In his 1962 compendium of university patent policies, Archie Palmer noted that the University of Wisconsin had no formal patent policy. By then, Wisconsin was an outlier among research universities, most of which had some statement regarding patents and inventions. The private papers of Howard Bremer, longtime patent counsel for the Wisconsin Alumni Research Foundation, provide a copy of the “unofficial” university patent policy, c. 1960. Let’s have a look.
This is a great policy. Faculty have rights to their inventions unless they agree otherwise in accepting money from outside sponsors of research. The policy addresses basic issues:
Does my research performance depend on patenting? No.
Are inventions made in the “regular course” of my research mine? Yes.
Will the university require me to do anything with my inventions? No.
The first question addresses the point that faculty are not hired to invent. They are not expected to choose research topics where they might invent. They are not evaluated on how many inventions they make or the financial value of those inventions. That’s a nice gesture.
The second question concerns employment. This, too, is nicely handled. Employment does not even come up. What’s addressed is the “regular course of their research work.” That is, not “course of employment” but rather whatever they do in their research–as distinguished from the “course of research” that is not normal–that is, for an external sponsor that places requirements on inventions. Anything done at the university in research is not done for the university, not under employment, not under university direction and control. The way it is. The way it should be. You rock, Wisconsin. Or at least you did before you went off your rocker.
The third question asks whether the university will make demands on inventions. The answer is no–there is no requirement that an inventor seek patents and no requirement that an inventor must license or assign patent rights. There’s nothing that claims that holding a patent creates a conflict of interest in employment or research or use of university resources. In fact, such things are disclaimed by this statement. There’s nothing, further, that makes it appear that it is cheating the state’s taxpayers to dedicate an invention to the public (and to the state’s taxpayers)–unlike some ethics policies now that imply that the university must own and monetize inventions and if faculty inventors refuse to allow the university to do so they are cheating the public, or at least the university, of its possible (albeit unlikely) royalties.
Of course, this is all “unofficial” policy and so not policy at all, just a statement of practice in the absence of a policy. That, too, is interesting. There’s not even a need to memorialize the practice as an official document. What point would there be? If there’s no obligation on faculty to invent, or on the university to demand ownership of inventions, and nothing that forces faculty to patent or not patent (any more than publishing or not publishing), what is gained by trying to state that there’s nothing? If there’s nothing that authorizes university administrators to do anything, then it’s a void. There’s no uncertainty at all. If there is no contract that requires assignment (such as an employment contract or patent agreement), then the university has no interest in inventions and patents a faculty member might have. There’s no doubt about it. There’s nothing to disclaim. No need for a policy to disclaim it. In this context, an invention is no different from a car, from a house, from a poem. It does not matter to the university if the car or the house or the poem is used in university research, or becomes more valuable as a result of that research (“and this is the car that Professor Link drove to work at the university each day”).
This section of policy documents the existence of WARF, an external organization modeled on Research Corporation but restricted to serving the interests of the University of Wisconsin. Faculty inventors can use WARF’s resources, and the university does not require faculty inventors to assign their patents to WARF. In particular, the unofficial policy here calls out the institutional conflict of interest inherent in any such requirement: that demands for assignment might be based on the prospect that WARF could make money for the university. Even the University of California, setting up a patent licensing office with the overt mission of raising money for research by licensing patents, made the assignment of inventions to the program voluntary.
When a university demands assignment of inventions in order to try to make money from patent positions, it creates for itself an unmanageable institutional conflict of interest. It cannot support academic freedom and cannot supervise research conduct and cannot stand as an independent observer of research claims. Instead, it has the appearance of seeking profit over public benefit, of turning a blind eye to research compliance and misconduct issues, and hyping inventions, licenses, and companies in order to create an appearance of value to maximize royalty income. No appeal to the use of money gets past the fundamental institutional conflict–that faculty interest in their own work in the public interest is subordinate to the university’s interest in making money from that work.
All the variants get tangled up as well: that faculty cannot be allowed to manage their own inventions because they won’t make as much money as the university can make; that faculty cannot be allowed to manage their inventions because they might not try to make money and therefore would deny the university a share of what they could make; that the prestige of the university depends in part on the number of patents it owns, and if faculty own patents or worse don’t seek patents, then they damage the prestige of the university; that faculty ownership of inventions is not nearly so important as the university’s efforts to make money from patent licensing; that faculty managing their own inventions will not produce commercial products to benefit society (and the university seeking to monetize their inventions will).
All these arguments can be dealt with in detail, and it would bore me to tears to do it. Why are crap arguments so easy to make and yet so expensive to show to be crap? Perhaps, I guess, because crap arguments aren’t made from reason or authority–they are not the path that someone used to arrive at a position that makes sense. Instead, they are used to prevent someone from finding the path that has been used, or worse to cover for the fact that no path at all was used and that the position has been pulled out of the air. Arguments designed to prevent a position from being displaced need not be true, grounded, thought out, or reasonable. They just have to make it difficult for anyone else to displace the position. In particular, they have to make it difficult for university leadership or faculty to act. For that, all they have to do is create the appearance of complexity (“this issue is best handled by experts”), or make something appear uncertain (“we should form a committee to study this issue”), or make the present position appear attractive (“we’ve done so much good, only spiteful people could possibly oppose us”).
One more point about WARF’s activity. Notice the public covenant element that enters in:
to develop these patents in an ethical manner
This tag phrase is hugely important. The language is directed to the patents, not to the underlying inventions. It is how the patents are “developed”–that is how patent applications are drafted and prosecuted, and how the resulting patents are licensed–to whom, on what terms, to what effect. The implication here is that not all patent activity, though legal, is ethical. Another way, not all things possible through the use of the patent system are ethical. Yet another way, the conditions on patents on inventions made in the public interest limit the things that can be done with those patents. When an invention is made in public interest research, some forms of exploitation of a patent on that invention are unethical.
The presence of a statement of ethics indicates that the patent system itself can permit actions that aren’t ethical, and that further that with regard to inventions made in the public interest, some otherwise ethical uses of patents aren’t so ethical. The context of the ethical context of an invention matters. A patent on such an invention carries with it that ethical context. A patent managed by an institution committed to research and public interest carries with it an ethical context. Both matter.
If one looks at the “disclosure” procedure used in most universities now, the effect is to strip an invention of its ethical context. The invention is imagined to “leave” the research and be “acquired” by the licensing office. Patents on such inventions, too, are imagined as ordinary patents, for which the ethical purpose is to generate licensing revenue from companies making commitments to create commercial products, for which they require exclusive patent rights. It’s just that this ethical purpose–and it is in its way ethical (money for research, products for the people, recruiting wealth to support these things) displaces the ethical purpose of the research itself (with commitments to publish, to collaborate with others, to benefit the public directly) and the use of the patent system to enhance these commitments.
Here’s your moment of cognitive dissonance. Take it slowly and you will do fine. The thing that’s unethical about most university disclosure practice is that it substitutes a set of institutional objectives–ethical in appearance if considered out of context–for the commitments and expectations made to conduct the research, gain collaborators and access to data, and receive support from donors and sponsors. That is, it is not ethical to swap out one set of commitments that run with research for a different set of commitments that run with institutional self-interest. It is as if the institution second-guesses the commitments and purposes made by those conducting research, disables these commitments as personal and unofficial, and substitutes a new set of institutional and official commitments and purposes–patenting, commercialization, exclusive licenses, wealthy investors, monetizing patent rights, royalties, research support, new products for the public, economic prosperity.
Yeah, it’s unethical to bait and switch on one’s commitments, even when the new commitments also sound beneficial.
WARF takes voluntary assignment of inventions from faculty inventors. When WARF receives money in exchange for licensing, it makes grants to the university. A university committee then makes grants-in-aid to support research. Again, the wording is carefully drawn. A grant-in-aid is not a commitment of university resources as a condition of employment, nor is it an “investment” by the university with an expectation of financial return or ownership of deliverables.
A grant-in-aid is a subvention, a dedication of research to another because the activity is determined to be valuable in itself. Here, the activity is “fundamental research”–research not undertaken to invent, research not undertaken to serve any commercial or governmental or institutional agenda. You know, that “free play of free intellects” stuff from Vannevar Bush that is so out of fashion among science policy academics.
The Wisconsin unofficial policy in 1960 was to allocate research funds from licensing income as grant-in-aid–as subventions. No faustian bargain with devilish administrators that they will have the soul of the research in exchange. The policy repeats the disclaimer that decisions about research funding have nothing to do with whether there will be more patentable inventions. There is no administrative feedback loop in which patents create income to create more patents–that is, that the patenting program does not exist to produce more patents to profit the patenting program.
Compare with the rhetoric involved in the use of licensing funds these days to support “innovation research” and “commercialization” and “entrepreneurship.” These things sound good–except if one considers that they indicate a closed system–generate money to support activities that generate more of the same sort of money. Again, one might argue that the closing of systems is inherently unethical, an administrative corruption as it were, not necessarily venial. Why? It betrays the fundamentals of why research is conducted at a university and swaps its own set of virtues–ones designed especially to provide the licensing program with greater status, more assets, and a greater share of university resources that otherwise would go to other activities, such as, say, teaching or fundamental research.
And, in the end, this assessment–unofficially at least:
Wisconsin had an exemplary patent management program. Its approach was one of the leaders of the field. It had a successful research foundation. It respected academic freedom. It relied on voluntary participation. It made no demands on faculty for inventions or patents. It disclaimed an interest in creating a closed, self-serving system of research and patents. It acknowledged a public covenant that ran with inventions and patents. And Wisconsin lost its compass and let it all go.
And on the first day, we had everything we could stand
Ooh and then we let it fall
And on the second day, there was nothing else left at all
Ooh what a day that was.
Unofficially, of course.
To see what has become of this decent, effective Wisconsin patent policy, take a look at “Can’t you see what Wisconsin has been doin’ to free.” University administrator trigger warning: I use the technical term “brick-stupid” at one point in this article, but only in reference to policy. Any inferences beyond policy are entirely the responsibility of each reader to make.