AAU has tweeted out its happiness with advice it and other “higher education associations” (APLU, AAMC, COGR, and ACE) have given in response to NIST’s call for public comment on ways to improve federal “technology transfer.” AAU tweets that “Bayh-Dole is working as intended.” It is unfortunate that we don’t know who did the intending that the AAU reports. Maybe that would help to explain the silliness that follows.
We will work through the HEAs’ priorities, note that their exercise is unresponsive to NIST’s call, and then examine their discussion in some detail. If you want to skip all that, the gist is that these HEAs want is more money and less accountability for the administration of technology licensing programs that have failed to produce.
But I know you–you aren’t content with the bland conclusion that faceless bureaucrats who won’t even put their names to a string of unfounded assertions have produced another foul document asking for more money for administrators to use with less oversight. You want to see how bad it really is, and thus you read on.
Here are the “priorities” that AAU and other HEAs recommend for NIST. Let’s consider.
(1) No changes to the Bayh-Dole Act are necessary. The statute should be considered a set of core principles that must be protected.
In other words, there should be no innovative change to a law concerning the use of inventions. Yes, that’s very bureaucratic. Furthermore, there should be no change to a law regarding federal licensing of inventions owned by the federal government that merely provides that the government may license such inventions non-exclusively, co-exclusively, or exclusively to the point of assignment. So the federal government can do most anything–but how does preserving such authorization (35 USC 207, 209) help the government understand what it should do? Again, it’s very bureaucratic to say nothing should change in a part of a law that doesn’t have much of anything to do with federal technology transfer other than say “do anything you want.”
While we are at it, what are the core principles of Bayh-Dole? Let’s put them in pragmatic style:
- University administrators may preempt both federal and faculty public purposes
- Keep reports of utilization a federal secret
- Federal agencies need not enforce the standard patent rights clause
- Federal agencies need not act on rights reserved for the federal government
- Third parties have no right to appeal actions by universities or inaction by agencies
That’s some set of core principles. I can see why bureaucrats would love to keep them unchanged. It’s not really necessary to change such law. The key thing is not to enforce it. But these are core principles of Bayh-Dole for universities–not for federal agency technology transfer. For federal agencies, the core principles are much reduced:
- Seek utilization of federally owned inventions
- License such inventions any way one wishes, but with paperwork
- Keep business plans and other information a federal secret
- Never use march-in rights
See the implementing regulations at 37 CFR 404. Bayh-Dole’s statement of policy–with all the stuff about using the patent system to promote collaboration between non-profits and industry and free competition and enterprise, and protecting the public from nonuse and unreasonable use, and even to minimize the administrative costs–gets reduced to “utilization.” The rest has to do with licensing and a version of “march-in” rights.
If we wanted to reduce both prongs of Bayh-Dole to a simple statement, it would be:
Bayh-Dole permits institutional administrators to deal in patent monopolies on inventions made in projects deemed worthy of federal support, regardless of the objectives of the investigators or federal agencies involved and without public accountability;
The federal government may also deal in patent monopolies on inventions that it owns without any public accountability.
Even more simply then:
Bayh-Dole allows private interests in patent monopolies to preempt public purposes.
Perhaps that’s the principle that AAU and other HEAs want to preserve. But despite the assertion that Bayh-Dole should not be changed, the HEAs think that the law could be improved. We might think, then, that if Bayh-Dole could be improved, then perhaps it also does need to be changed. Unless, of course, improvement isn’t necessary. I suppose it’s not. But then, why bother to respond to NIST’s call for assistance?
Nevertheless, there are a number of additional improvements that could further bolster Bayh-Dole as currently written.
Could it be that Bayh-Dole should be changed so that the “currently written” part of the law expressly supports the otherwise non-compliant practices of university administrators and the indifference at federal agencies? No, of course not that. That would make it apparent that Bayh-Dole practice isn’t at all in the public interest. Instead, the law could be “bolstered.” If the law is working “as intended”–why would it need to be “bolstered”? Wouldn’t “bolstering” mean the law isn’t quite working as intended? “Bolstered” must be bureaucratic-speak for “not working as well as intended.” The law could be working at only 5% of its potential and still “working as intended” if what was “intended” was for it to work at only 5% of its potential. And it could be “bolstered” if what was now “intended” was an improvement to 7% of its potential.
Perhaps then it is that the intentions themselves that need bolstering. Maybe universities aren’t ineffective enough in their intentions. But then, how would the HEAs give advice to NIST about how to improve the intentions of the HEAs own members? Some things just cannot be said, apparently.
Next HEA priority:
(2) The dearth of funding for university and medical school technology transfer presents a fundamental and ongoing challenge to universities’ ability to transfer federally funded
technologies, but below we outline a number of possible approaches to improving this situation.
Consider: bureaucrats adopt the least effective approach to the management of inventions in the public interest, run up huge bills, and then complain about how much their stupidity costs. Let’s point out that 60% of the utility patents issued to universities in the Bayh-Dole era don’t recite federal funding. How about dealing with this problem: holding back inventions in the hopes of granting exclusive licenses destroys opportunities to collaborate, for competition, for cumulative technology, for standards, for interoperability, for parallel development?
This (2) point all but contradicts the (1) point, but for “bolstering.” It appears that university licensing operations are over built, overly complicated, and under funded. Was this expensive activity intended by Bayh-Dole? If not, how can the law be working as intended. If so, well, what’s there to complain about?
Under-funded–hey that means they aren’t making anything on their licensing. Otherwise, they’d be deducting their costs of administrating subject inventions from their royalties. But, ah, they don’t have those royalties, for the most part–for the 99% most part. They can’t be commercializing subject inventions or they would be floating in money from earned royalties. Giving them more money to support an approach that isn’t working (though is working as intended), however, is not the answer, unless you are a total sucker for the sketchy charms of bureaucrats. Have you ever met a bureaucrat advocating for less funding, doing more with less, efficiency and judgment, reconfiguring to less bloat? No, not possible.
(3) Various “bureaucratic” hurdles – such as invention reporting roadblocks, conflicts of interest rules, and lack of federal agency timeliness and responsiveness to requests for waivers of
invention rights under Bayh-Dole – create disincentives for technology transfer by imposing costs and compliance burdens without commensurate salutary benefits for the public.
They are kidding, right? What “waivers for invention rights”? Are we back in the DOE program under the Kennedy patent policy–you know the one that was flexible and purpose-oriented but then required a university to make a case for holding a monopoly interest in, uh, an invention pertaining to nuclear weapons or nuclear energy? There are no disincentives for technology transfer in Bayh-Dole. There are disincentives for federal agencies to act on anything in public interest, of course. Disincentives for enforcing the standard patent rights clause for instance. Why enforce what you can waive or ignore? Disincentives to march-in for nonuse or unreasonable use. Why march-in when a contractor can drag the process out for years–making the march-in all but useless?
Put it another way–there are indeed “disincentives” for university bureaucrats to get involved in dealing with patent monopolies on inventions arising in publicly funded research. We might say that dealing with patent monopolies is part of commercialization and commercialization is part of technology transfer. But to then label the problem as one of technology transfer is disingenuous. Bayh-Dole’s focus is on utilization in general and practical application in particular. Technology transfer is about teaching another how to use a technology that they previously did not practice, and enabling them to have the resources to practice what has been taught. In this transfer of technology, a legally binding promise not to sue for infringement of what have been taught and provided is almost an afterthought. It is of the form–“I will help you hunt the wolves and… I promise not to shoot you when we are done.” Well, it’s a nice thought, coming from bureaucrats and all.
Instead, the AAU and the HEAs argue to reduce the apparatus of public protections that Bayh-Dole offers but then makes inoperable in practice. Bayh-Dole sets out a system of patent exploitation by nonprofits that was identified as the least effective approach by Harbridge House in 1968 and yet was used by NIH to create its IPA program which was in turn shut down ten years later as ineffective. Immediately after, NIH produced the bill that would become Bayh-Dole to do the same thing all over again. The public protections never operated in the IPA program. They never operate under Bayh-Dole. And the program is still the same dismal shitstorm that it was under the IPA, just bigger and more firmly entrenched with less public accountability. What is it about shitstorms that attract bureaucrats like flies? Oh, yes, such bureaucrats really are like flies.
Disclosure of subject inventions–ones acquired by a federal contractor–lies at the heart of Bayh-Dole’s public logic. There aren’t bureaucratic hurdles to disclosure. Acquire an invention, assemble the information for a patent application, send that information to the federal agency. Is that so difficult? Suggestion: hire for competence. Another suggestion: don’t acquire so many inventions. Then it won’t be so difficult. You know, focus for a change rather than trying to run up the volume metrics, as if Bayh-Dole intended for there to be overwhelming volume in subject invention disclosures. Bayh-Dole, the Spinal Tap of invention policies, when working as intended must go to 11 on volume. Yes, that must be it–the more patents on the more publicly supported research results, the more potential for “innovation.” Believe that? That’s what AAU and the other HEAs want you to believe. Give in and self-delude.
Priority (3) argues that Bayh-Dole is not working as intended. University licensing offices are underfunded, aren’t transferring technology, and don’t know how to practice under Bayh-Dole. But more money will fix all this. Pour me a drink.
(4) A robust patent system is essential to a successful technology transfer ecosystem.
Only half-true. We can argue the merits of patenting in technology transfer in general, in university administrative involvement in technology transfer less generally, and in the purpose of patent monopolies in that university administrative involvement in particular. We might find that “robust” does not mean much here. It’s like “bolster.” The HEAs argue that their member institutions, having chosen a minimally effective, overly complicated, maximally expensive approach, believe that their decision would look a lot better if the patent system were different–were “robusted.” Let’s summarize:
“We picked a crappy approach, spent wildly on it, and the only reasons the approach doesn’t work are because we don’t have enough of other people’s money, the law needs to be “bolstered” to make our crappy approach work, and the patent system itself must be “robusted” and then our crappy approach will work. The HEAs’ advice to NIST turns out to be excuses for their crappy approach. The HEAs’ response to NIST takes the form of a complaining apology–trying to shift the blame for rotten outcomes but using a vocabulary that makes it sound like everything is working as intended. And the HEAs aren’t even addressing NIST’s request–instead they talk about non-federal technology transfer–their patent monopoly fixation habit. Bureaucratic narcissists!
Even if we accept that patents have a role to play in the transfer of technology, a “robust” public domain is also essential; a robust pattern of standards formation is also essential; a robust environment for collaboration, for building cumulative technology, for non-market networked development is essential.
The patent system–whatever it is–is not the problem with university technology transfer. Technology can be transfered entirely without patents, and can be transfered with patents without preserving the patent monopoly–such as with royalty free or FRAND non-exclusive licenses. The problem, then, isn’t the patent system with all its lack of enrobusteness, but the use of patent monopolies when it comes to research findings produced in work funded by the federal government *only* because the work was determined to be in the public interest. We are not talking federal procurement here, but science and engineering in the public interest. When the patent system is used to further such purposes, what practices should distinguish that use from the regular old patent monopoly used to exclude competition, or raise prices, or dictate the direction of development, or just sit on an invention so no one else can get at it?
Uncertainty around Bayh-Dole march-in rights,
Never been used, designed not to operate, were never used under the IPA program either, weren’t used under the Kennedy/Nixon patent policies. What uncertainty? Are university folks scared that Bayh-Dole might be enforced? That the public covenant might actually mean something? That uncertainty? Are the HEAs arguing that the problem with Bayh-Dole is that now that it hasn’t been enforced for so long, it is terrifying to think that federal agencies might enforce even a little bit of it? Is Bayh-Dole’s wonderfulness that it isn’t enforced? How can a law work as intended by not being enforced? What sort of law is that, then?
lack of confidence that patents will be enforceable in fair proceedings in the courts or at the Patent Trial and Appeal Board (PTAB),
Right–file patent applications on sketchy inventions and then spend your big money in litigation only to find out your patents are suspect and your licensing program is lousy. Consider alternatives. One could license inventions such that no one would care to challenge even reasonably sucky patents. Royalty-free, say, or as Stanford did with Cohen-Boyer, at so low a cost no one cared about the cost. Consider using the patent system to promote, say, free competition–by making an invention available on FRAND terms to everyone qualified. Use the patent for quality control, not to chase companies around with infringement claims. Consider Caltech suing Broadcom and Apple, who were (so Caltech claims) using a federally supported invention without a license. But then we have Bayh-Dole Advocates hoo-hawing around that no invention will get used without a patent monopoly. Except here are Broadcom and Apple using (apparently) just such an invention, and not only without a patent monopoly of their own, but also in the face of a patent monopoly held by Caltech, and moreover, without the benefit even of Caltech bothering to teach the invention to them, even though that would appear to be the mandate Caltech accepted when it chose to keep title to the inventions it had acquired. So much for Bayh-Dole hoo-haw.
confusion regarding patent eligibility law,
Huh? Bachelor #1 is from Houston, Texas and likes long walks . . . What sort of patent eligibility law are we talking about? Are HEAs bothered because there’s uncertainty whether some things are patentable subject matter? Ah, it’s actually a problem about software:
Coupled with the inconsistency with regard to rights in software in the applicable government regulations (see below), the result is a landscape inhospitable to commercialization that threatens to slow, if not stifle, the bringing to market of groundbreaking technologies such as artificial intelligence (an area in which the U.S. is currently seeking to remain in the lead globally)
The result of using Section 101 of the patent law to rule that many software-based methods are not patentable subject matter simply for being in software somehow “stifles” AI. No–it’s the other way around. Every bureaucratic organization staking out its patent monopolies over fragments of a developing technology base stifle the technology. Look at what happened to carbon nanotubes, for instance. Now the faceless front organizations for the faceless university administrators want to stifle AI and other software-based emerging technology platforms in favor of “commercialization” based on patent monopoly speculation. Open access creates “a landscape inhospitable.” We cannot have technology transfer here, gentlemen, this is the technology transfer office!
There’s more–we will pick up right here in the next installment.