University Patent Policies, Past and Present, Part I

How should a university (faculty, students, staff, administrators, alumni, sponsors and donors, regents, governments) manage inventions made by those hosted by the university? It is a big question, and it may be a misleading one. There are all sorts of ways to go at it, from what might make the most money for the university, to what might be best for society (if that even makes any sense), to what makes for innovation, or at least what makes for happy-if-lucky speculators buying interests in patents in the chase for windfall profits. To get at it, we might start by looking at some of the approaches that have been taken. In the past 100 years, universities (that is, faculty…) have taken the following approaches:

Take no position at all (Many!)

Deal with things case-by-case

(Colorado 1950)

Abjure patenting, especially in medicine

(Johns Hopkins 1948)

(Columbia 1944)

(Cincinnati 1938)

Take assignment only when required by extramural contract

(Stanford 1958)

Request an equity interest in patents based on circumstances of support

(Oklahoma State 1951)

(Delaware 1958)

Take a financial interest
(Texas 1946)

Recommend inventors use an external agent
(Xavier (OH) 1958)

Offer inventors the use of an internal or contracted agent
(Rutgers 1949)

Require the use of an internal or contracted agent
(Yale 1958)

(Chicago 1954)

Kansas State (1960)

Require university ownership when an inventor seeks a patent
(Pennsylvania 1941)

Require university ownership of inventions
(Washington State, 1960)

Require university ownership of inventions and more
(MIT, 1952)

(Colorado State 1962)

(University of Miami 1949)

(Purdue 1955)

Require ownership if substantial resources used
(Alabama 1945)

Take ownership for defensive public access purposes
(Caltech 1945)

(Pennsylvania 1941)

Even when a university policy might claim control of an invention, the actual disposition of ownership was delegated to a faculty committee to decide on the merits of the university or its agent pursuing patenting.  Here is Kansas State (1960):

If there is a theme in all these mid-century policies, it’s that the invention comes to the university rather than the university goes out to claim inventions.  Inventions may be offered to the university or a designated agent, or an often faculty-led committee might recommend that the university take control of an invention, or a sponsor of research might request university control, or the university might request that control on behalf of itself and its faculty, to be sorted out later, by, say, a faculty-led committee.  This way of doing things is tied to the idea that universities do not need to be in the patent business, and when they are, it is to promote the public interest, as distinct from to profit from monopoly positions.  Yes, there are policies that anticipate there may be income from patents, but again it is rather more from the perspective that companies willing to take licenses are also willing to pay, rather than that the university must scheme to use patents to get more money from companies than otherwise.

If one wants to take the view that mid-century university patent policies were immature, and folks were only slowly starting to bat around the idea of “new sources of revenue” and the like, that’s fine.  One can construct a narrative that picks policies to show how some universities got it right early, and others followed along in due time, to end up with a mature expression of patent policy in the here and now.  Every good history of how things have come to be really does have to end up with a depiction of the here and now.  But things change in the course of time.

One of the things that appears in the university diffidence to claiming ownership of inventions, even when the university claims ownership (and then lets a committee decide whether to act on the claim) is the relationship in play with industry.  A patent as a competitive asset provides a basis for its owner to exclude others from practice.  A university, at least in the mores of the mid-century, was focused on open publication of research findings–just the opposite of exclusion.  Thus, monopoly control, even held on behalf of a future business partner, works against a fundamental positioning of the university.  What is the point of a publication, if its readers cannot act on what they learn from it, because the university holds a patent?  Further, what is the consequence of knowing there’s a patent for a company, if it is not the lucky one that gets the exclusive license?  Willful infringement and treble damages?   If a university is to have a productive co-existence with companies, able to collaborate with them as well as to challenge them, then patents must be used clearly and thoughtfully.  Merely working monopoly positions for maximum income by playing a chosen business partner off the rest brings many hazards for the standing of a university, hazards that may well outweigh any financial benefits for a once every generation “big hit” deal.

Part II will look at how present university patent policies have changed from the diversity and mores of mid-century policies.  The idea is not so much to tell a story about how we have got to where we are, but rather to show how pathways that were evident and intended in mid-century policies are still present, but have been blocked from being used.