The great challenge with a received view is to see the world afresh, without the habitual cognitive anchors–to move free of the anchors–the assumptions, the chosen dichotomies, the methods of classifying, the rationales, the take on historical context–to work out what we should do today without requiring tomorrow to be another variation on the same theme. It may be that some of us don’t want any change–we’ll take things as they are, with all the problems and unknowns and forgottens along with all the habits, the rules, and the hopes. But even then perhaps it is worth trying to see where we are from a different perspective, to check out whether there’s water flowing underground, as it were, following unknown courses that if only we knew, we would take into account.
When it comes to Bayh-Dole, federal contracting for research, and what’s to be done about patents, it is all too easy to get caught up in defending or attacking the present apparatus. Or perhaps folks think that the apparatus is almost working, so all that’s needed is just tweaking the apparatus a bit to improve performance (changing unclear wording, better addressing a given issue, or even with perfect prose and forethought, recognizing changing conditions in law, market, or practice). Tweaking might work if we are talking about interest rates, but not if we are talking slavery. Or, of course, we might consider dismantling the apparatus and replacing it with new apparatus (assuming that what’s needed must involve an apparatus), or with nothing, nothing, nothing at all.
It is worth sorting out some of the apparent motivations for the present apparatus, separating as we can public rationalizations from other motivations. For instance, Senator Bayh made a major premise of Bayh-Dole that the U.S. appeared to be falling behind other nations in innovation, but Norman Latker, the primary architect of the law argued that Bayh-Dole was important to support the growth of technology transfer operations at universities, to filter through the tens of thousands of reports to find ones that might have commercial value. These are rather different premises for building an apparatus. Both have their place, but it is important not to adopt just one and then believe that’s all there is to the apparatus.
Consider as well that as a policy or law remains in place, institutions develop practices to optimize their exploitation of it. If the policy or law is interpreted officially in a given way, that interpretation dominates regardless of the words of the policy or law. Thus, even though the standard patent rights clause authorized by Bayh-Dole requires a written agreement to protect the government’s interest, universities don’t comply and federal agencies don’t care. If a policy or law is not enforced or even audited, then practices may also slip for convenience or self-interest. Rationalizations replace reason, as reasons in turn replaced reading. The practices that run on top of the text come to dictate what the text must mean. Thus, in the dispute leading to the Stanford v Dole decision, university officials–scores of them–insisted that “elect to retain title” had to mean that the university already had title by operation of law. They wished to impose on the text of the law an interpretation that supported their practice. To do otherwise would force them to admit that their practice was non-compliant and based on an inability (or refusal) to read the text of the law for what it actually states. The great shock was that the Supreme Court read the text of the law rather than simply accept that the law must conform to the statement of practice made by self-interested parties.
There are basic questions that lie behind all of this, questions that actually take some time to recover or formulate anew. It’s easy to come into a line of discussion and get wrapped up in it. I remember as a new licensing manager being told that federal law provided for university ownership of inventions made with federal support. The statements were made with the assurance of truth. All patent guidance documents were built around this assurance. To disagree was not an option. It took time to read the documents and see that the law and the practice were not consistent. What a law says, and what a group wishes the law had said–these can be rather different matters. Even now, when new commentators come to Bayh-Dole, they must navigate through many articles and claims about Bayh-Dole that have been built up by people repeating what I call “faux Bayh-Dole”–the law as rationalized by practice, not the law that exists as statute. And with faux Bayh-Dole come fictional rationalizations about past government licensing practices, the need for financial incentives for university faculty to do research or invent or assist in the development and use of inventions, and university administrators being better patent managers in the public interest than inventors; rationalizations, too, about the necessity of exclusive licenses, commercialization as the primary or best or only route to public benefit, the always huge costs claimed for the development of inventions for use, and the importance of placing limits on the government’s ability to intervene in the private exploitation of patent rights based on federally supported inventions.
If one buys into any of this, then the discussion of how to improve Bayh-Dole (if at all) or how to improve patent administration under Bayh-Dole (if that’s even possible) will be of a rather different character than if this cluster of assumptions and claims is itself questionable. Much of the effort at Research Enterprise is to read Bayh-Dole as it is stated and implemented as part of federal patent law, with its own regulations, and its patent rights clauses, with as much context as possible to understand the range of interpretations that might reasonably be given to the law. We have also worked to check the claims made by the dominant accounts of Bayh-Dole. These accounts, we have found, often do not hold up relative to the law as it stands, to history, and to a working knowledge of university licensing practice. Of course, there is still a chance, even if people have made up histories and ignored the law and spun university licensing practices as wild successes when they might better be described as “falling with style,” that the dominant practices we have are about as good as we are going to get. That is, changing the apparatus–law, rationalizations, practices–might not change a thing with regard to consequences for innovation. We might find a variant of “Harvard’s Law” holds: that under any body of formal requirements, people introducing change into an established order will do whatever they please.
The government might dictate proper behaviors, and universities might comply with all the administrative paperwork when they find it convenient to do so, and beat up inventors for non-compliance (again, when they find it convenient to do so), and it all might not matter for innovation outcomes. It might just swell up administrative work, bolster the income of patent attorneys, and otherwise have no meaningful effect whatsoever. Then again, it may be that Bayh-Dole and university practices may have an adverse effect on innovation outcomes. There are, after all, laboratory conditions under which research animals don’t have any options and may not even survive. There’s “free will” and there’s the desperate situations in which all one can do is shake a fist at the universe.
My experience is that Bayh-Dole has indeed bolstered a particular form of university administrative intervention into the affairs of research outcomes. Call it the technology transfer industry. I have been a beneficiary of the growth of that industry. And there are good things to say about the idea of technology transfer, about the role of universities in providing resources responsive to the needs of technology transfer, and even about the value of charging money for licenses and not leaving everything to be “open.” But my experience also has been that university administrative practice under the influence of Bayh-Dole has shut off opportunities, has prevented or delayed the uptake of findings made with federal support, and as administrators made Bayh-Dole’s protocols apply to everything, they have created a new “underworld” of practice that represents some of the best thinking in academic research but which circumvents university policies. These folk–participating in open source development, in publishing the results of basic research, in working with foundations and companies–end up cast as unethical, non-compliant, selfish when they are rather the very people that the university ought to be supporting.
My experience also has been that while university policies might authorize the use of resources or prohibit some actions, what matters for the broader use of research findings often starts with the primary investigators–not necessarily with the inventors, and not just the lab directors and senior authors, but with the people leading the work. Those could be grad students or undergraduates, could be industry mentors, could be an associate professor, could be the principal investigator. There’s no good predictor of who in a given research effort really cares about the findings, is not so concerned about publication as primarily career advancement, does not view the use by others as a risk to one’s own career and future grants, and is willing to talk to people who ought to have a reason to take up the findings and use them, develop them. Things happen when those people find other people who share and shape an idea about what can happen next. Sometimes, the other people might be university administrators offering to help. And sometimes that’s not the thing–no matter how sincere, capable, diligent, and qualified the university administrator might be. Stuff follows channels of its own devising. We might say, then, that a university role is to be or attract “rain-makers”–people who open up opportunities. That’s an important role for a university. In a way, gathering faculty and students together to learn is a way of creating opportunity not just for them but for the broader community. (Of course, universities also draw these folks out of other roles in a community where they might also make contributions.)
Thus, I don’t find that any single, uniform rule will get us to a practice that reliably advances innovation based on research. We cannot reason from abstractions such as inventor, invention, patent, basic research, license, capital, investment, market, licensing office, and incentive. We can certainly use any of these, and common assumptions about them, to rationalize whatever we want. But feeling self-satisfied, or even changing government or university policy as a show of personal influence does not mean any single “uniform” policy statement or law will get us much of the way to connecting up research with public benefit. Certainly no policy or law that is strictly enforced will get us there.
Judgment matters, especially when it comes to innovation. But administrators love uniformity, consistency, following rules. And that’s a problem–what sorts of exceptions, what level of grace, what necessary ambiguity helps? and what self-interest, disinterest, or willful non-compliance hurts? Is innovation a matter of management? or governance? Management is a matter of dictating a plan to achieve efficiencies and profits. Governance is a matter of deciding among competing interests. What’s the policy for judgment? For governance? Is it possible to have a law that demands everyone will practice a uniform judgment? Or, even with such a law, could it possibly do anything useful? Perhaps we need something more along the line of a “hue and cry” law–that when someone needs help with innovation, it is the responsibility of anyone in the university to help out (or everyone in the university is culpable of ignoring the public interest). But the provision of huge amounts of money typically requires a different arrangement, following contracts and accounting and compliance and procedures and audit and enforcement.
Underlying all of this, again, is an idea about freedom. Vannevar Bush wrote about “free play of free intellects” and the importance of building a society, including its research activities, on confidence, not fear. Charles Kidd, who discussed the impact of federal research funding on universities in the 1950s, makes a plea for freedom:
Maintenance of a uniquely high degree of freedom in universities is in a sense not only desirable but imperative, for this is the prime characteristic distinguishing universities from other research institutions. Universities must sustain freedom as the essential condition of, and indeed the reason for, their existence. They must remain free of domination by any outside group, public or private. They must remain the sole judges of the qualifications of their faculty. They must sustain the conditions under which free intellects may explore where intelligence leads. (American Universities and Federal Research, 32)
One sketchy rock song released in 1980, the same year as Bayh-Dole, covers the essential ground in just over four minutes.
The Bill of Rights is policy that places restrictions on the exercise of governmental power. In a way, the Bayh-Dole Act does that as well, by placing restrictions on how federal agencies may contract for rights to inventions made with federal support. Bayh-Dole fails to limit how universities, patent brokers, and private investors may then exploit monopolies on these same inventions. The freedom must move all the way down to the citizen, which in this case is the inventor. From there, we must take into account the commitments an inventor-to-be makes in joining a university research program–as faculty or as staff or as volunteer or as student. What are these commitments? And should university administrators be given the right to wash these all out in favor of contractual (or policy) commitments to give up everything to the university for inclusion in a program of monopoly-creating patent brokering?
We have lost, as well, these commitments. Markets chase out values. Rules chase out integrity and internal motivations. Policy displaces character. We become creatures of compliance by necessity, and fail to develop insight, having no opportunity for it. Thus, the effect of a uniform policy that becomes a compulsory policy that is indifferent to the uses of discovery made by those exploiting the policy for their advantage. Try to explain that as an effect of Bayh-Dole. It won’t show up in any of, say, Wendy Schacht’s summaries–which are limited to the consensus academic literature–that’s for sure.
The challenge then is to see the situation as it is, not as rules claim it is or decree it must be, and not from whatever it is that academics and lobbying groups put forward as the debate or politics of the day. It’s not even what we learn from law cases moving through the courts, that even university inventors own their rights in patentable inventions. Big whoop. What matters the more is how we deal with patents as tools adjunct to frontier research. That’s the question that remains from Bush’s effort to gather resources for such research. That’s the question that got kicked to the side by federal agencies and universities alike. That’s the question that patent brokers buried in an effort to force a comprehensive, compulsory policy on all federally supported inventions (which they called a “uniform” policy–even when there already was a uniform policy–just one with too much “flexibility”–i.e., judgment–involved).
Should people engaged in frontier research at universities have any obligations to the broader community with regard to what they discover? If a community sends hunters out to find food, do they bring the food back to be shared by all? Or do they keep it for themselves? Or do they sell it off only when food becomes particularly scarce so as to maximize their advantage? Is frontier scientific research like that? If a hunter brings back and shares all the food, and happens to find a stream with gold nuggets in it, what about the gold? Is that the community’s also? There’s the problem, and that’s what ought to be discussed, and that’s where the frontier scientists reveal their character. Maybe it is more important that we see the characters of people who find the unexpected things than it is that we force them all to maintain an appearance of compliance. “We want to see what you will do, and based on that, we will decide whether to send you out hunting ever again.” To which the university patent administrator’s response is, “We will create laws and rules and claims that prevent you from ever knowing whether any of your hunters differ in character or would do things that you might find admirable but that would not include us and our patent brokering work.”
Bayh-Dole is an opiate. It is a poppy field seeded with sleeping powder sprinkled by patent attorneys who found a way to divert a mass of federally supported inventions into a little industry of monopoly making that and covered their tracks by making it appear “attractive to the eye and soothing to the smell” for all inventions, by rule of law. And we wonder why we don’t see the innovation we had hoped for from federally supported research.