I have written before about technology transfer standards (here and here, for instance), and how the AUTM licensing survey in particular fails to provide useful management information, and in some ways is quite misleading with regard to what is going on in university transfer practice. One of the biggest challenges with the licensing survey is that it presents only aggregate counts, without providing structure. A university can file four provisional patent applications, convert these to one US utility application, file a PCT application, and file a continuation-in-part, all in the same year and count 7 patent applications drawn from one invention report with an improvement. It is a lot of activity and expense to file those 7 applications, but it also might lead people to believe that the 7 applications represent support for a wider range of inventions than the practice is actually supporting. It isn’t a problem that the reader should have to work out with surmises about the likely practice behind the numbers. The reader has no chance to see the structure of the data. It is a problem for the reporters of the data. It would be like baseball teams reporting only hits and errors, not runs or wins.
Bayh-Dole does provide for some reporting on inventions and activities. Contractors are to provide filing date, patent application number, and title; patent numbers and issue dates; and “periodic listings of all subject inventions which were disclosed to the agency” (37 CFR 401.14(a)(f)(6)-(7)). Bayh-Dole requires periodic reports “on the utilization of a subject invention or on efforts at obtaining such utilization” (37 CFR 401.14(a)(h)):
Such reports shall include information regarding the status of development, date of first commercial sale or use, gross royalties received by the contractor, and such other data and information as the agency may reasonably specify.
Bayh-Dole reporting also has a problem. It is protected by FOIA, per Bayh-Dole. 35 USC 205 authorizes confidentiality for information regarding inventions and patent applications. 35 USC 202(c)(5) makes reported information on utilization and efforts toward utilization as “privileged and confidential” and not subject to FOIA. 37 CFR 401.8 forbids disclosure of information reported on utilization of subject inventions to “persons outside the government.” 37 CFR 401.14(a)(h) adds, “without permission of the contractor.” While FOIA may apply to such information as received by the government, it is not so clear that state public disclosure laws exempt the same information from disclosure when held by public universities. It is also not clear why, at least for public universities, permission would not be granted for much of this information. After all, the great genius behind Stanford’s management of Cohen-Boyer was that the patent prosecution process was open to industry. Why is not such disclosure exemplary?
The restriction on reporting on utilization creates a huge problem for public accountability of technology transfer programs. They may report their “successes” but they do not have to put those “successes” in context of their overall program, its expenses and income, the structure of its IP holdings, or the means by which it makes IP available. Thus, it is difficult for there to be any informed public debate on the matter–not even by technology transfer practitioners, certainly not by faculty investigators, and of course not by the public. This deficiency of information appears to be convenient for technology transfer offices, many of which don’t report their activities fully. In this, the University of California deserves some credit for their annual reports, which do provide much information about their program. Stanford, also, has published valuable information about licensing. By contrast, the University of Washington has all but stopped reporting key licensing information for the last three years.
In Stevenson-Wydler, however, we find a somewhat different treatment. Federal agencies are also required to prepare annual reports. Here (my emphasis) is what these reports are to address (15 USC 3710):
Agency reports on utilization
The report shall include—
(A) an explanation of the agency’s technology transfer program for the preceding fiscal year and the agency’s plans for conducting its technology transfer function, including its plans for securing intellectual property rights in laboratory innovations with commercial promise and plans for managing its intellectual property so as to advance the agency’s mission and benefit the competitiveness of United States industry; and
(B) information on technology transfer activities for the preceding fiscal year, including—
(i) the number of patent applications filed;
(ii) the number of patents received;
(iii) the number of fully-executed licenses which received royalty income in the preceding fiscal year, categorized by whether they are exclusive, partially-exclusive, or non-exclusive, and the time elapsed from the date on which the license was requested by the licensee in writing to the date the license was executed;
(iv) the total earned royalty income including such statistical information as the total earned royalty income, of the top 1 percent, 5 percent, and 20 percent of the licenses, the range of royalty income, and the median, except where disclosure of such information would reveal the amount of royalty income associated with an individual license or licensee;
(v) what disposition was made of the income described in clause (iv);
(vi) the number of licenses terminated for cause; and
(vii) any other parameters or discussion that the agency deems relevant or unique to its practice of technology transfer.
Translated into Piscopo!, a highly truncated idiom with strong imperative modalities, this becomes:
Licenses with income!
Time to license!
Top 1%! 5%! 20%!
Pretty basic stuff. Even here, one doesn’t get licenses that don’t earn income (such as public non-cost licenses, as distinct from royalty-bearing exclusive licenses where nothing is happening) and doesn’t get at the total unlicensed patent portfolio (which may represent a substantial barrier to innovation rather than merely a yet-unrealized potential for future investment and income). At least, Stevenson-Wydler information does not appear to be FOIA protected, except “where disclosure of such information would reveal the amount of royalty income associated with an individual license or licensee” (see (B)(iv)).
(4) Public availability
Each Federal agency reporting under this subsection is also strongly encouraged to make the information contained in such report available to the public through Internet sites or other electronic means.
Since the report is to be included in an annual report to Congress and the President, it would appear that it cannot be the subject of FOIA, anyway.
To have a basis to consider technology transfer programs as an integral part of research enterprise–that a purpose of discovery is use–we need to have both reasoned discussions (based on what we consider important to facilitate the use of discovery) and an understanding of the activities, status, and outcomes of these programs. Having only a selective “spin” of information doesn’t do that. Stevenson-Wydler’s standard would be a good start. So simple that it can be conveyed in Piscapo!, available on the web, reports that convey a good sense of what is going on. It may be, rather showing weakness and disorder, a publicly reporting technology transfer office shows how challenging the work is, how much relies on cooperation and good fortune rather than process or compulsion or threats, and where there are needs, being able to articulate those not as weakness but as an appeal for assistance. Not your ordinary corporate standard. But then university technology transfer in support of research innovation is not ordinary, and need never be corporate.