Vannevar Bush’s seductive lie

At the New Atlantis, Dan Sarewitz has published an interesting article, “Saving Science.” While there’s plenty to discuss regarding his major theme, that scientists “must come out of the lab into the real world,” here I’d like to deal with a couple of claims Sarewitz makes regarding Vannevar Bush. Sarewitz opens his article with a quote from Vannevar Bush:

Scientific progress on a broad front results from the free play of free intellects, working on subjects of their own choice, in the manner dictated by their curiosity for exploration of the unknown.

Sarewitz characterizes this statement as a “bald-faced but beautiful lie.” Certainly he doesn’t mean “lie” in the sense that Vannevar Bush knew the truth and chose to write a report to the President to deceive him and the American public. I am sure such things have been done (say, by climate scientists), but it’s difficult to see that this is what Bush was up to. Perhaps Sarewitz means “lie” in the Seth Godin sense of “any story a consumer believes.” In this sense, Bush’s statement is a lie simply because it engages a world view and invites belief. Perhaps.

But it appears that Sarewitz actually means that Bush was wrong and tells his “lie” as a “seductive manipulation.” Continue reading

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There never was a promise to assign

When Stanford in its litigation against Roche appealed to the U.S. Supreme Court, it included in its petition for certiorari a declaration by Luis Mejia, the licensing manager responsible for filing the patents and offering an exclusive license to Roche. His account of Bayh-Dole helps to show the problem with how accounts of Bayh-Dole circulated in technology transfer circles. A look at his declaration also shows how there never was a promise to assign to Stanford that was later pre-empted by a rogue assignment to a company.

Here are the parts of the declaration that I want to focus on:

15. Stanford’s Policy on Inventions, Patents, and Licensing that was in effect in the 1980s is reflected in Exhibits 24 and 25, attached to the Rhyu declaration. According to that policy, Stanford allowed rights in inventions to remain with inventors “if possible.”

That is, Stanford’s policy required it to show that there was a contractual requirement that Stanford obtain ownership of an invention before it could require assignment of an invention. Inventions could be assigned anyway, by choice, but doing so is not a condition of employment or use of resources or anything else that the patent policy recited as possible consideration to bind the promise to assign inventions when required to do so.

However, the policy recognized that “the great majority” of inventions arose from research that was externally funded and covered by those external funding agreements. (See Exh. 24, ¶ 1.)

But even then, Stanford’s policy was not simply that if there was a contract, Stanford had to own. The patent policy required that Stanford had to be obligated by the contract to own the invention. Continue reading

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Faux Bayh-Dole and Stanford v Roche

I have been tracing the history of two versions of Bayh-Dole. One version is based in the law as written and reflected in the implementing regulations and the standard patent rights clause. The second version shows up immediately after the passage of Bayh-Dole in statements by Norman Latker, Howard Bremer, Joseph Allen, and others.

In the legal version, Bayh-Dole applies to federal agencies and directs them to use a standard patent rights clause, to be prepared, and sets out the conditions under which a federal agency can require the assignment to the federal government of an invention made with federal support. In the faux version, Bayh-Dole applies directly to universities and gives them title outright to inventions made with federal support. Any paperwork involving assignments is then something of a scavenger hunt to satisfy patent office rules that for some reason were never changed when Bayh-Dole came into effect.

Stanford v Roche

The Supreme Court in Stanford v Roche had to decide between these two versions. In one version, patent law had been changed to vest title of inventions with universities, not inventors. In the other version, federal rules regarding agency contracting were changed to limit what agencies could require as a condition of awarding money for research proposed by university faculty and small businesses. Over 70 universities signed on to an amicus brief advocating for the vesting version of the law. Senator Bayh submitted his own amicus brief arguing as well for the vesting version: Continue reading

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University of California’s Office of the President self-servingly misrepresents Bayh-Dole

Here is a bit of guidance regarding research agreements from the University of California Office of the President regarding sponsored research:

Federally funded research has special provisions on rights to inventions. Pursuant to federal statute, known as the Bayh–Dole Act, UC is entitled to take title to inventions arising from federally funded research; however, it must grant non-exclusive use rights to the Government. Also, if UC decides not to file a patent application on an invention or will not otherwise commercialize it, UC is required to return patent rights to the federal government.

I have highlighted some portions of this advice. Let’s work through these. Continue reading

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Seven Ways Universities Commonly Fail to Comply with Bayh-Dole

University patent administrators and patent policies make a fetish out of compliance with Bayh-Dole. What’s funny is how this fetish is about selective compliance–compliance that advances the power and freedom from accountability for administrators, at the expense of faculty and students, and in defiance of the Bayh-Dole Act. It’s as if Bayh-Dole was only half a law, a law to establish a well paid administrative class that can operate with impunity when it comes to federally supported inventions–inventions, one would think, that are near the heart of desirable federal research outcomes.

Here’s a list of seven areas in which university administrators routinely thumb their noses at Bayh-Dole, sometimes out of ignorance, sometimes with disregard, and sometimes just because they can. In all cases, however, non-compliance points to a failure to respect the law as well as to an institutional incompetence, or negligence, or even malpractice in managing inventions and invention policy.

1 Fail to implement the (f)(2) agreement

The (f)(2) agreement is not in Bayh-Dole itself, but rather is in the standard patent rights clause authorized by Bayh-Dole:

(f) Contractor Action to Protect the Government’s Interest

(2) The contractor agrees to require, by written agreement, its employees, other than clerical and nontechnical employees, to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the contractor each subject invention made under contract in order that the contractor can comply with the disclosure provisions of paragraph (c), above, and to execute all papers necessary to file patent applications on subject inventions and to establish the government’s rights in the subject inventions.

The fundamental action of Bayh-Dole is to require federal agencies to use a standard patent rights clause by default in all their grants for research, development, and experimental work at nonprofits and small businesses. This standard patent rights clause forms the agreement between the federal government and a university with regard patent rights in inventions made by investigators hosted by the university. The (f)(2) agreement is an, if not the, essential element of this agreement regarding the government’s interest in these patent rights. When a university requires its research personnel to make a written agreement to protect the government’s interests, the university necessarily includes those personnel as conditional parties to the funding agreement–when they invent with federal support, they become contractors, and as they own their patentable inventions, those inventions become subject inventions–inventions subject to the standard patent rights clause.

Here are the core properties of the (f)(2) agreement. Continue reading

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Wisconsin continues to defy the US Supreme Court, five years on

Here is an excerpt from the University of Wisconsin’s current patent policy regarding the Bayh-Dole Act, under the heading “Federal Agreements”:

In order to expand public use of inventions and in recognition of the need for establishing government-wide policies for the allocation of rights to Federally supported inventions, Section 6 of Public Law 96-517 dealing with the disposition of rights to inventions made with Federal assistance was adopted and became effective on July 1, 1981. That section of the law provides, in general, that universities have the first right to take title to inventions resulting from research supported by Federal funding.

The introductory part of the first sentence is administrative fantasy. It’s close to reality, but isn’t.

In order to expand public use of inventions

The Bayh-Dole Act sets out the “policy and objective” of Congress (35 USC 200) with regard to inventions made with federal support–not just any inventions. Whatever anyone else might have wanted Bayh-Dole to do, Congress made sure that it would do its own speaking on the matter. The first stated objective in Bayh-Dole is “to use the patent system to promote the utilization of inventions arising from federally supported research or development.” Well, you might think, that part sounds a lot like “expand public use of inventions.” But the Wisconsin policy is written in a kind of clever code, while the Congressional intent is plain. I will explain. Continue reading

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The tick bites deeper into the neck

I know, most of you don’t have time to work through 50 pages of close reading of a university patent policy, with all its levels and inconsistencies and misrepresentations and foolishnesses. Here’s a summary:

FSU’s patent policy violates Florida state law

  • expands grossly what it can claim beyond securing patents on work product
  • ignores the requirement to review and agree before claiming ownership
  • treats royalty sharing as a generous perk rather than consideration for assignment
  • requires inventors to concur in the university’s non-compliance
  • does not provide for reporting all assignments and agreements to the state

FSU’s patent policy guidance misrepresents and misapplies state and federal law

  • Florida Statue 1004.23
  • Bayh-Dole Act 35 USC 200-212
  • Federal patent law and copyright law

FSU’s patent policy and guidance is ambiguous, inconsistent, overreaching, and deceptive

  • ownership claims are overbroad and random
  • guidance varies from policy
  • policy is inconsistent internally and with other policies, such as academic freedom

FSU administrators seem to believe that

  • administrative self-interest matters more than consideration of inventor contribution
  • policy binds inventors, not administrators
  • university legal counsel is reserved for administrative use against inventors

There you have it. In simple terms, a garbled mess. In slightly less simple terms, a nasty, clever, non-compliant policy that is both incompetent and deceptive, while appearing to be legal and proper. The tick of bureaucracy bites deeper into the neck of research enterprise.

 

 

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Florida State’s garbled mess of patent guidance

[Updated with new accounts of garbledness and bad juju. This policy just keeps giving.]

Florida State University’s”Office of Commercialization” starts a guidance web site off with an enumeration of points about intellectual property. Here’s the first point:

Employee Guideline: US laws state that inventors (relevant to patent protection) or authors (relevant to copyright protection) own what they invent or create, except when they are employees, where employment policies come into play. Most universities like FSU request disclosure and can waive ownership back to the individual in certain circumstances, otherwise will ask to have it assigned to FSU in return for an active commercialization program. If successful, royalties on sales are split with the inventors or authors.

Some general observations regarding the bolded parts.

  • Federal patent law does not state that inventors own their inventions.
  • There is nothing in federal patent or copyright law about exceptions based on employment.
  • Employment policies don’t matter anyway. Written agreements with employees do.
  • Universities don’t now request disclosure of inventions; they require it. Most universities do not require comprehensive disclosure of copyright works.
  • Universities don’t “ask” for assignment; they require it and often now demand it upfront, before any review for “waiver.”
  • An “active commercialization program” is not the basis for a demand to assign, nor is it consideration for such assignment–at most universities the demand is based on employment or use of resources, not on the existence of a technology transfer program.
  • Royalties are any consideration for a patent license, not merely a share of sales; most university sharing of royalties is not based on sales, as most licensed inventions do not result in a commercial product. Universities demand “license issue” fees, milestone payments, and equity as ways to receive revenue without the sale of any product.

If you are game, let’s work through these points. Our working premise is that words matter in policy statements, that meanings–shared, common meanings–matter. When a university administration creates official documents representing the basis for intellectual property management practices, the statements it makes also should matter. Such statements are part of the institutional “offer” to inventors regarding their work. These statements should not be cleverly written to deceive, to hide, to spin, or to confuse. Continue reading

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Stanford v Roche was not about how to make Bayh-Dole into a vesting statute

The Stanford v Roche decision was not at all about the proper technical steps to make Bayh-Dole into a vesting statute. Even the Court’s minority opinion–what the lawyer-krakkens fixated on–was a musing on whether there should be any difference in the equitable ownership of an invention whether the ownership was promised in the future (“I agree to assign”) or assigned now for future inventions (“I hereby assign”). Both seem to accomplish the same result, and both have uncertainties. The first promises to assign once an invention has been identified and meets the conditions specified. The second assigns an utterly undefined thing that does not exist and becomes effective only when an invention is made and is found to meet the conditions specified. But the issue in Stanford v Roche was not about the form of the assignment, but the fact that an equitable interest had been conveyed and nothing in Bayh-Dole voided that conveyance.

Look at the scenario. University has a patent policy that says inventors own whenever possible. The university only requires ownership inventions when it must by contract. A university lab director is on the technical advisory board of a company. He wants his post-doc to work at the company for nine months to learn its new technology. The company agrees, on the condition that anything the post-doc invents as a result of his work at the company is assigned to the company. Post-doc agrees, and signs an agreement that says he will assign and hereby does assign all such inventions to the company. The university agrees with this arrangement.

At this point, everything follows the university’s patent policy. Continue reading

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11 rationalizations regarding university compulsory patent ownership

Given that university patent administrators don’t write about the reasons why a comprehensive, compulsory invention assignment policy is such a good thing, especially when coupled with a monopoly-seeking exclusive licensing program, I will identify some possible arguments in favor of such a happy combination and sketch the problems with them. Of course, I can be accused of constructing straw man arguments, not the actual arguments that have been used. But those actual arguments, apparently, are secret, if not fantasies, so until those get trotted out to be considered, these will have to do.

1) Compulsory assignment is required by federal law for inventions made with federal support.

This claim is made, for instance, in the patent policies at the University of Southern California and the University of Iowa. The US Supreme Court expressly rejected this claim in Stanford v Roche. There is no basis for the assertion.

2) Compulsory assignment is required to comply with federal law for inventions made with federal support.

This claim is made by patent attorneys and university administrators. The University of California made this claim in requiring all employees to sign a revision of the patent policy that included a present assignment. Both NASA and the NSF make this argument in their policy documents. There is nothing in Bayh-Dole or in the standard patent rights clause authorized by Bayh-Dole that requires university ownership of inventions made with federal support. There is a requirement, however, that universities require their research personnel to make a written agreement to protect the government’s interest, including assigning or licensing their inventions to the government–but universities do not comply with that requirement. Instead, they substitute a requirement that research personnel assign to the university. That is, the reason that the requirement to assign to the university appears necessary is that the university has refused to comply with the terms of its federal contract. “Because we choose not to comply, you must assign so that we can comply anyway.” Continue reading

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