I have written multiple times I don’t much care who wins Stanford v. Roche. I like universities and I like companies and I can see problems and advantages in both. I know some of the people at Stanford and don’t know anyone at Roche, and that makes it tempting to just stay quiet, be part of the silent 1/3 until it’s clear who is winning and then pick sides. But no, that is not to be.
What I do care about, however, is when a university-industry collaboration goes bad, into a dispute that ends up in litigation. That is something to make note of. Bayh-Dole has as one of its express objectives the encouragement of such collaborations, so it’s sad to see one part of Bayh-Dole being used to gnaw off another part of Bayh-Dole.
I also care about seeing inventors recognized for their work, especially in the context of public support. Too often the idea is that they should be slogging through their work in some fashion and should be happy they get paid at all, with the assumption they would be doing this work anyway (money not a motivator) and that the public benefit is best served if they don’t get another dime (because anything shared out of profits, why that would be a tax on what the the public has already paid, the public’s gift to companies is these rights, and the public’s joy in return is to be sold products at a margin bolstered by an exclusive license to the patent rights).
In my experience, inventors choose various forms of recognition. Some want to see money. I don’t blame them for it. It isn’t a conflict of interest to want that. It isn’t some disregard for the public interest, or selfishness, or moral defect. None of that. It is something one might well expect in the effort to do valuable things and achieve that goal. But other inventors don’t need to see money. They might want other sorts of recognition, such as priority or acknowledgment for their efforts. They might want to see opportunities to lead discussions, or to set their students or colleagues up for success. Some want to be invisible. They hate the whole idea that recognition should follow inventing in a research setting.
Inventors I have worked with at times have disavowed any income, because they want to advocate for science without anyone thinking their purpose had to do with money or commercial standing or anything like that. Others just want, honestly and authentically and with deliberation, to see people benefit from their work in the form of changed lives, lasting new capability, an advance, with the satisfaction of a builder who can say, I worked on that bridge–look at it, splendid–and not have to feel some pang of regret that one isn’t getting a toll from everyone who passes over it. They do not benefit from being told they are dupes and gulls, or that they have cheated the university out of its share of lucre, or that with training they too can aspire to drive an expensive car, that Porsche effect. It’s a worthy position to look to something other than royalties. But it isn’t any more or less moral than the inventor who expects such a share and works toward that. In either, there are ways things can go wrong. It’s not so easy as that. No university research IP policy that dictates ownership, assumes a process of commercialization, and pre-divides the spoils is up to the task.
Any university IP policy that tells university research investigators how they must go about dealing with inventive research events runs great risks. It is one thing to say, use the patent system to promote use of what you have done. It is another to say, the patent system must be used every where it can, or you must promote the use of what you have done by using the patent system. It is another thing yet to say, the only or best way to do promote use is to hand your work to an office that is commissioned to try to make money any way it can, be it license or litigation, preferring exclusive licenses to monopolist investors over all others. Well, some leading TLOs say “it’s not about the money.” Well, then, what *is* the purpose when it comes to management of IP. If it’s not about the money, then why the compulsion? Why the focus on order, efficiency, consistency? Is it about these things for their own sakes? Hardly.
A research IP policy at a university is a special thing. It is about the prospects that research will engage community and some investigators will have realizations–research events–that will change lives, change communities, change economics. An IP policy is not merely a drudgery thing to force compliance with the minimum necessary to get by. It is not a preventative to suppress a discussion about opportunity that administrative folks don’t want to have, don’t feel comfortable with, don’t even know much how to do anymore. It is not a line of control in the endless tug o’ war over faculty rights with administration. It is not a sacred text that encodes for the true way to realize research impact through “commercialization” based on patent rights. No, none of that.
An IP policy must start with respect for those who create IP, and it must remind everyone of the commitments that are made by those doing the work, by the organizations that are involved, and the commitments that these folks–individuals and organizations alike–have made (or led others to believe they have made) to those who are intended to be the beneficiaries of the work. How anyone becomes involved to advance work toward those benefits is a challenge. Sometimes to achieve those benefits, yes, a product must be developed. Other times, the last thing needed is a product version, and rather what is needed is an expanding set of users who can self-implement and test and vary and compare notes and jostle and figure stuff out until it’s clear what sort of products might emerge, if ever.
One does not get there with all inventions being compulsed through a corporatized university office. Not for university research, not for public benefit. Even if there were a law that required compulsing of this sort, university folks would do well to exercise realpolitic and find ways not to take territory they had no need to control, that they were better of not controlling. In Bayh-Dole terms, they would be as active in pursuing 401.9 transactions as they would SPRC (c)(2) transactions. In that, they would not see 401.9 as a waste of time to help fools pursue empty dreams after the university and agency have failed to find blood in the turnip. No, it would be seen as an important and worthy route to see what inventors who are motivated can do, with an offer for help rather than offering a cheaper form of standard license. But in 30 years, how many 401.9 transactions have their been in all those thousands and thousands of reported inventions? No one knows. No one tracks them. No one celebrates them. They are on the dung heap of TLO practice, when they could be a tremendously important route to impact. Again there is no evidence to suggest that. Why? Because no one is trying it. Because TLOs don’t report it. And for all that, it would appear to be giving up “value” and that “fair share” to the university to allow 401.9 to operate. But, as you know, it is not about the money. But it surely is about having a thumb in every pie worth eating until it’s not worth eating, and then, well, you know, what’s done is done.
A good university IP policy deals with research events, acknowledges the range of possible uses for research inventions (among other research events), acknowledges the different sorts of intangible assets that invention (and other research events) may create, and the value these intangible assets have generally to community, to research, and to the institution. A good IP policy also celebrates the contributions of individuals, including inventors but also authors and folks who are exceptional at communicating or finding opportunity. A good IP policy does not pat on the head as it takes, but rather confirms responsibility and asks for guidance as to the next steps. If there is a balance to strike, it is between inaction due to unimportance and attempting to turn each invention into a commercial success. If there is a balance, it may also be between the appropriate time to seek commercial success and laying the groundwork for better practice, even if the university doesn’t get anything for it by way of patent royalties. A university TLO is a tough place to let anything go like that. It’s a Hotel California for research inventions. Who might step away and say, it isn’t about the money but it is about impact, and this is what happens next? The inventors might do this. Folks in companies might, or in a practice community. The lead investigators might make that case. An IP policy could do well in making visible the reasoning. That would be helpful. It isn’t, however, helpful to substitute an assumed outcome–money making via monopoly licensing–even if this, at times, is exactly what needs to happen, is good when it happens, and is worthy.
No, not nearly. An IP policy is not better when it rushes to a conclusion to save everyone the effort to reason things through. Nor is it better when it adds to the labor of such reasoning by making those things exceptions to policy, rogue things, things contributing to inefficiency and process uncertainties. Fit it all into a volume stream and handle everything as if it is middling until it looks otherwise. Bad stuff–treat it with respect, who can tell? Great stuff–tone it down, if it is great, there will be more and better opportunities. Everything is the same. Anything else is unfairness and inconsistency. Nor is an IP policy any better when it aspires to push everything through the same set of filters: compulse everything, comprehensively, thoroughly, maximum compliance, everyone trained like a machine to report, assist, jump when the jumping is asked for, and laying low when nothing is happening.
It may well be that commercialization is an important thing. It’s right there in Bayh-Dole(see SPRC (h)) as a thing to report in the progress toward utilization–first commercial sale. Benoît Godin lays out here why that might be, from a tradition of economic thought that sees innovation in terms of commercial product introduction. What else could possibly matter? Does technology transfer serve the econometrics of policy makers? Or do they work to understand the behaviors of investigators as those investigators engage the unknown and come back with useful realizations, inventions, data, artifacts, stories? And that does IP policy serve? To look good? To stamp out looking bad? To avoid spending time dealing with the stuff that is supposed to be the very best stuff society could want from research–unbounded from the immediate demands of product, not tied to profiting in existing markets, challenging the status quo, seeking out the unexpected, engaging with community to demonstrate new things, confirming the work of others.
But no, for all that sort of aspirational rhetoric, this last bit is just apparently an idealism, a thing society should not come to expect from university research. The IP policy is just a cranky person behind a curtain pulling on levers and wheels to create an illusion of power. IP policy aspires to share the money, damp the thought of personal involvement, and protect the public from research folks getting distracted from doing yet more research by getting caught up with chasing an idea into community where it might have a life. That’s what we read in university IP policies. They won’t get you to home, or much anywhere else.
We can turn back to Stanford v. Roche, and we can look at the immense effort by university patent administrators to secure a privilege for themselves in the form of a love gift to their colleagues at Stanford. It’s touching in its way, how they have banded together. However, it is also sad, something of a twilight of a little age of experiment with using the patent system to advance federally funded inventions at universities, to see what the universities have chosen as the consequence–that Bayh-Dole becomes more compulsory than anyone imagined; that the universities have more power, more easily, with less involvement of inventors or anyone else than anyone imagined; that the watchword to everyone is Look out, universities have claims, and these must be satisfied before any others.
An IP policy, in this context, is merely a confirmation of the status of administrators to profit-seek, and a demand that everything else, regardless the source of support, should be handled in the same manner, because doing so is (so the claim goes) right, and convenient, and what’s good for federal funding is good for everyone else, too. I don’t see how that adds value to research outputs, community access, or the impact that comes from investment–imaginative or financial or sweat equity. I don’t see how it gets at the objectives of Bayh-Dole, for that matter. You know, the ones in 35 USC 200. Who takes those seriously? No, it appears they are all just fluffy cover for universities profiting from commercialization, and for that universities desire expeditious appropriation of title to inventions, and it would be best if they did not have to be vigilant about that, and just could look in their laps every night and see what has fallen from heaven. That is a wonderful dream, I think, for some of those that put their heads to the pillow of vesting statutes. No, it appears that such an IP policy exists for the convenience of administrators to invoke local power on top of federal authority, but doesn’t do anything much for the purposes of a national innovation policy based on research at universities.
It would be good to see organizations advocating for inventors or speaking to the power of collaborations, and ensuring that inventors have choices, and make those choices, and take the consequences. For that, an IP policy that kept the university out of the way until requested to provide support would be a good starting default. One that celebrated the diversity of goals in research projects, and differing interests of inventors in their work with the public, and above all, both the importance of inventors for the vision that motivates conception, and for the subordination of inventions, and IP, to the broader purposes for which anyone with expertise chooses to take on publicly funded work.