UW Continues to Ride Fake Startup Metrics

Posted on November 15, 2018 by Gerald Barnett

From 2008 to 2015, the University of Washington faked its startup metrics and won itself awards and reputation for its entrepreneurial and innovative chops. University administrators concocted a story about startups and repeated it regularly, expressly endorsed by the university’s president.

Here we are in 2018, and the university continues to promote itself based on its fake metrics. Here’s a current “CoMotion” banner ad that shows up at the bottom of many of its web pages:

Let’s consider the university’s claims. Let’s start with number of startups launched. CoMotion cites its source as the Association of University Technology Managers (AUTM). Each year AUTM conducts a licensing survey. Not all universities participate–including some with major research programs. The thing about AUTM’s survey, however, is that it merely reports what participating universities report to AUTM. For years, UW faked its startup metrics and reported more than double the actual number of startups that met AUTM’s criteria for a reportable startup–essentially a company formed for the express intent to license an invention from a university, whether or not the company has finalized that license in the reporting period for the AUTM survey. Continue reading →

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28,000 federal patents and the monopoly meme went into a bar, 4

Posted on November 14, 2018 by Gerald Barnett

In 1980, in introducing S. 414, Senator Dole repeats the 28,000 patents meme:

Now, however, it’s 5 percent, not 4 percent, and it’s not inventions licensed but rather inventions used. It’s a wonderful bit of bluffery. There’s nothing in Forman’s 1976 testimony that would support the claim that the government knew how many inventions covered by its patents were actually being used. At best we know that most of those patented inventions were defense-related, and the defense contractors had declined to own the inventions and patent them. There’s nothing to indicate that the lack of a monopoly position had anything to do with whether any given patented invention owned by the federal government would be used or not, licensed or not, developed or not. Dole here is just bluffing.

Dole continues, conflating federal procurement, basic research to open scientific frontiers, and an “investment” that is supposed to produce new products:

In these two sentences, Senator Dole repudiates the last vestiges of Vannever Bush’s Science the Endless Frontier, the report that provided the impetus for ramping up federal research spending for university-hosted scientific research. Bush had argued that the federal government had a legitimate interest in opening up new areas for public use by funding exploration, and science was no different. For Bush, the “free play of free intellects” at universities was the best way to open up new scientific frontiers, and Bush distinguished this research from that of government laboratories–directed at government agency missions–and industrial laboratories–directed at the production of technology in support of products. Continue reading →

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Bayh-Dole’s “subject invention” botch of the Federal Procurement Regulations, 3

Posted on November 13, 2018 by Gerald Barnett

A careful read of Bayh-Dole and its omission of the patent agreement requirement argues not only did Bayh-Dole reverse the “presumption” of federal ownership of inventions made under contract but also repudiated the federal requirement that contractors own inventions so these inventions could be delivered to the federal government. If inventions do not have to be delivered to the federal government by default, then there is no statutory reason why contractors should own, so long as the federal government received a non-exclusive license if anyone involved ever did obtain a patent.

Bayh-Dole does not require university administrators to crush academic freedom. Indeed, the way Bayh-Dole is drafted, it leaves universities free to be as open and ungrasping as they choose to be, even as small companies might adopt conventional industry-style patent agreements suitable for employees assigned to invent or experiment. Similarly, the implementing regulations for Bayh-Dole produce four distinct standard patent rights clauses–now conflated into two clauses–at 37 CFR 401.14 (for companies, for nonprofits, and for nuclear weapons and propulsion research) and 37 CFR 401.9 (for inventors, to be treated as small business contractors, but with fewer requirements than other small businesses). Notably, the inventor patent rights clause does not require inventors to file patent applications. Federal patent law does not require inventors to use the patent system. Perhaps that’s why Bayh-Dole, as part of federal patent law, also does not require inventors to use the patent system.

For universities, this is a tough nut–though clever university attorneys have persuaded courts using the argument that if a requirement to assign inventions is in the university handbook, then faculty have agreed to it. They then point out their claim on inventions in patent policy and ignore elsewhere in the policy or handbook the more fundamental assurance to faculty of their  freedom of research and freedom of publication. If university attorneys were honest folk rather than (with all due respect) the mostly inapt mercenaries that they are, we would have a chance to have a decent national practice involving inventions made by people at universities. But not the way things are now. Now things are run by clowns misrepresenting Bayh-Dole, a federal law drafted by clowns. Continue reading →

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Bayh-Dole’s “subject invention” botch of the Federal Procurement Regulations, 2

Posted on November 12, 2018 by Gerald Barnett

We are looking at how Bayh-Dole botches invention ownership. Where the Federal Procurement Regulations implemented in 1975 were clear, Bayh-Dole in 1980 is muddy. The FPR approach is simple: contractors must have patent agreements that ensure that contractors will be able to assign inventions made under contract to the federal government unless the federal government allows a contractor to retain ownership. Thus, in the FPR every invention made under a federal contract will be a “subject invention”–an invention “of the contractor” because the contractor, as a requirement of the patent rights clause prescribed by the Federal Procurement Regulation, the contractor must have an equitable interest in every such invention.

Bayh-Dole fails to do this. Bayh-Dole does not require contractors to have patent agreements. Thus, while the Federal Procurement Regulations create a mechanism by which all inventions made under contract become inventions “of the contractor,” Bayh-Dole applies only after a contractor acquires–if ever– an invention made under contract. Further, the Supreme Court made clear in Stanford v Roche that Bayh-Dole has no mechanism to vest title of inventions made under contract with the contractor, nor to otherwise create a mandate for contractors to acquire title to such inventions. Law professors are led to crazy propositions such as that somehow a report from 1947 led federal policy makers–patent attorneys, in this case–to assume–mistakenly–that everyone got patent agreements so they could just drop what they had drafted five years before about requiring contractors to have patent agreements.

No, instead it was a botch job in drafting–like much of Bayh-Dole. Or was it? Perhaps the move from a federal procurement regulation under the control of the executive branch to an amendment of federal patent law under the direction of Congress fundamentally altered what a patent rights clause could require by way of contractor rather than inventor ownership. Or perhaps in the wrangling that produced Bayh-Dole and its standard patent rights clause, people decided to create a pathway by which inventors rather than organizations had the freedom to decide what to do with their inventors. But university patent administrators have insisted since Bayh-Dole was passed that the law intended universities to own all inventions arising from federally supported research, even though the law has nothing of the sort–nor does its standard patent rights clause. Continue reading →

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After Inventor Virtue

Posted on November 11, 2018 by Gerald Barnett

In After Virtue, Alasdair MacIntyre describes “emotivism” as the approach to morals that arose in the debris of the failed Enlightenment effort to find a rational basis for morals. Emotivism asserts that there can be no such rational framework and that individuals merely follow what appears “right” to them. From an emotivist perspective

there are only two alternative modes of social life open to us, one in which the free and arbitrary choices of individuals are sovereign and one in which the bureaucracy is sovereign, precisely so that it may limit the free and arbitrary choices of individuals.

The organization asserts its free and arbitrary purposes beyond debate by mere individuals. Individuals will never agree among themselves with regard to what is “right.” Thus, the organization asserts that individuals are moral as they conform to the will of the organization and take on the roles assigned by the organization:

The bifurcation of the contemporary social world into a realm of the organizational in which ends are taken to be given and are not available for rational scrutiny and a realm of the personal in which judgment and debate about values are central factors, but in which no rational social resolution of issues is available, finds its internalization, its inner representation in the relation of the individual self to the roles and characters of social life.

Organizations impose on us the roles we must play to properly serve the organization. We end up with character types of the inventor or entrepreneur as defined by university policy. Technology transfer “training” within a university insists that inventors and entrepreneurs must conform to the university’s definitions of these roles. There is no room for rational arguments made by individuals–because, as emotivism would have it, rational argument with regard to what is “right” to be done cannot possibly arrive at an acceptable resolution. The organization recognizes no rational standard beyond its own assertions. Inventor and entrepreneur become domesticate roles played out in the presence of university administrators.

MacIntyre’s point is that under emotivism neither the individual nor the organization has any foundation to resolve questions of what constitutes virtuous action. What constitutes good behavior, good practice, public good in the case of research findings, whether inventive or not, or valuable or not? An organization’s statement of morals under emotivism ends up being a wordsmithed version of whatever sounds right to administrators–and that moral code will be pleasant compliance and efficiency. Obey without waste, and be nice about it. That’s pretty much what university patent policies say these days. Hopelessly ugly stuff.

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Seaplane as innovation vector

Posted on November 10, 2018 by Gerald Barnett

Here’s a film about the age of “flying boat” air service, The Flying Boats.

Air mail service provided the entry point to develop the infrastructure that set the stage for the development of commercial passenger service.

The Lake Union Virtual Museum project has a video that describes the development of the Alaska bush plane service from the pilots who flew Boeing’s seaplane airmail service to Alaska (and who were rumored to add undocumented stops in Victoria, BC to pick up alcohol during Prohibition). Again, air mail came ahead of passenger service.

Note that the innovation that’s implicit in the development of airplanes capable of providing commercial passenger service across the Atlantic Ocean does not appear to depend on federally funded “research”–or, if such research is somehow involved, Pan Am did not have to negotiate patent licenses from a bunch of universities to obtain what it needed. Rather, there was a robust public domain of science and engineering.

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Bayh-Dole’s “subject invention” botch of the Federal Procurement Regulations, 1

Posted on November 9, 2018 by Gerald Barnett

Bayh-Dole botches its management of invention ownership.

To see how, we need to look at how Bayh-Dole in 1980 changed the Federal Procurement Regulations put in place in 1975. In particular, let’s look at how the definition of subject invention slips between the patent rights clause in 41 CFR 1-9.107-5 and Bayh-Dole 35 USC 201(e).

Here’s the invention ownership scheme under the federal procurement regulations:

The federal government requires contractors to assign inventions made with federal support. The contractor must have patent agreements with those employed under a federal contract so the contractor can assign inventions to the federal government. The contractor doesn’t have to assign inventions if an exception applies. In any case, the contractor at all times is required to have equitable title in each invention made under contract.

Let’s look, then, at the patent rights clause at 107-5 in the old Federal Procurement Regulations. Here it is, broken into sections for emphasis: Continue reading →

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A clever misrepresentation at the origin of Bayh-Dole

Posted on November 8, 2018 by Gerald Barnett

Let’s see if we can isolate the origin of the Bayh-Dole Act. In about four minutes, you will read the following again:

The roots, then, of Bayh-Dole are to be found in a mischaracterization of the Harbridge House report of 1968, translated into a revision of the Nixon version of the Kennedy patent policy and from there into the federal procurement regulations, which formed the basis for Bayh-Dole, which was stitched together from those regulations and the dead IPA program.

Skip all the political spin about concerns over American technology competitiveness as measured by the number of US patents being filed by US companies. That’s just crass silliness. We are talking here about how it comes to be that the federal government gives itself the mandate to grant exclusive licenses to inventions owned by the federal government without proper supervision or accountability and to then delegate this right to nonprofit contractors, also without proper supervision or accountability. The Bayh-Dole cleverness was to make the delegation arbitrary and to preempt all other legislation that provided supervision or accountability in specific areas of research and development.

Various elements come together to permit the Latkerstein monster of Bayh-Dole to come to life. Continue reading →

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Illusions of Bayh-Dole: “manufactured substantially” 6

Posted on November 7, 2018 by Gerald Barnett

Now let’s look at Bayh-Dole’s treatment of federal employees who make inventions. Actually, there’s nothing in Bayh-Dole about it–Bayh-Dole applies only when a federal agency grants licenses to the inventions it owns. When the federal government allows a federal employee inventor to retain title, there’s no license. Instead, we have to look to other authority–and in this case, that authority is Executive Order 10096 (later amended and which has its own odd history). The regulations cover the scope of the government’s claim on inventions made by federal employees and how that claim may be administered. There’s a long section setting out the inventions that the federal government may claim. For our purposes, it’s enough to recognize that the federal government is authorized by Executive Order 10096 to make such claims on inventions.

However, the federal government does not have to obtain ownership of an invention even when it has the authority to make a claim on a federal employee’s invention. In a bizarre bit of drafting, 37 CFR 501.6 describes two situations–one in which the federal government has an equitable claim in an employee’s invention and a second situation in which the federal government’s interest in an invention is insufficient to make an equitable claim of ownership OR the federal government is not interested in making a claim of ownership even if it does have an equitable claim. This may feel complicated on first impression, but hang in there.

Situation 1: Government has equitable claim

Situation 2: Government lacks interest in invention to make an equitable claim or to act on its equitable claim

Now here’s the bizarre bit. 37 CFR 501.6 provides that the government can claim a non-exclusive license and impose conditions on the inventor’s use of an invention even when the invention falls outside the federal government’s claims to equitable title and even when the invention falls outside any other basis for the government to have any claim whatsoever. Even if an invention was not made in connection with an employee’s official duties, not during working hours, without the contribution of any federal funds, 37 CFR 501.6 still authorizes the federal agency to take a non-exclusive license and impose conditions on an employee inventor’s ownership of an invention. Continue reading →

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Illusions of Bayh-Dole: “manufactured substantially” 5

Posted on November 6, 2018 by Gerald Barnett

Bayh-Dole’s statement of policy at 35 USC 200 includes a provision calling for the use of the patent system “to promote the commercialization and public availability of inventions made in the United States by United States industry and labor.” Folks often misread this requirement as if it states that Bayh-Dole mandates commercialization–it does not. Rather, this provision focuses on the making inventions in the United States by United States industry and labor, regardless of whether those inventions are commercialized or are made publicly available. Note–not making of inventions in the United States by foreign industry, or making of inventions in the United States with foreign labor.

Bayh-Dole’s statement of policy at 35 USC 200 stands on its own. The rest of the statute provides guidance for specific situations–when a contractor licenses exclusively in certain situations, when the federal government licenses, and when the federal government permits a federal employee to own an invention. We have worked through Section 204 in detail in previous installments. Now let’s consider the federal side of Bayh-Dole’s use of the patent system to promote United States industry and labor.

First, a refresh. Section 204 of the Bayh-Dole Act positions itself as the most important part of the law. Section 204 requires that owners of subject inventions must, in exclusive licenses to use or to sell, have licensees agree to source product based on the invention “manufactured substantially” in the United States. The requirement is a weak one–it applies only to exclusive licenses in the United States, not to a patent owner’s own exploitation of a subject invention. The requirement is further weakened because it authorizes federal agencies to grant waivers to the requirement. The requirement is weakened further still because the requirement is placed in the standard patent rights clause, federal agencies are given authority over the standard patent rights clause, and federal agencies have no obligation to enforce the standard patent rights clause. Thus, Section 204 is mostly administrative fluster. Continue reading →

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