This one will be longer. Sometimes the simple lessons are the hardest to make stick.
3. University administrators don’t understand Bayh-Dole or innovation.
Coleridge quipped that you know someone when you understand what they don’t know. Let’s get to know some university patent administrators, then.
You might think that university administrators would make a study of Bayh-Dole a key component of their work. Yet, there may be only a handful of senior university administrators that have ever read the law, let alone have a grasp of its particulars and made connections to practice and policy. They know it only as a mandate to take ownership of inventions made by faculty and others using federal funds, with the bother of requirements for reporting to the government and sharing royalties that are rarely audited or enforced with any consequence. More particularly, they have been led to believe that the essence of the law was to give universities ownership in exchange for some administrative overhead. This the Supreme Court rejected.Unfortunately, it appears that university patent administrators also generally do not know Bayh-Dole. You may have to go to an AUTM event to discover this for yourself. Just hang out in the conference hotel lobby and ask folks with name tags about Bayh-Dole. They may be able to recite technical bits and pieces (like reporting an invention to the government within two months of receiving a disclosure or electing title to inventions within two years of disclosure to the government or notifying the government within two months of a bar date if not electing to retain title) but they generally have got wrong the big picture and as a result ignore many details. (How would you like your doctor or plumber working this way?)
They also do not believe this is a problem. As they see it, the system is “working”, they are “successful” (read any annual report—no failure stories), and thus it’s not worth debating the big picture, and it’s certainly not worth studying details that don’t matter.
Not understanding Bayh-Dole–that is something that should be shocking. These folks have had 30 years to sort out the law, and haven’t or won’t. That must change. Maybe Stanford v. Roche is a wake-up call.
We learn that senior university administrators should not assume that university patent administrators or lawyers understand Bayh-Dole or have done a good job implementing it. Universities have just spent a heck of a lot of time and money supporting without public debate a misreading of the law that in turn supported a dubious IP policy position that had the effect of attacking faculty inventors publicly with the claim they are inept (and administrators are not), which in turn has the effect of suppressing innovation, collaboration, and individual action to advance knowledge and community.
Certainly administrators will protest that they never ever intended any such thing. Of course not. They will also protest that it is mean of me to put things this way. Yes, it in a way it is mean of me. Call it tough love, or, er, well, tough something. We are known by our actions not our public expression of intentions. University patent administrators in this case want to take an action *and* tell everyone what they are supposed to think about the action. This is part of the compulsory mindset. It is bad of me not to think about university administrators the way they portray themselves in annual reports and web sites and amicus briefs to the Supreme Court. Don’t get me wrong, I like administrators. I have been a university patent administrator myself, sort of. I am putting it out, however, that claiming to be working in the public interest and what one actually are not necessarily matched. In fact, it’s really hazardous to be of the understanding that *anything you do* is in the public interest *because you work at a university and technology transfer is in the public interest*.
“The best lack all conviction , while the worst Are full of passionate intensity.” That’s Yeats. Poetry doesn’t make it true, but it does give one reason for pause. An effect of Bayh-Dole has been that university patent administrators are persuaded they have federal law giving them a mandate to serve the public interest *however they choose to do it*. That could be sitting on a lot of institutionally owned but unlicensed inventions, suing companies for infringement, beating up faculty for not participating properly in the system, and making a bunch of puppy mill companies to slurp up available economic development resources. These are not actions that are publicly announced as intended, but this is what is happening. It won’t be in annual reports, but if you bother to watch, that is what I expect you will see.
The effect of present university IP practice is to suppress the conditions in which innovation flourishes. “Prove it,” the prison guards say, “prove that the prisoners in our power would be different if they were not in our power, but we won’t release our prisoners, so you can’t prove it. You therefore can have no data, so we win, ha!”
When folks cannot differentiate the Bill of Rights from the Geneva Conventions, we have a problem. The administrative rhetorical position is: we work at being nice to the inventive faculty, why cannot they be docile and cooperative and allow us to work with no accountability to them? The effect of compulsory policies is, however: “we take their freedom, and now that they show their true colors about it, you can see why we are justified in doing so.”
Bayh-Dole is not about how to be decent to prisoner inventions. University research innovation does not do best by starting out in slavery, er, institutional controls with orderly, proper planning, authorized by comprehensive policy and air-tight agreements, documented in triage reports, reviewed by committees for potential risks and defects, and executed in contracts approved as to form by legal counsel. And we note that most university-owned stuff never gets to contracts, let alone to anything that matters in the big wide world. Does it sound sensible that innovation would benefit by taking such a route? That this would be *better* than *anything* else? That this would be *national* innovation policy? No. Please no.
Here’s the rub. University patent administrators object to this account of the big picture! At least the vocal ones do on the discussion lists, in the AUTM meetings. They defend the notion that the best thing to do to potential innovation is to make it institutionally owned as quickly and expeditiously as possible (“early disclosure”) and add it to the pile of inventions (“establish a new case in the database”). In administrative-speak, this is “securing university ownership in publicly supported invention assets in the public interest”. Well now, say it however you like.
Administrators need to demand substantive knowledge of Bayh-Dole from their professional advisers. They need to make an effort to see through the rhetoric and logical fallacies if they really want to get at the truth. It is not easy. We are so conditioned to the stories around us, that not only do they distract us from seeing, they come to substitute for seeing at all. We become blind to the things that we make to shape our lives, like relationships and cascades of effects: we may come to live in a cocoon of advisers shaping what we see. It may as well be The Truman Show. At some point, senior administrators have to make a run for it, choose to see the world directly, even if that means admitting bewilderment and uncertainty instead of a policy cocoon and advisers posing as friends.
For research innovation, the surprising result is that the truth of innovation is largely unknown until it happens. Hindsight is easy, and what’s most easy is making up narratives that tell simplistic stories in place of the wildness of the world. Hindsight makes it look like Stanford lacked the proper agreements with its employees, or its employees didn’t read the agreements they signed, or were too dumb to understand them, or weren’t protective enough of a future that turned out to be lucrative for others, not them. These are naive, simplistic, even flippant stories. What do these stories teach us about these folks who tell them?
I worked for a time with a sociologist who was making therapeutic games for teens. Youthful offenders, he said, could not tell cause and effect. That they got arrested for drunk driving was not connected to buying the case of beer. The arrest was just bad luck. The sociologist was seeing whether he could design a game that would help to build the mental connections that supported social decisions. The bozonet is like youthful offenders substituting simplistic stories (“bad luck”, “weren’t clever enough to get away with it”) for the lessons they ought to be learning. The stories not only miss the point, they work to ensure the point never surfaces to consciousness. The stories suppress meaningful epiphanies with useless stuff.
To see through the narrative fallacies is to get past pseudo knowledge and sophisticated rationalizations, and realize that research innovation is up against the unknown–even the unknown unknown–and when one gets to the truth of it, one realizes how very big the world is, how little we experience of it, and how little of what we do experience we have mapped to the point of orderly institutional planning.
When it comes to innovation based on research, we should not expect to know what to do. No policy helps us. No pre-emptive thinking to avoid thinking later helps us. No one set policy with review for exceptions helps us, especially when the exceptions are where most of the good stuff ends up. Such a policy reduces to “make exceptions, or force everything good into a form that isn’t good so it can’t look bad for being outside policy and then doesn’t have to be reviewed”. (Why should the really cool stuff be cast as an exception to a university IP policy?) “Get ownership, file patents, make money any way you can” is certainly not a helpful answer, though it is the one generally given.
Bayh-Dole is a law that makes uniform federal agency contracting with universities and nonprofits with regard to inventions. That is the federal gesture to university administrators faced with heavy burden of conflicting invention requirements across federal agencies. Much of the rest of the law reads to defend inventors, the public, companies, and the government from these same university administrators. Bayh-Dole is not about entitlement but rather public safeguards on university ownership in the absence of agency oversight!
Look at Bayh-Dole: the objectives are about collaboration between universities and industry, support for small companies, reducing administrative overhead, protecting the public from non-use and misuse of inventions. That is not the non-use or misuse of inventions by inventors or companies or investors: it is the non-use or misuse of inventions by *university administrators* making deals with these folks. That is what Bayh-Dole is about, protecting us all from what these folks could do. The purpose of march-in rights, US manufacture requirements, reporting, royalty sharing, and limitations on assignment are all directed toward the behaviors of university administrators in claiming subject inventions and seeking to license patents for money not impact. The special call outs for universities gathered in 37 CFR 401.14(a)(k) are there to protect everyone from university patent administrators. The patent rights clause comes into its own once an invention becomes a “subject invention”–that is, when it is an invention “of the contractor”–that is, when the contractor has ownership of the invention. Then, the protections of the law sweep in to limit the damage that patent administrators might otherwise do. The lesson ought to be, try to do no harm when you take ownership.
But the university patent administrators don’t seem to get this lesson, and instead think of Bayh-Dole as their special mandate to control innovation. This is why they were so upset when the CAFC ruled that a present assignment was valid without giving effect to Bayh-Dole. The Supreme Court affirmed, making clear that Bayh-Dole does not vest title in univesities. Notably, the Supreme Court also did not suggest that this was a defect in the law. Indeed, it is not. Nor is it the case that the agenda now should be to fix Bayh-Dole so that it is a vesting statute, or in the alternative to use private contracting to tie up invention rights outright and expeditiously and unambiguously as “institutional assets”. We now understand something of the depth of what they don’t know about Bayh-Dole, and about themselves.