years from 2003 through 2015, the history of their patent applications for the twenty years prior to 2003 is considerably less extensive than those for USDA and DOC. The Department of Veterans Affairs was not founded until 1989, and patent applications for the Department in the worldwide patent database do not appear until fiscal year 1998. DHS was founded in 2002, and its earliest patent application was filed in 2008. Although EPA was founded in 1970, it is not listed as the applicant for patent applications until 1988, and then there are just a few until a few years into the 1990s. Prior to fiscal year 2000, there are only a few USPTO patent applications for DOT. DOI has small numbers of USPTO applications with granted patents and almost no foreign patents.
In specification (3) of Table 4, we include the time dummy variables, d_2008 and d_2009, for fiscal years 2008 and 2009 respectively, which cover the period that the National Bureau of Economic Research (https://www.nber.org/cycles.html) designates as the years of the Great Recession.
An alternative to what we have done is to put variables in deviation from their agency means as in the panel data procedure “xtreg” with the “fe” option in Stata Corp. (2017a, 2017b) that fits fixed-effects regression models to panel data to have the “within” regression estimator. That “xtreg” procedure (rather than including the agency dummies as we have done) to sweep out the agency effects of course yields exactly the same estimated coefficients reported in Table 4 for the three specifications.
The lag times are computed as the time between the formal application date (to USPTO for the U.S. patents and to the foreign patenting authority for the foreign patents) and the date of the patent grant.
From the worldwide patent database (EPO, Spring, 2019), the authors tabulated the average time from the application for a patent until it was granted. For comparison with the figures discussed for DoD, DOE, HHS, and NASA, the figures are as follows for the other seven agencies with patent portfolios described in Table 1. For USDA, the average lag for its U.S. patents was 3.02 years; for its foreign patents the average lag was 6.03 years. For DOC, the average lag was 2.68 years for its U.S. patents and 5.35 years for its foreign patents. For DHS the average lag for its U.S. patents was 2.03 years; it had no foreign patents during the sample period. For DOI, the lag for its U.S. patents averaged 3.03 years; it had just one foreign patent during the sample period, and its lag was 0.54 year. DOT had no foreign patents during the sample period, and its U.S. patents had an average lag of 2.57 years. The average lags for the U.S. and foreign patents of the VA were 3.40 and 5.61 years respectively. For EPA, the average lags for the U.S. and foreign patents were 3.42 and 6.28 years respectively.
The model is dynamic because we observe the patents and their benefits as they evolve through time, and because the relationship between past patents and the benefits that they generate is recurring through time. The data are panel data because we observe several different entities—the different federal agencies—through time. Thus, we have a panel of federal agencies and observe each member of the panel over time. Such data is also referred to as pooled cross-section time-series data because at any point in time we have a cross-section of different entities and can look across them at that point in time, and then we also observe them over time. Because we look over time at the cross-section, observing the entities in the panel lengthwise through time, such data are also referred to as longitudinal data.
See Ferguson and Kaundinya (2014).
The EPO’s PATSTAT database is publicly available by subscription.
Our dependent variable, the annual invention-license revenue for each agency for each fiscal year from 2003 through 2015, is provided in nominal values (that we converted to constant 2015 dollars using the U.S. Gross Domestic Product implicit price deflator) in NIST’s summary technology transfer report and in an Excel spreadsheet that is available with the report (NIST, 2018).
U.S. GAO (2003, p. 8) observes, “Federal laws also generally prohibit agencies from disclosing information that concerns or relates to trade secrets, processes, operations, statistical information, and related information.” U.S. GAO references several laws and a court case: 15 U.S.C. § 3710a(c)(7); 18 U.S.C. § 1905 (2000), Public Citizen v. NIH, 209 F. Supp. 2d 37 (D.D.C. 2002), and also, 5 U.S.C. § 552(b)(4) (2000).
Although systematic data about licensing revenues for individual licenses is not available, occasionally for a particular licensed technology, in a licensee’s annual financial reports to the U.S. Internal Revenue Service, there will be information about the annual royalties that the licensee pays to a federal agency, but finding such data carefully disaggregated and identified is unusual. Danziger and Scott (2020) provide an example where the information was reported systematically in publicly available documents because it was a way to inform the investors that the licensee was hoping to attract.
Arellano and Bond (1991) develop a consistent generalized method of moments (GMM) estimator for the parameters of the dynamic panel data model. Stata Release 15, Statistical Software (College Station, Texas: StataCorp LLC, 2017) provides the implementation of the model with the procedure xtabond. The Arellano and Bond estimator and the procedure xtabond are described fully in Stata Longitudinal Data/Panel Data Reference Manual, Release 15 (College Station, Texas: StataCorp LLC, 2017), pp. 24–43. We use the Arellano-Bond robust VCE estimator for their one-step GMM model. A detailed explanation of GMM estimators and the application for the Arellano and Bond estimator is provided in Greene (2012, pp. 455–508.
With first-differencing, the individualized constant terms for the agencies (the panel-level effects or the “agency effects”) are removed before estimating the other parameters of the model with the differences of the variables.
For a given number of time periods T in the sample and in the absence of serial correlation in the disturbances uit in our estimable model of invention-license revenue, the Arellano-Bond estimator is derived as the solution to moment conditions that hold asymptotically as the number N of individual time series approaches infinity. As Arellano and Bond (1991, p. 278) state, “T is small and N is large.” And, they explain, with their assumptions, “values of y lagged two periods or more are valid instruments in the equations in first differences.” Thus, with the available number of federal agencies, we use an estimator with desirable asymptotic properties. As we have described in Sect. 2, virtually all of the federal laboratory research is provided by 11 federal agencies, and so the number N of individual time series that we can observe is well below an optimal number. To study experimentally the performance of their estimation and testing procedures, Arellano and Bond (1991, pp. 283–288) use a sample with N = 100 to have a “large” sample of “a size likely to be encountered in practice.” Our results with the Arellano and Bond estimator are exploratory, using an estimator with desirable asymptotic properties to describe the relations between the dependent and explanatory variables for the number of federal agencies available. We subsequently show that very similar results are obtained with straightforward instrumental-variables regression.
The model, here in Table 9 and subsequently in appendix Table 14, can also be estimated by dropping an additional time dummy and including analytical_time; the coefficients and standard errors for the explanatory variables (other than the set s of time variables) are the same (Leech and Scott, 2021, Appendix B, pp. 115–120).
For the base agency, DoD, the estimated coefficients for AppUSFNit-1, PatUSit-1, and PatFNit-1 are summed and compared with the sum of the coefficients for AppUSnoFNit-1 and PatUSit-1. For each of the other three agencies, to each sum of coefficients for DoD, are added the coefficients for the interaction variables that multiply the agency’s dummy variable times each of the explanatory variables in the sum for DoD. Thus, for DoD, we compare the sum of three estimated coefficients with the sum of two estimated coefficients. For the other agencies, we compare the sum of six estimated coefficients with the sum of four estimated coefficients. For each of these sums, the test statistic against the null hypothesis that the sum equals zero is distributed as chi-squared with one degree of freedom. The sum of the three coefficients for DoD in the case that foreign patents are granted is significant with the probability of a greater chi-squared statistic = 0.0003 against the null hypothesis that the sum is zero. The sum of the two coefficients in the case of no foreign patents is insignificantly different from zero. For the two DoD sums for the case with foreign patents versus the case without, the p-values are 0.0003 and 0.84 respectively. For DOE, the two sums for the case with foreign patents (a sum of six coefficients) and for the case without (a sum of four coefficients) have p-values equal to 0.28 and 0.58 respectively. For HHS, the sum of the six coefficients for the foreign patent case has p-value less than 0.0001, and the sum of the four coefficients for the case with no foreign patents has p-value = 0.12. For NASA, the sum of six coefficients for the foreign patent case has p-value = 0.0002, and the sum of the four coefficients for the case without foreign patents has p-value = 0.04.
USDA is the base case, and both sums of coefficients are significantly different from zero; the p-values against the null hypothesis are less than 0.0001 for both the sum of the three coefficients for the foreign patent case and the sum of the two coefficients for the case without foreign patents. For DOC neither the sum of six coefficients for the case with foreign patents (p-value = 0.36) nor the sum of the four coefficients for the case without foreign patents (p-value = 0.96) is significantly different from zero. For VA, the sum of the six coefficients for the case with foreign patents is significant with p-value = 0.06, and the sum of the four coefficients for the case without foreign patents is marginally significant with p-value = 0.14. For EPA, the sum of the six coefficients for the case with foreign patents is insignificantly different from zero with p-value = 0.57, while the sum of the four coefficients for the case without foreign patents is significantly different from zero with p-value less than 0.0001.
Thus, for each agency, there are 13 observations of the number of patents received over the last two decades. For fiscal year 2003, we tabulate the number of U.S. and foreign patents granted to the agency in fiscal years 1984 through 2003. For fiscal year 2004, we tabulate the number granted in fiscal years 1985 through 2004, and so on to fiscal year 2015 for which we tabulate the number granted in fiscal years 1996 through 2015.
The estimation uses the procedure “ivregress” (Stata Corp., 2017b) for single-equation instrumental-variables regression using the two-stage least squares estimator.
The foreign patents would make the technology that is transferred more valuable to the licensees, and consequently they would be willing to pay greater licensing fees. The negotiation of higher licensing fees would leverage the taxpayers’ funds, enabling a given amount of funds to support a greater amount of R&D in the federal agencies. See Scott (1998) and also Martin and Scott (2000).
The limitations associated with the alternative mechanisms include, for example, that “… federal and academic institutions often have difficulty in holding and dealing with equity … Further, critics note that equity agreements (1) increase risk for the institution, (2) move the institution away from a role as a knowledge generator, and (3) subject the institution to adverse publicity.” (Gattari, et al., 2017, p. 35).
For example, Atkinson (2020, p. 23) observes “For the U.S. innovation system, it appears that the direction of change has been toward relative worsening, especially when compared with some other national systems whose governments are putting in place a suite of policies designed to win in the global race for innovation advantage.”.
Other recommendations for increasing technology transfer of federal agencies inventions are currently being developed and assessed. U.S. GAO (2021) provides a prominent example of recent recommended policy changes to increase technology transfer.
Steven M. Ferguson, Special Advisor for Technology Transfer, NIH Office of Technology Transfer, observes (personal correspondence, February 26, 2021): “With healthcare being a global market, foreign patent filing has been a key component of the NIH technology transfer program right from its very beginnings. While the number of countries or the selected jurisdictions will vary on a case by case and situation and by situation basis, NIH has not been afraid to make these foreign filings when they were needed to support product development of new drugs, vaccines and diagnostics. There were extensive foreign patent filings, for example, around early NIH and collaborator work in the early 1980s for HIV with the result then of many first generation diagnostics and therapeutics launched. Fast forward now to the present with the complex variety of today’s health challenges, we are responding in similar manner and expect to achieve similar successes for public health.”
Economic impact is reduced in two senses. For one, taxpayers’ dollars are not leveraged by the return of greater royalties; their dollars will not support as much research. For another, licensees will invest less in the development of commercial products from the licensed inventions because they anticipate lower profits in the face of more competition in international markets. As discussed above, other available IP mechanisms will not provide protection to offset the lost licensing revenue because foreign patents were not obtained.
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Acknowledgements
We are grateful to technology transfer experts in many of the federal agencies, including those in the Technology Partnerships Office, National Institute of Standards and Technology, for discussing with us their thoughts about the patenting and licensing of the agencies’ inventions. Among those who provided insights, we are especially grateful to Karen Rogers and Steven Ferguson of the National Institutes of Health’s Office of Technology Transfer. We thank Geert Boedt of the European Patent Office for helping us work with the worldwide patent database PATSTAT. We thank Al Link for many helpful comments on the earlier version of this paper.
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Appendix: Arellano-Bond estimation for the seven agencies with a small share of patenting activity
Appendix: Arellano-Bond estimation for the seven agencies with a small share of patenting activity
Table
13 shows the descriptive statistics for the variables used in the Arellano-Bond estimations for each of the 7 agencies with about 10% of the patenting activity for the 11 federal agencies covered in NIST (2018).
Table
14 shows the estimated Arellano-Bond model for the 7 agencies. The intercept and the agency effects are eliminated with the first-differencing, and each agency has its own slope effects for the four variables describing the history of the patent applications and grants, except for DHS and DOT. Those two agencies do not have any foreign patents (see Table 13); and therefore, there are no interaction terms for the variables AppUSFNit-1 and PatFNit-1 for those two agencies. USDA is the base case, with its slope coefficients for the patent application and grant variables given by the coefficients on those variables. For the other agencies, the coefficient for a particular patent application or grant variable is the sum of USDA’s coefficient for the variable plus the coefficient on the interaction of the particular variable with the agency’s dummy variable.
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Leech, D.P., Scott, J.T. Foreign patents for the technology transfer from laboratories of U.S. federal agencies. J Technol Transf 47, 937–978 (2022). https://doi.org/10.1007/s10961-021-09857-2
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DOI: https://doi.org/10.1007/s10961-021-09857-2