We are working through the idea of exceptional circumstances in Bayh-Dole. There’s a problem here that lies at the root of the federal policy. Bayh-Dole states an arbitrary default–if a federal contractor acquires a patentable invention made in a project receiving federal funding, then the federal contractor may keep that ownership. This arbitrary default then expressly (35 USC 210) preempts all other public purposes–including the statutory authorization by which federal agencies are formed and authorized to fund research, the justifications that motivate federal agencies to fund specific projects, the motivations by which university faculty seek federal funding to support their projects proposed in the public interest. Instead, Bayh-Dole substitutes its own statement of policy and objective–arbitrary things not obviously related to the exploitation of patent monopolies. An exceptional circumstance then is any variation from the arbitrary default of invention ownership to better promote the arbitrary things Bayh-Dole aims to promote using the patent system.
No matter the reasons why research is funded by the federal government, once a contractor owns the patentable results of that research, the contractor gets to decide how to deploy any patent monopoly over those results. Result for public policy: the federal government funds research to subsidize the private exploitation of patent monopolies.
A federal agency can determine there are exceptional circumstances and thus alter Bayh-Dole’s arbitrary default, but only if the alterations better promote Bayh-Dole’s policy and objective, which depend on use of the patent system and so on ownership of an invention by someone (35 USC 202(a)). Not better promote a federal agency’s mandate or mission. Not better promote the public welfare. Not contribute to the public domain. Everything gets funneled into policy on ownership of inventions that better promotes the use of the patent system to promote Bayh-Dole’s list of purposes. Since Bayh-Dole states no ordinary circumstances that justify its default, any circumstances at all are necessarily exceptional circumstances. Bayh-Dole makes a federal agency’s own founding legislation an exceptional circumstance.
What’s left out in all of this–and there’s no what there, I fear–is how contractor ownership of inventions and required use of the patent system has anything to do with Bayh-Dole’s policy and objective–utilization, maximum participation of small businesses, collaboration between universities and industry, free competition, American manufacturing. And given that the default federal policy on the inventions that the federal government acquired in its research was to make those inventions available to all Americans to practice, Bayh-Dole’s requirement to allow federal contractors to continue to own what they acquire, so long as they disclose the inventions and file patent applications leads to the conclusion that the multiplication of private patent monopolies based on publicly supported research will somehow fulfill Bayh-Dole’s policy and objective.
There really is no connection. It is an arbitrary coupling. Organizational ownership of patents to exploit as monopolies on publicly funded research results has almost, virtually, truly nothing to do with using the patent system to promote Bayh-Dole’s policy and objective. Bayh-Dole is used to say, in essence, that contractors must use the patent system to extract maximum value from monopoly positions on publicly funded research, and doing so will [by definition–that is, arbitrarily again] promote a list of things made to appear virtuous and beneficial–use, collaboration, competition, and all that. Bayh-Dole doesn’t say that, but that’s how the law is used by the NIH and by university patent administrators. To determine an exceptional circumstance, then, is made out to be an assertion of an exception to an arbitrary default to better achieve arbitrary outcomes that must involve use of the patent system. How can one possibly ever determine that, say, not using the patent system–such as open innovation or standards-based innovation-–would better promote the use of the patent system in achieving arbitrary policy goals of a law dedicated to permitting organizational use of the patent system? Open innovation might promote maximum participation in federal research or development by small businesses, or collaboration between nonprofits and for-profits, or free competition and enterprise, and the like–but which of these elements of policy and objective may take precedence?
Bayh-Dole is wired to disrupt any finding of public interest in publicly funded research–not even the public interest authorized by the Constitution, that inventors should have exclusive rights to their inventions–ownership of patents–in exchange for the publication of their inventions using the patent system. NIST and the NIH, in particular, are dedicated to the idea that Bayh-Dole must require university inventors to give up their inventions to organizations for exploitation of patent monopolies.
Perhaps it’s obvious that if it weren’t for the provision of federal funding, there would be no need for–no basis for–any public interest apparatus whatsoever in Bayh-Dole. For that matter, there would be no need for Bayh-Dole–but maybe that’s not so obvious. Consider the objective that Vannevar Bush proposed for the national research foundation that never came about but did lead to the formation of a National Research Foundation (and which result in something rather different, the National Science Foundation):
It has been basic United States policy that Government should foster the opening of new frontiers. It opened the seas to clipper ships and furnished land for pioneers. Although these frontiers have more or less disappeared, the frontier of science remains. It is in keeping with the American tradition – one which has made the United States great – that new frontiers shall be made accessible for development by all American citizens
Bush argued that scientific progress is a “vital interest” to the federal government. Scientific progress, of course, may and does take place without the support of any government. But a government may still take an interest in what is going on. Imagine if the federal government maintained a list of company, foundation, and university faculty-led projects that the government determined would expand scientific frontiers. The government recognized these projects but didn’t provide funding. By recognizing research efforts that were expanding scientific frontiers, the federal government might bring attention to these efforts, increase the dissemination of results, and increase as well a broad interest in “developing” these results for use by American citizens. That is, the government could “foster” the opening of new scientific frontiers all sorts of ways without providing funding.
Projects that the federal government recognized would be whatever they were. Projects within companies might be proprietary or open, depending on the objectives of the companies involved. Projects at foundations might be open or not, again depending on objectives. For university faculty, the same thing–projects all over the place in terms of what gets published, when, and what might be claimed by copyright, or patent, or even trademark. The point is not just “research” but rather “opening frontiers of science.” A scientific frontier is a mental frontier–one of new awareness of a phenomenon of nature, awareness of what and how to observe, how to explain and model, how to predict and calculate. The changes in awareness may come from many different sources–systematic research, idle curiosity, serendipity, chance observation, garage futzing.
As Paul Feyerabend argues in Against Method, in science “anything goes.” Expanding a scientific frontier, then, is not merely an activity of institutionalized, establishment science. In fact, we might posit that while beneficial accidents do happen even in institutionalized, establishment science, expanding the frontiers of any area of science will most likely take place on the fringes, by outliers, by people considered loopy. Consider Ignaz Semmelweis suggesting that doctors should wash their hands after surgery before delivering babies–and thus greatly reducing the risk of infection. Laughed off. Witness how Alfred Wegener’s ideas about “continental drift” were received by the scientific community. Mocked. Or how about Robin Warren and Barry Marshall arguing that a bacterium was responsible for ulcers. As the CDC puts it in a timeline, “The medical community is slow to accept their findings.”
A scientific establishment has much to dislike if not fear in considering anything that would suggest they have been wrong, or ignorant, or unimaginative. My father, a physicist, was at a conference at which Richard Feynman gave a talk regarding the state of a particular problem in physics–the subject of the conference. Feynman argued that the reason why the problem had proved so intractable was that (I paraphrase my father’s paraphrase) “we are just too stupid to figure it out. ” In protest, people walked out on the rest of Feynman’s talk.
Working to expand the frontiers of science often means working outside much of what counts as established science. Loopy and non-institutional as Tesla, the inventor. As Benoit Godin shows in his work, “innovation” means something like “introducing change into an established order.” Established orders like to control their own changing–call it change or reform or a roadmap. An organization that controls an established order rarely–other than by making a mistake–considers a change that would make the organization itself unnecessary. Similarly, an established research center does not really want to discover something that ends the purpose of the research center. A sophisticated medical operation dedicated to treat a given disease is not really suited to discover prevention or cure. Think of the movie Strictly Ballroom. Why are those crowd-pleasing dance steps against the dance competition rules? Yeah.
Consider again Bush’s vision. Here’s his account from Modern Arms and Free Men, in the chapter “Science, Democracy, and War” (pp. 6-7):
We had, during the war, approximately thirty thousand men engaged in the innumerable teams of scientists and engineers who were working on new weapons and medicine. We gathered the best team of hard-working and devoted men ever brought together, in my opinion, for such a task.
These are teams drawn from universities, industry, and gadgeteers, brought together to do something that the established order of the military could not imagine, could not justify funding if they could imagine it–loopy things, things beyond the ordinary, common sense of proper people.
We spend half a billion dollars. Congress gave us appropriations in lump sums and trusted us to decide on what projects to spend the money. In uniform but without insignia, some of our men were on the battlefields and in the planes and ships in every theater of the war.
You can see the seeds of Bush’s idea for a national research foundation to do in peacetime, and for medicine or communications what these teams had done for the military establishment.
At the same time, I watched a great democracy bend itself around this new development and give it life and meaning. . . . We contested with generals and admirals, but the new weapons were produced and used, and we wound up friends. . . . We did a job that required fantastic secrecy, and yet we won and held the confidence and support of the military, the Congress, and the American people. We were a varied group with all sorts of backgrounds and prejudices, and yet we developed a team technique for pooling knowledge that worked.
This “pooling” of knowledge I call Bush’s “unexpected model of innovation.” The established order does not expect what is produced by Bush’s knowledge pooling team technique. Expanding the frontiers of science provides more knowledge to be brought in and “pooled” by a team working outside an established order–whether an established order of government (such as the military) or industry or science itself.
Bush argued in Science the Endless Frontier that opening up scientific frontiers ought to be the work of university faculty–following the “free play of free intellects.” Then focused teams of devoted scientists, engineers, and gadgeteers could be assembled to take on a given established order. The “technology transfer” as it were follows the people who are aware of new science at the fringes and bring that knowledge into a devoted team. Note: this is *not* the “multidisciplinary teams” so popular in federal agency calls for proposals–where people with differing backgrounds are pooled so that a research grant can be parsed out among them and they attempt to discover new things.
Would there be a need for any public interest apparatus for patents just because a project was placed on such a federal agency’s list of worthy efforts to open a scientific frontier? No, of course not. Bush argued that the only patent policy needed was that the government received a royalty-free license for government purposes to whatever might be invented with National Research Foundation funding. For the approach to work, say, for medicine or communications, the federal government has to be committed to producing and deploying the innovation itself, as if in a weapon or at a field hospital. Otherwise, we have to deal with companies in competition with each other seeking the greatest share of “value” available in a market rather than being constrained to produce what the government orders up.
Bush’s model relies on a robust “governmental market” in which goods are produced, sold, delivered, and used. If there’s a robust governmental market, then the government’s license to practice (make, use, and sell) and have practiced (have made, have used, have sold) actually means something. The government can authorize any contractor to produce products involving the inventive work of other contractors–without anyone claiming patent infringement or demanding compensation. If there’s not a robust governmental market, then non-federal people and organizations have to act in a manner similar to the federal government to create a non-governmental market with similar characteristics. This has, in fact happened–witness the development of the internet, which transitioned from a federal ARPA project to a quasi-private “market.” A similar thing, however, has not happened in medicine, where pharmaceutical companies have refused to adopt the necessary practices.