You know something has to be rotten with Bayh-Dole when:
- university administrators never cite the law even close to correctly
- the statistics used to champion the law are fake and deceptive
- all reports of invention utilization are government secrets
- university administrators refuse to comply with the law
- there’s no enforcement of the parts of the law cited for its “success”
- key implementing regulations were designed not to operate
- the ones who most like the law are bureaucrats and patent attorneys
- major organizations issue fakographics by the ton filled with the same crap
Not all bureaucrats are rotten, of course, but you can tell the rotten ones right away–they do the things in the list of things rotten with Bayh-Dole. Bayh-Dole on its own does little more than establish terms for a default patent clause, make clear that any federal agency can grant exclusive licenses to inventions it owns, and change federal patent law to delineate the patent property rights in such inventions. It’s rotten administrators that have made Bayh-Dole into a rotten mess.
Bayh-Dole has throttled American university research inventions. These inventions now get held back behind a bureaucratic paywall. Most go unlicensed. Of the few that are licensed, the licenses preserve a private monopoly. Most of those monopolies are merely speculative play for rounds of investors helping later investors lose money. Only a tiny handful of inventions escape this monster system, with a bureaucratic thumb in every inventive pie.
Bayh-Dole, built on fraud, representing aspirations as fact, deathly silent on what is actually happening, the only ones living large being the patent attorneys and university bureaucrats and drug companies.
Shut the thing down. Continue reading
The Bayh-Dole desperation continues. Now Bio has released its very own fakographic, citing impressive-sounding numbers with no foundation in fact, a fake history that exists in the minds of a few pundits, and perpetuates a fraud on the public that is happily convenient for the drug industry. But what of facts?–who needs fact when one has a happy fantasy?
Let’s have a look at this new fakographic. This is getting to be a regular feature. Who next will put out the same stinking thing?
The “Law at a Glance”:
No, Bayh-Dole does not “empower” anyone to “take ownership.” The Supreme Court was crystal clear on this point, not that Bio or AUTM or any of their propagandists could possibly read:
The Bayh-Dole Act does not confer title to federally funded inventions on contractors or authorize contractors to unilaterally take title to those inventions; it simply assures contractors that they may keep title to whatever it is they already have.
The Act’s disposition of rights—like much of the rest of the Bayh-Dole Act—serves to clarify the order of priority of rights between the Federal Government and a federal contractor in a federally funded invention that already belongs to the contractor. Nothing more.
The introduction of a goofball definition of “invention” into the University of Missouri’s patent policy has a real effect: it transforms the scope of the policy text–especially at D.1 (inventions claimed by the university) and at D.2 (inventions that must be reported to the university)–without changing the text of those sections. There is nothing new in the policy text at these spots to indicate that a definition elsewhere has changed the meaning of the text. In software programming, this is just the sort of practice that gets people into trouble–changing variables globally without local accountability. Where “invention” used by the 1956 policy to mean, clearly, patentable invention, it now means whatever gets called an “invention” by administrators. As long as there is “conception” of an “idea,” there’s an invention. According to the goofball definition of invention, any idea fully conceived in all its elements is, for purposes of the policy, an invention, regardless of whether that invention is directed at patentable subject matter, is novel, is useful, or anything else that creates a basis for patenting.
The idea behind this move is to get at inventions before they become patentable; that is, before they are something to be owned by patent. This is the same driver that leads university administrators to create bespoke definitions of invention to include most anything they can think of in ever-increasing lists of possible assets, many of which can never be reduced to the scope of a patent. The effect, then, of these expanded definitions of invention is to claim for the university an ownership position in ideas before they have been developed to the point of patentability. Any idea, if it is held back from public disclosure, the argument goes, might provide the basis for someone to pay to use the idea. The patent policy gets used to establish an institutional claim to ideas that might become inventions. The university, as it were, is made to claim ownership of ideas so that it might control and direct the development of those ideas toward patentable assets. Continue reading
Darned! We have not yet dealt with the promised interrelationship between conception and actual reduction to practice as promised by Footnote 1 of the University of Missouri’s patent policy. It’s rather simple, generally, for a university patent policy that wants to distinguish between inventions that the university should own and all other inventions. State the conditions under which it makes sense for university administrators to bargain for ownership of inventions and when it is not. Really, there are no good reasons for university administrators to compel the assignment of inventions, though there may be good reasons in some cases for faculty to agree among themselves not to pursue patenting and there may be good reasons as well for administrators to decide not to accept ownership of inventions even when offered.
The University of Missouri patent policy, as written, gives two conditions under which university administrators may require assignment of inventions–when an invention relates to the general field of an inquiry to which an employee has been assigned, and when an invention has been made or developed in a substantial degree using university facilities, financing, time, or the university’s non-public information. But this isn’t enough for the policy. At some point in the mid-1990s, an administrator felt the need to worry “conceived or first actually reduced to practice,” probably because Bayh-Dole used this phrase and, so the administrative thinking must have gone, to comply with Bayh-Dole the university also had to claim anything that was “conceived or first actually reduced to practice.” It was silly nonsense, of course, because Bayh-Dole doesn’t require federal agencies to require universities to own any invention, and thus university patent policies don’t have to be modified to comply with Bayh-Dole or its standard patent rights clause. Continue reading
If the University of Missouri patent policy were aiming to provide helpful information to university personnel at a loss to understand what patents are, that would be one thing. In that case, the policy would not need to define invention so much as provide a discussion of what makes an invention patentable and therefore of interest to the policy (assuming that the policy intends to restrict itself to patentable inventions). And if that were the case, then the best place to do that is in a little educational booklet or something. There’s no need for a dissertation–especially a bad one–pressed into policy language.
There is an added complication. The Missouri policy is not merely a statement of institutional interest and delegation of authority. The policy goes out of its way to insist that it is part of the employment contract with each employee:
With respect to Employees, these patent and plant variety regulations form a part of the employment contract. These regulations constitute a condition of employment of all Employees of the University, and shall be effective as to all Inventions and Plant Varieties made during any period of employment from and after the date of their adoption.
There’s a difference between a university expecting employees to follow a policy and making that policy a matter of contract, and especially an employment contract, and especially when those who are employed include university faculty who have tenure. In the first instance–policy as delegation of authority, statement of objectives, and establishment of procedure–if employees fail to follow a policy, the university may take disciplinary action–letter of censure, demotion, demand restitution, termination of employment. In the second instance, however–where a policy statement has been made the subject of a contract–while the university may now take action based in addition on breach of contract if an employee fails to follow the policy, the university is also exposed to a contractual claim for breach if the university fails to follow its own policy. Furthermore, since the policy has been declared part of a contract, the university is not at liberty to change the contract with regard to any given employee without that employee’s concurrence. That’s the upshot of the ruling in the Shaw case: Continue reading
How has the University of Missouri gone from a remarkably sensible and readable policy in 1956 to a grasping, scheming, convoluted, and at times incomprehensibly bombastic policy now? And why is it that university administrators insist that their policies give them ownership of “all intellectual property created utilizing University facilities” by university employees, when neither the patent policy nor the copyright policy do any such thing?
I don’t have sufficient insight to know the causes of such administrative shenanigans, but there are some tell-tale signs that the Bayh-Dole Act has something to do with it all. I will show you the evidence, and you can decide.
The Bayh-Dole Act came into effect in 1981, and the University of Missouri next modified its patent policy in 1992, then again in 1996. By 1996, the policy was in nearly its present form. In the 1996 version, the policy has been changed from the 1956 original in some telltale ways. First, a definition of “invention” has been added, together with a couple of odd footnotes that make a jumble of patent law rather than just reciting it or stating things simply.
In the 1956 patent policy, “invention” referred to a patentable invention. There was no need for any added definition or explanation. The policy expressly disclaimed an interest in inventions that were “obviously” not patentable. By the time of the 1996 patent policy, however, we have an invention definition that is expanded to include plant variety certificates. No doubt plant variety protection is important to a university with a strong agricultural program, but plant variety certificates are not a matter of patentable subject matter. They aren’t “inventions” in a patent sense, and the law treating them isn’t patent law. There are plant patents, but plant patents are distinct from plant variety certificates. Plant patents deal with asexually propagated plants, while plant variety certificates deal with sexually propagated plants and tubers. So why all of a sudden to plant variety certificates show up in a patent policy? Why not in a “plant varieties policy”? After all, the university has a copyright policy to deal with copyright, which is distinct from patent.
The reason is Bayh-Dole. Continue reading
We have thus far established the conditions upon which the University of Missouri patent policy asserts an ownership position for the university in inventions made by employees. For the claim to be made, an invention must meet either condition (1) [relevant to the general field of an assigned inquiry] or condition (2) [used university resources in a substantial degree]. Inventors must report all inventions they make.
If an inventor believes an invention is outside the university’s ownership claim, the inventor adds information on the circumstances, the inventor’s official duties, and the interest the inventor has in dealing with the university anyway. The invention report goes to the inventor’s supervisor or department head, who reviews especially the circumstances and makes a recommendation with regard to the inventor’s claim. The report then goes to the Patent Administrator, who forwards it to the Patent Committee since it involves an inventor’s claim of ownership. The Patent Committee hears from the inventor and may investigate on its own, and makes a recommendation to the university president.
If the university has no ownership claim by policy, then there’s nothing for the president to do–the president’s official actions are limited to waiver, assignment, and licensing but only with respect to patent rights that the university does have a claim to. Thus, if the university has no claim to patent rights, policy gives the university president nothing to do. Of course, if an invention is within the university’s policy claims, then the president may choose to waive the university’s claim–the university does not have to take ownership, even if an invention is within the scope of its policy claim. Continue reading
Now let’s consider the procedures by which an invention made by an employee (or non-employee, as the case may be) of the University of Missouri is to be reported. The university’s patent policy has changed over time. The original idea (from 1956) is that inventors report to the Patent Committee, routing the invention report through supervisor, head of department, and dean. “Obviously unpatentable” inventions are excluded from the reporting requirement. In the original patent policy, reports are to be made “as promptly as possible” but the policy goes on to recommend that inventors wait until they have reduced an invention to practice before reporting it. This recommendation is removed from later versions of the policy, changing the meaning of “as possible” without changing the actual wording–a delightful strategy administrators love to use. “We didn’t change the policy, we only clarified the policy.”
In current Missouri patent policy, invention reports are controlled by the Patent Committee (100.020.D.2.a.(1)):
The Patent Committee may prescribe the form and manner of execution of the Invention disclosure report, and such Invention reports shall be treated as restricted reports of the University.
The invention report then apparently goes to the Patent Administrator (F.2.b), but first the invention report is, apparently, routed to the “supervisor or department head”:
The supervisor or department head shall ascertain that the Invention or Plant Variety report and other papers are prepared in conformity with these regulations;
It is not clear what the “other papers” are, since the requirement is that all inventions must be reported. No doubt administrators must have had something in mind, but like good administrative drafters (meaning, crappy), the did not bother to mention these “other papers”–I think I know what these “other papers” are, but let’s leave that for now. Continue reading
The distinction in the University of Missouri patent policy between the broad scope of activities that a faculty member might properly undertake in the freedom of the university and the narrow scope of claims under which the university by policy might claim ownership of inventions frames the requirement for disclosure of inventions, including the circumstances of invention, so a determination can be made whether the university’s limited conditions for asserting ownership have been met.
Here’s the university’s patent policy on disclosure of inventions (D.2.a.(1)):
Every Invention made by an Employee of the University shall be reported by such Employee to the President.
That is, every invention is to be reported, regardless of whether or not the invention meets the university’s conditions for claiming ownership. It is worth noting that the invention ownership conditions (1) and (2), the assurance that inventors own all inventions that don’t meet these two conditions, and the reporting requirement all date from 1956 and have been largely unchanged since, although the university has built up all sorts of apparatus around them, including messing with the definitions of invention and employee, and thus the introduction of capitalization. In short, employee is defined to include non-employees and invention is defined to include non-inventions. This is the usual cognitive dissonance found in university patent policies, making it all but impossible to have a normal conversation about inventions or employees. Continue reading
There is an order in the open-ended drift by which economic life develops and expands, but it is not the order of “challenge” and “response” to be found in military thinking or in Toynbee’s idea that civilizations die because they fail to respond to challenge. Rather, the order at work is more like biological evolution whose purpose, if any, we cannot see unless we are satisfied to think its purpose is us.
Jane Jacobs, Cities and the Wealth of Nations (1984)