“Protecting” university inventions

I answered a question on Quora a bit ago: How can I protect my invention after applying for a patent?

In the context of the question, my answer has to do with what an individual might do to “protect” an invention. But think about “protecting” inventions in the context of university research. Things get strange. Many university IP management folk talk about “protecting” inventions, as if “protection” is just an obvious thing, needing no explanation or justification. When pressed, they might state (again, as if a general fact) that without “protection,” inventions will never get developed or used, the public won’t benefit, federal “investment” in research will be wasted, and the U.S. economic will slide into decline.

At a university, what invention needs “protection”? If the academic idea is to publish discoveries and inventions when they are made for the public benefit of having new knowledge, then why does anything need to be “protected.” Oh, I can see assertion of copyright to preserve authorial versions of scholarship. But as for inventions, what does protection mean? If the point is that new knowledge ought to be used, then someone “stealing” a discovery to use it is just a twisted way of saying that someone was excited to make use of what university-based researchers have reported. We might say, twisting IP talk, in general, with regards to the results of university research infringement is success.

Or, if we wanted to be clear about it, we might insist that a university manage any research IP so that no one would ever have to worry about being sued by the university for infringement–that is, the university dedicates its research IP to the public domain or licenses it non-exclusively on simple terms. There are good reasons to hold IP and license it non-exclusively, but you won’t hear these reasons from most university licensing offices, which insist on defaulting to exclusive licensing, if not to assigning inventions under the color of an exclusive license.

Here’s the thing. University inventions don’t need protection, period. It’s a loser assertion that they do. Universities can contribute to the diffusion and use of inventions and research tools without patent positions–or, if a university obtains patents, it can effectively promote technology transfer without a) attempting to make a profit for itself or b) focusing on granting exclusive licenses.

There is a special case in which the “development” of an invention needs “protection”–where

  • the invention cannot be used without “development” and
  • the “development” involves substantial effort and expense and
  • the “development” itself is not patentable or readily protected by trade secret and thus
  • the “development” can be copied relatively easily once it has been done and thus
  • the patent on the invention is the only “protection” for the “investment” in
    the “development” and
  • the “development” must be undertaken by a single, private “investor” and
  • the “investment” must have a prospect for upside return as good or better than other “investments” competing for the “investor’s” attention.

This special case is a rare thing, not the general condition of most university-hosted inventions. Many university inventions are themselves research tools that have immediate use. Others are methods that can be used without further “development.” Still other inventions, when “developed” are difficult and expensive to copy. And some inventions that require “development” can be developed as a standard or in a consortium or by cooperation among multiple “investors.” The special special case, of course, is prescription drug “development” from compounds “invented” in university research. Even there, it’s an open policy question whether federal research funding is necessary to subsidize pharmaceutical company profit-seeking. It’s also an open policy question whether the federal government should leave the pharmaceutical industry as the sole means by which therapeutic drugs are developed and distributed.

University administrators, with their wont to garble most anything, put things more like this–especially where

  • the invention cannot be used in commercial form without “development” (even if the invention can be used without development or not as a commercial product) and
  • an investor can purchase the right to be the sole provider of funding for the “development” of the invention, even if “development” might otherwise happen with shared funding.

In these cases, a patent “protects” the interest of investors against the use of an invention in non-commercial forms and against the development of the invention in any form but that of a private monopoly–no collaborative development, no pre-competitive development, no standards development. The patent is used to prevent non-product uses of an invention (such as use within industry, DIY). The patent is used to prevent collaborative development (especially where scores of inventions may be needed to enable a single product). In these settings using “protect” in reference to an invention utterly misses the point–what is being “protected” is the financial position of investors who are antagonistic to DIY use and antagonistic to collaborative development. If people were able to use an invention DIY, then any commercial version of the invention would have to be better than what anyone could do on their own–and making a higher quality product at an affordable price would be more difficult and would carry less profit potential. Similarly, if people developed an invention collaboratively, contributing technology and testing, then there wouldn’t be the potential for charging monopoly prices or preventing competing variations on the invention.

A university patent used in these ways sets aside university-hosted inventions for private speculative monopolies that attack DIY and collaborative development. It is these speculative monopoly opportunities that are “protected” by a university patent, not the invention itself, which does not need protection.

But there is more. To get to this point, where university administrators can choose with impunity to hold patents on research inventions on behalf of monopoly speculators in the special case–and forcing all inventions to be treated as that special case (“we must have monopoly investors,” “we must prevent DIY or collaborative development or we won’t get monopoly investors”)–university administrators must impose one additional form of “protection.” They have to “protect” their trade in patents from university inventors.

Universities can use patent rights to manage quality of new products and feature implementations that build on research inventions. Managing quality was an early argument for a university’s interest in holding patents. Companies could not go out and sell product based on a university inventions slapdash, without regard for safety or consistent manufacturing quality. This concern was especially relevant to any university invention that was health related. Now, of course, many health-related products are regulated by the government and the argument for patenting has switched around–a patent is necessary so a company can get a product through the government’s regulatory approval process–to prevent any other company from doing so! A university could manage its patents for this purpose, as well, but without handing the first company through the process a complete monopoly over the university’s invention and without limiting the opportunity to only a single company. But doing so would take a nuanced competence–something not readily found in university IP policies and practices so fixated on dual-monopoly, FOIL technology gridlock mocked up as something virtuous.

Universities can use patent rights to contribute to commons and standards. Universities could be important players in the coordination of industry platforms, standards, and pre-competitive commons, enabling the development of products that require multiple contributions of technology. The university target then would be to use IP positions to create NIPIA positions–non-IP intangible assets, such as commons, distribution channels, and standards. Standards, in turn, provide for interoperability, plug and play, and the like. Rather than focusing on using IP to create monopoly products, a university can use IP to create NIPIA infrastructure that allows companies to create new classes of products. It is a policy choice that university administrators ought to make, and if not–then allow investigators and inventors to make that choice. As it is, however, most university exclusive licenses prevent a licensee from contributing licensed technology to a commons or to a standard–every exploitation of a licensed invention is gated with a paywall. No cross-licensing; no royalty-free, non-exclusive sublicensing; no refusal to enforce the licensed patent; no dedication of the licensed rights to a standard. Little patent trolls–operating within a license agreement.

Universities can use patent rights to make visible technical advances by publication in the patent literature. Unlike academic publication, a patent publication must teach completely the claimed invention for one with ordinary skill in the art. Universities could use the patent literature, then, to teach inventions–and provide an alternative to the patent application drafting strategies that focus on expanding the scope of claims at the expense of immediate and direct clarity. By publishing in the patent literature, universities also can raise the standard for further patenting–expanding the public domain of non-patentable subject matter around each university patent. This approach focuses on the importance of a robust public domain and access to new technology rather than on the monopoly creation of high-return commercial products. If one cannot imagine a world in which profitable enterprise can be undertaken without patent monopolies, then of course this use of patents by a university will appear silly.

Universities can also use patent rights to limit blocking behaviors directed at the variation, application, and improvement of university-hosted discoveries and inventions. Unlike present practice, which aims to profit from handing monopoly rights to a favored company so that this company will block the variation, application, and improvement of a given university-hosted invention by any others, universities could use patent positions to extend the life and extent of a commons. For instance, a university could use Apache 2.0 licensing techniques to give incentives for users and developers of research tools to refrain from tying up improvements with proprietary rights that block the ability of other users of the same tools from making similar improvements. Keeping a research commons active for a period of time is an important element in technology transfer–and one utterly ignored by nearly all university IP licensing operations, even in dealing with NSF Cooperative Research Centers. Again, using patent positions to extend the range of a commons requires insight into research and industry needs that the dull-witted monopoly-licensing-for-commercial-product approach disregards.

The dull-witted monopoly model requires protection from these alternatives. When dull-witted university administrators talk about “protecting” an invention, they mean (almost always) preserving patent rights for the exclusive use of speculative investors trading on the future value of a possible commercial product. The patent must be protected from anyone who would consider pursuing any alternative to the dull-witted monopoly model–no open publication, no commons or standards, no quality control, no making technical advances fully visible in the patent literature. It is from alternatives such as these that the dull-witted monopoly model must be protected. Thus, the dual-monopoly requirement: patent rights must be stripped from inventors (and investigators) because they might consider alternatives. The university must have the monopoly on their inventions. And patent rights must be licensed exclusively for commercial product development (other than when forced otherwise by grant funding or when a university begins trolling for infringement) to prevent any licensee from considering alternatives. The license agreement that focuses on commercial development at the same time insists that there will be no commons, no standards, no competition.

Thus, university patent administrators–not all, but most–use exploit university authority to prevent university inventors from taking any action that might compete with their fixation on using patent monopolies to create commercial products.

There are rationales for this fixation. One is that administrators insist on royalty-bearing licenses so that the value of an invention will be realized through the licensing agreement rather than through other pathways. If money comes to the university as patent license payments, then administrators get access to that money, by policy. But if a university licenses a patent royalty-free, then benefit to the university might come through donations, or research agreements, or membership agreements, or tuition, or faculty consulting, or hiring of graduates–and administrators have a more difficult time gaining access to that benefit. The dual monopoly model exists to prevent benefit for invention from falling outside a patent license agreement, where university administrators–especially patent administrators–would not have easy access to any payments. If you are going to go hog wild for patents, you may as well play the hog.

 

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