A Brief History of University Patent Policies

American University Patent Policies:  A Brief History

1900-1924 Universities have no formal policy on patents, and follow defaults provided by law, addressing issues as they arise.

1912 University of California professor Frederick Cottrell forms non-profit Research Corporation to manage inventions submitted by faculty.  Faculty receive royalties, their institution or research foundation may also receive a share.  Research Corporation donates its share after expenses to the Smithsonian for research, and supports research directly across the country.

Cottrell describes Research Corporation in “The Research Corporation, an Experiment in Public Administration of Patent Rights.” The Journal of Industrial and Engineering Chemistry.  December 1912, 864-67.

1924 Lehigh University adopts a formal patent policy.

1924-1950 By 1952, 73 universities have adopted a formal patent policy.  By 1962, according to Archie Palmer this number doubles to 147 out of 359 universities that report conducting scientific or technological research.  In 1962, 596 universities report they perform “little or no scientific or technological research” and have no formal patent policy.

Of those universities that do have a patent policy, some abjure patenting, especially in biomedical fields.  Harvard offers legal assistance to anyone challenging a biomedical patent.   Others claim patents but only to prevent patenting and monopoly behaviors.  Ownership of inventions follows extramural research contracting.  Typically, the patent clause of such contracts is negotiated by the faculty investigator.  Those that adopt a patent policy often direct faculty to use an affiliated foundation or Research Corporation.

1925 Formation of Wisconsin Alumni Research Foundation to manage inventions submitted by University of Wisconsin faculty.

1925-1950 Formation of dozens of WARF-style research foundations, 55 by 1962.  Archie Palmer identifies Purdue Research Foundation (formed in 1930) as a model.  Palmer advocates for formal research and patent polices, and publishes a succession of compendia of policy statements and analysis.

1950 Formation of the NSF, leading to formalized research policies.  Vannevar Bush’s Science the Endless Frontier proposes a National Research Foundation that will support civilian research using strategies of teamwork demonstrated during the Second World War by university faculty, industry scientists and engineers, and “gadgeteers” were able to produce technology that the military establishment could not think to propose, such as the digital computer, advances in sonar and radar, and the atomic bomb.

1950-1981 Growth of university patent policies.  A great deal of diversity.  A few universities claim ownership of inventions, but typically restrict that claim to “official duties” in which an employee is hired to invent, and limit the claim to inventions that an invention management agent agrees to manage.  Institutions consider whether they have “equity” in faculty inventions.  Typically a faculty-led committees review circumstances of institutional support and make a recommendation.  Invention equity might involve recognition, reimbursement, a shop right, a non-exclusive license, sharing of royalty income, or institutional ownership.  Institutional ownership is generally a recommendation by a delegated body, not a requirement of policy.

In the 1970s, Research Corporation advocates that universities create “technology transfer” offices to assist in helping faculty identify inventions that might be “transferred” to Research Corporation for management.  Faculty assign inventions that are federally supported to the sponsoring agency on request.  In a few cases, agencies negotiate “Institutional Patent Agreements” that allow a university or an invention management agent to retain title to an invention assigned to them by faculty inventors.

1981 Bayh-Dole Act goes into effect.  University patent administrators represent Bayh-Dole as allowing university administrators to take ownership of faculty inventions made with federal support simply by notifying the government.

1981-2011 Universities adopt and revise patent policies, replacing invention equity with ownership claims.  Universities migrate the requirement to assign from research policy to invention policy and expand ownership claims to include use of resources and participation in extramural research.  Some universities also expand definition of “invention” to include “inventions that are not patentable” while others conflate inventions, copyrights, and data under a general heading of “intellectual property” or claim by an arbitrary definition ownership of a broad range of assets, listing variously inventions, works, data, materials, scholarship, and expertise.

2011 US Supreme Court decides Stanford v Roche, rejecting claims made by 70 universities, AAU, APLU, and AUTM that Bayh-Dole vests ownership of inventions made with federal support with host university.  IP Advocate with IEEE and AAUP file an amicus brief that argues against the institutional taking of ownership to faculty inventions under the Stanford reading of Bayh-Dole.

2011-2013 Universities generally ignore Stanford v Roche decision in their policies and guidance documents.  Some universities, notably Stanford, University of California, and University of Washington insert “present assignment” language into policy and employment documents, purporting to enact “automatic” assignment of any future inventions made by faculty.  Advocates argue that such draconic ownership policies are necessary to preserve the institutional technology licensing industry that has been created around faculty inventions, and without this industry in place inventions will “sit on the shelf” and America will become a global technology backwater.

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