It occurs to me that something else may also be preempted by the typical university approach to Bayh-Dole: public service. This in particular might be something of consequence for land grant universities. Let’s see how this might arise.
I have pointed out the guidance in Circular A-110 with regard to intangible assets. There, universities are to be trustees of the intangible assets (including patents) that they acquire in the course of federally funded research. Their role is to hold intangible assets in trust “for the beneficiaries of the project or program under which the property was acquired or improved.” If we turn to Bayh-Dole, we can see at 35 USC 200 who is named as a possible beneficiary. The list includes American manufacturers, small businesses, industry in its relationships with universities, inventors, scientists, educators, and the public generally. The list doesn’t include universities. Darn.
I have argued that universities are uniformly ignoring much of Bayh-Dole in implementing Bayh-Dole. How is this possible? By not acknowledging the diversity of innovation practices made available by the law. By not taking care to understand the mechanisms by which the law operates. By disregarding the objectives stated for the law, or more accurately focusing on a tiny portion of the whole, so that Bayh-Dole is reduced to “making money on the sale of commercial product.” Some federal innovation policy, that. But it’s not federal policy. It’s self-created university policy pushing aside really well conceived federal objectives.
This means for university claims of ownership of inventions that the university role is conceived of in terms of corporate ownership, not as a trustee or steward on behalf of other interested parties. As a corporate owner of patent rights, universities construe their relationship with faculty in terms of employment rather than in terms of service to the purposes faculty aspire in doing research with public resources. This argues for control based on orderly managerial virtues such as consistency, compliance, and avoidance of risk, not on the basis of innovation, outreach, and public service. It’s an easy jump to make, from something distinctive about universities to making universities look like any other corporate employer of research expertise, claiming as many as inventions as possible, typically on the premise of choosing those that “have commercial potential”. I can’t help but think that “commercial potential” is codespeak for “things we can make money from by licensing patent rights.”
The upshot defense for this approach to invention management appears to be: “If it is good for us, then it is good for the public, because the university is good for the public. If we do it, it must be public service. If we make money, that then is also good.”
I don’t have any problem with a university making money from its licensing activities. Good going. How that comes about, however, matters a great deal. Most “we are not really in it for the money” discussions reduce to a defense of a licensing approach fixated on commercialization to make a lot of money. The telling signs are in the deals that get done, and the internal requirements that keep such deals getting done. The most telling of all is a royalty sharing schedule that divides up licensing income in advance between inventors and administrators. There is no money left over for public purposes (other than whatever the university spends on itself being taken as a public purpose). What happens, in such an environment, to public service?