The non-preference for US manufacturing under Bayh-Dole

Posted on October 15, 2020 by Gerald Barnett

A recent search at RE was looking for “preference for manufacturing in US under Bayh-Dole.” There’s a series of articles here on 35 USC 204. There’s also discussion of the related march-in provision at 35 USC 203(a)(4) and the broader objective at 35 USC 200.

But let’s save you all some time.

There is no preference for US manufacturing under Bayh-Dole.

Section 204 is titled “Preference for United States industry.” Sounds nice. 204 says it takes precedence over any thing else in Bayh-Dole, and Bayh-Dole says it takes precedence over anything that has gone before but for Stevenson-Wydler. Still sounds nice. But it’s an empty gesture.

Section 204 is more accurately a preference for United States manufacture in limited exclusive licensing to use or to sell in the United States. Continue reading →

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University Patent Policy for Effective Technology Transfer, 11: Two key provisions

Posted on October 13, 2020 by Gerald Barnett

A university patent policy designed to promote effective technology transfer will have these key provisions:

Voluntary participation

Default institutional non-exclusive FRAND offer

These are key elements. FRAND is “fair, reasonable, and non-discriminatory.” We will work through the reasons why these are key provisions for policy. But first, let’s be clear. We are talking university policy for effective technology transfer.

We are not talking about university administrators trying to make a lot of money from patents. The current approach to licensing is no better at making money than other approaches, and in many cases is much, much worse despite all the glossy licensing office reports. The present approach involves a gambling ethos–speculate often and get lucky once a decade. Or, “high risk, high return.” Or, winners pay for losers. Or, this stuff is all “early stage.” All the same fluff talk. It’s just that the patent speculation involves (i) trading on people’s career research; (ii) dealing mostly with other speculators and gamblers; (iii) excluding almost everyone else, from the general public to researchers to small companies to entrepreneurs to big companies that don’t see the point of a university or federal agency demanding an investment in trying to develop a commercial product as a precondition of access or use. Other approaches have made money just as readily, if money is the thing. Other approaches, too, have made better money–money from better sources, for better uses, with better relationships. We can go down this road and explore what “better” means–so long as we don’t end up with what bureaucrats think of as “better.” Institutional pie in the sky is often shit pie, but to bureaucrats it sure looks like chocolate cream shimmering up there. Continue reading →

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University Patent Policy for Effective Technology Transfer, 10: Exclusivity compared

Posted on October 7, 2020 by Gerald Barnett

Now let’s look at a university that defaults to seeking an exclusive patent licensee instead. That comparison is even worse for leading with a patent license vs research review. There are way fewer folks out there in the technical world hungering after new technology because it is patented. The moment one moves to an exclusive license default, one has greatly reduced the possible opportunities to transfer technology. One also positions the university as a potential litigator for infringement set against everyone who does not get that one exclusive license on offer.

Scenario 3:

University posts a new invention on its web site as a “technology available for licensing” and as a default practice holds the invention for exclusive licensing.

This situation 3 is the common practice in the Eat and Fart model of university licensing–assemble a vast, indiscriminate “portfolio” of inventions, hold them for exclusive licensing opportunities, and wait for someone to show up (or “market” the invention to “industry” in various ways, such as listing the invention as a “technology available for licensing”).

Exclusive patent licensing is a low-volume, slow-transaction process with a limited potential “market” for licensees. Add to that a demand for “commercialization” of each invention for such exclusive licenses, and it is no surprise at all that there is no rush to license most inventions held by universities. As for university patent policy, choosing a default approach that has few takers, takes a long time to find even one taker, and often takes months to negotiate a license contract does not create the prospects for effective technology transfer. Continue reading →

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University Patent Policy for Effective Technology Transfer, 9: Booking transfer income

Posted on October 6, 2020 by Gerald Barnett

We are considering scenarios that involve patentable inventions as a way to get at what a university patent policy should look like to support effective technology transfer. We compared two scenarios. In the first, a university offers a non-exclusive patent license. In the second, the university offers a research review workshop and the patent license is a free extra. We then could see that these two scenarios lead to very different transfer pathways and relationships.

Technology transfer may be hard, but university bureaucrats choose methods that make it even harder. Then they ask for more money to try to make their methods work and have to make up metrics to make it seem they are right. One thing about bureaucrats–they cannot tolerate being wrong, or even accused of being wrong. That’s why we get such silliness as NIST discussing in the same breath how successful Bayh-Dole has been and the need to find new bureaucratic techniques to “unleash innovation” and make Bayh-Dole even more successful. Success, as it were, means screwed up in ways we cannot admit. The hard lesson for bureaucrats, however, is that “even more successful” does not mean unwinding all the screwed uppedness but rather means “screwing things up even more, but now with less accountability or transparency or right of appeal.”

Oh, but you say that universities don’t bother offering non-exclusive patent licenses, so it’s a worthless comparison. That’s true! Continue reading →

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University Patent Policy for Effective Technology Transfer, 8: Transfer parameters

Posted on October 5, 2020 by Gerald Barnett

We are comparing two technology transfer scenarios as a way to get at effective university technology transfer policy. Here are the scenarios again:

Scenario 1:

University offers a non-exclusive patent license for $5,000 with no post-license assistance other than delivery of documents at the time of the license.

Scenario 2:

University offers a two-day research review workshop for $5,000 led by the team that made the invention. Up to three people may attend on each registration. Companies attending receive a royalty-free, non-exclusive license to the invention and for the next year, access to the research team for up to 10 hours of assistance on an as-available basis and notice of updates, plus a free license to any of those updates.

Transaction time

The first scenario, with a patent license offer, is a transaction that will go slow. It involves legal review, and legal review in turn depends on the status of the patent claims. If no claims are allowed, then the company does not need a license. If the allowed claims do not read on what the company intends to do (or is doing), then the company does not need a license. If the allowed claims are easy to design around, then the company does not need a license. The company will want to drag things out as long as possible to allow time to determine if the patent is valid, claims are meaningful, and a license is necessary. For that, the company will want to wait at least until there are claims allowed and see that those allowed claims read on what the company is doing or is considering doing and the company can’t do anything else. Continue reading →

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University Patent Policy for Effective Technology Transfer, 7: Transfer pathways

Posted on October 4, 2020 by Gerald Barnett

We are working through what a university patent policy should look like to support effective technology transfer practices. The Eat and Fart model–claim ownership of everything and mostly fart away opportunities to transfer so long as one exclusive deal every two decades is lucrative–is among the least effective approaches one might take to technology transfer. The Eat and Fart model is a bureaucratic risk-averse parasitic survival model. All that matters is that one show the potential for making big money some day from some patent somewhere in an ever-growing “portfolio.” That’s the antithesis of technology transfer. It’s what a bureaucratic parasite would do. And they have. There’s your primary effect of Bayh-Dole–attracting bureaucratic parasites to university administration where they can destroy long-standing (and productive) policies of research freedom–freedom from institutional meddling and central control.

We have talked, then, about transfer relationships. Technology suited to institutional management of IP transfers effectively through institutionally sanctioned relationships. A good objective for university patent policy, then, is to identify inventions that are suited to institutional management and authorize university personnel and resources to acquire and manage such inventions.

Now consider again those two scenarios. Let’s expand them a bit. We will start with the offer of a non-exclusive patent license. I know–you never, never do that. Then we will consider the offer of an exclusive patent license.

Scenario 1:

University offers a non-exclusive patent license for $5,000 with no post-license assistance other than delivery of documents at the time of the license.

Scenario 2:

University offers a two-day research review workshop for $5,000 led by the team that made the invention. Up to three people may attend on each registration. Companies attending receive a royalty-free, non-exclusive license to the invention and for the next year, access to the research team for up to 10 hours of assistance on an as-available basis and notice of updates, plus a free license to any of those updates.

Here are some ways that these scenarios differ as a matter of effective technology transfer practice.

Continue reading →

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University Patent Policy for Effective Technology Transfer, 6: Consider two scenarios

Posted on October 3, 2020 by Gerald Barnett

Once in Weisskirchen a man said: . “I never, never do that.”

At the exact same time in Mühlhausen a woman said: “Beef with horseradish.”
Both of them said what they said, because there was no other way.

from “Glocke.” Kandinsky, Klange (trans. Napier)

Consider these two scenarios.

Scenario 1:

University offers a patent license to a new invention.

Scenario 2:

University offers a research review workshop led by the team that made the invention. Free non-exclusive patent license to the invention thrown in.

Never? or beef with horseradish? Stink about these two scenarios for a bit in the context of effective technology transfer policy. Then we can discuss.

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University Patent Policy for Effective Technology Transfer, 5: Transfer relationships and leading assets

Posted on September 30, 2020 by Gerald Barnett

We are working on university patent policies for effective technology transfer. I have described the Eat and Fart model that dominates university patent practice: eat everything, fart a lot, and drop a financial turd once every decade or two to fund the whole crapfest. Declare success.

Now let’s settle down a bit and consider some scenarios to stink things through from a technology transfer practice perspective. In effective technology transfer, one leads with assets that form relationships that then move along (and also form and change) a technology. A technology is not a single thing. It is a “they.” It is a “thing” in its Old Icelandic sense, of a gathering. A technology transfers and reassembles in pieces, bit by bit. As a technology requires skill, or new instruments or machines, or special materials, or new methods, it takes time, effort, and money for these bits to be learned, built, acquired, configured to practice the technology. The transfer takes place effectively when there is a working relationship to do so between those providing access and those wanting access.

Lots of technology that is part of adjacent possibles–things that most anyone can do next once they have gained the capability to do what they are doing–does not require transfer. People can do what they need to do on their own. Transfer relationships then compete for attention–why use a transfer relationship when one can dink around and get there as effectively and with fewer hassles? An effective technology transfer relationship then offers the prospect of acquiring a technology faster, more effectively, than dinking around oneself. Continue reading →

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Crap, crap, crap, Bayh-Dole, and crap talking points

Posted on September 28, 2020 by Gerald Barnett

Think of these as presentation slides, but without the actual mental pain of seeing slides.

Bayh-Dole

has failed to produce the outcomes claimed
has destroyed university research freedom and technology transfer
is a drafting nightmare of inconsistencies, half-hearted gestures, and red tape
lacks public oversight, accountability, right of appeal, and enforcement

Universities

don’t comply with Bayh-Dole’s patent rights clauses
misrepresent Bayh-Dole
misrepresent their technology transfer metrics
take and botch research findings that they have no right to

Federal agencies

don’t comply with Bayh-Dole
don’t enforce the standard patent rights clauses authorized by Bayh-Dole
don’t use the rights Bayh-Dole reserves for them
don’t protect the public patent abuse

Bayh-Dole practice

undermines university research
suppresses use
caters to patent speculators over early adopters
puts a bureaucrat’s thumb in every beneficial research result
is parasitic, not catalytic

Nothing demonstrates that Bayh-Dole has been successful. Bayh-Dole is a dismal failure.

Repeal Bayh-Dole
Re-instate the Kennedy patent policy
Forbid restart of IPA programs
Follow the 1947 AG’s report
Forbid federal exclusive licensing

Fund development of inventions important enough to patent and which are directed to the objectives of publicly funded work, then release non-exclusive, royalty-free.

Companies with real markets may retain rights in inventions they acquire made in federally funded work, with a license to practice to the government, except in public health and when a federal agency funds development.

Nonprofits and contract research organizations can retain patent rights on a public showing that their holding exclusive rights better serves the public than does open access. They get three years from patent issue to prove themselves right or what they’ve claimed goes open.

Stipulate that no nonprofit or university gets any federal research funding if it makes any claims on anything in federally supported research.  Inventors may make claims. The public may make claims. That’s it.

Crap, crap, crap, Bayh-Dole, and crap.

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Crap, crap, crap, Bayh-Dole, and crap (short attention span version)

Posted on September 28, 2020 by Gerald Barnett

Bayh-Dole is crap.
Bayh-Dole practice is crap.
Bayh-Dole outcomes are crap.
Universities bluff about Bayh-Dole and about their metrics.
Federal agencies don’t protect the public from university patent abuse.
Federal agencies don’t act on the rights Bayh-Dole reserves for them.
Crap, crap, crap, Bayh-Dole, and crap.

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