Nolo Press Still Confused About Bayh-Dole, 1

Posted on September 8, 2017 by Gerald Barnett

A couple of years ago, I worked through a Nolo Press excerpt on the Bayh-Dole Act, showing how dreadfully wrong it is. That bit is still up at the Nolo Press site, and still dreadful as ever. I came back across it yesterday while looking for something else. That it remains up is testimony to how deeply unmindful university officials and writers about the topic remain. It’s not just that they get complicated stuff wrong (that’s bad enough, if they consider themselves experts), but it is also that they just don’t seem to care that they get things wrong.

I have worked through the Nolo page again, providing more detail for the problems and suggesting alternative language that accurately restates Bayh-Dole and Stanford v Roche. The most rotten part of the Nolo account is that, although it appears addressed to university employees who might invent, it does little to show those employees what they ought to consider in dealing with inventions arising in and around federally funded research. It’s worse than useless–it’s in many places outright wrong, and the advice it offers is awful. Other than that, it’s nicely edited. Continue reading →

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Discovery and Discovery Management, 2

Posted on September 7, 2017 by Gerald Barnett

University administrators, too, have oriented their institutions to take advantage of federal funding. Somehow, federal funding increases (to the administrative mind) a university’s prestige, and that prestige then can support raising tuition or getting more funding from state sources and donors (after all, having a lot of money ought to inspire people to give the university even more money). But what’s not reported is that most universities lose money on their federal research programs. That is, they have to spend more money than they receive in order to spend the money they do receive. That other money comes from somewhere in a university’s budget–but generally not as an “allocation to make up for the losses in federally supported research.” In a recent year, the University of California’s loss in its research program was on the order of 20%–over $600m on a $3b budget that had to come from other sources, not from the research sponsors.

Technology transfer comes into this account, too. To the extent that IP management marks discoveries and inventions and new materials and data sets and software, it serves as an index into the outputs of research (and sometimes other creative activities). The measure of these outputs–distinct from publications, students with training, faculty and staff with training, and the like–is that they get used. Not that they are patented or “protected”; not that they are licensed or commercialized; not that anyone makes money or earns a royalty or attracts investment money–but that the outcomes get used, whether for an intended purpose or otherwise, whether for further research or DIY activity or industrial work or preparation of consumer product.

Technology transfer serves a political function as well, signalling to the general public that the outputs of all this institutional research are about to become important, or at least that people are trying really hard with all sorts of complicated and sophisticated efforts to place research outputs for use–even if that is by creating monopolies behind institutional paywalls and then selling these paywalls to companies on the condition they prepare and sell commercial products (or at least sue anyone else who tries to use inventions covered by the monopoly). That so few such products have emerged is rationalized as a sign that technology transfer is so very difficult or that industry refuses to cooperate or that the people hired aren’t sufficiently well trained, or that the office they work in has the wrong name or the wrong organizational structure or lacks adequate funding or needs to expand to include the latest trend in entrepreneurship or securitization of royalty streams, or university people just don’t have rich or powerful enough friends. One problem is how universities handle invention, discovery, software and other “research assets.” That’s been a recurring theme here at Research Enterprise. Continue reading →

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Discovery and Discovery Management, 1

Posted on September 6, 2017 by Gerald Barnett

How do we discover? That’s a question that keeps coming up in my mind. There are books around that work at this point–to point to some recent examples, Ashton’s How to Fly a Horse, Kauffman’s Investigations, Johnson’s Where Good Ideas Come From. I thought it might be helpful to make a list of ways discovery happens, in no particular order–

  1. random observation
  2. accident
  3. failure
  4. exploration
  5. systematic study
  6. experiment
  7. solve a problem
  8. create a problem and solve it
  9. adapt something known in another context
  10. recognition by a prepared mind
  11. intuition/hunch/epiphany
  12. play
  13. attempt to build/prototype
  14. careful observation and documentation
  15. inspiration/madness/vision/leap
  16. allow to mature or develop without intervention
  17. become expert at something to realize what otherwise isn’t evident
  18. messing around
  19. conversation
  20. thinking about stuff
  21. serendipity
  22. theorizing
  23. copying/imitating

Of these, perhaps 4, 5, and 6 might be called “research.” But exploration can involve simply traveling to places that haven’t been visited before. We discover by going to Mars (or at least sending a probe)–hey, those aren’t canals built by Martians after all! Travel is not research, though one might say one is doing “research” by looking around once one has gotten somewhere new. Continue reading →

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The Implication of the APLU’s Nonsense on Technology Transfer

Posted on September 5, 2017 by Gerald Barnett

The APLU’s fakographic keeps giving. I’ve discussed it previously. The basic idea behind the APLU graphic is that there is a set process by which research discoveries move from the laboratory to public use. This process sure sounds great, and the APLU intends that. But the process is fantasy, at best aspiration with random instances taken as confirmation; at worst, the process is something in the nature of fraud or coercion.

When a colleague of mine went through our university’s licenses, he found only a handful of inventions that had followed our published “process,” which resembled what APLU describes. Everything else–scores–of licenses had followed other pathways. The process was an aspiration. It was a goal to someday make happen, to cajole or coerce inventors to attempt; to get industry to adopt. There was something of an evangelical fervor in providing “training” for those involved. Except that things rarely happen that way.

Compliance with a university’s intellectual property policy is largely an exercise in being made to participate in an administrative fantasy or face the ruination of one’s career.  Continue reading →

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Penn State’s Protection Racket, End

Posted on September 4, 2017 by Gerald Barnett

Well, that has been quite the trip through Penn State’s IP apparatus. I worked through it briefly a few years ago, and then again last year, but never did the deep dive to see all the strange creatures that pass for policy.

The short form is that the policy creates a rather useless loop–policy insisting that the IP Agreement assigns inventions and whatnot to the university, and the IP Agreement insisting that any assignment is limited “to the extent specified in policy”–which is, nothing. Other than that, the apparatus is a convoluted exercise in trying to force people to agree to the policy by contract, all the while creating goofball definitions, making unfounded assertions and wildly expansive claims, misrepresenting federal law, and operating outside of formal policy. Okay, so typical for a university IP policy drafted by the clueless, the negligent, and/or the corrupt. What a needless mess to sort out. And this, this is what it means to be “expert” in university intellectual property management?

Let’s discuss, now, the role of “protection” in Penn State’s policy apparatus. Here’s a bit from Penn State’s “An Inventor’s Guide to Technology Transfer“:

Look at what’s communicated. “Protect Your Invention.” “Filing an invention disclosure with the Office of Technology Management is the first step in protecting your intellectual property.” “Your” is silly, because the whole point of Penn State’s patent policy is to ensure that no inventor ever owns any invention made in or around the university. Continue reading →

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Penn State’s Protection Racket, 25: Precarious Position on IP

Posted on September 1, 2017 by Gerald Barnett

Had enough of Penn State? I sure have, but we are not done. Penn State is not an outlier in its problems with IP policy and otherwise. It’s just more of the same. At Penn State’s Office of Sponsored Programs web site, there is a statement titled “Penn State’s Position on Intellectual Property.”

Here is the sprightly opening line:

Penn State’s basic position regarding Intellectual Property (IP) is determined by the source of funding.

As we have seen working through Penn State’s IP policy, this assertion is simply untrue. Or, ignores IP policy. Or operates as an amendment to IP policy. Or creates an utter mess of an already utter mess. Would that be an utterer mess?

Penn State’s “basic position” as set out in IP policy is that (at best) that the university requires disclosure of a wide range of IP. Otherwise (at worst), the position simply claims all IP based on use of resources and field of expertise or scope of employment. Absolutely nothing in either case having to do with source of funding. Even if the university’s IP position was based on source of funding, it would be something powful stupid. Source of funding is meaningless for IP. What matters is whatever legal obligations run with the funding.  Continue reading →

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Penn State’s Protection Racket, 24: Fiduciary Duty

Posted on August 31, 2017 by Gerald Barnett

Penn State’s policy on conflict of interest, HR91, uses language that might be used to describe fiduciary duties. Penn State “faculty and staff members,” as a matter of policy, must use “utmost good faith” in their “duties to the University and its property.” By policy, faculty and staff “shall be held to a strict rule of honest and fair dealings between themselves and the University.” Further, “they shall not use their positions, or knowledge gained therefrom, in such a way that a conflict of interest might arise between the interest of the University and that of the individual.”

These assertions of policy put a great deal of pressure on what it means to have a conflict of interest. It would appear that “faculty and staff members” are reduced to that of the abstract “individual” that can have no personal interests but those that advance the interests of the University, writ large with a capital U.

All this is darkly odd. Typically, conflict of interest policies recognize that conflicts of interest do happen and the purpose of policy is to disclose those conflicts of interest that matter, and see that these conflicts are managed. Only in certain boundary cases are conflicts of interest not allowed–perhaps involving purchasing agents or senior executives involved in contracting, where even appearances might create problems. But here, conflicts of interest are simply forbidden.  Continue reading →

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Penn State’s Protection Racket, 23: Conflict of Interest

Posted on August 30, 2017 by Gerald Barnett

Penn State’s conflict of interest policy, HR91, discusses requirements on “faculty and staff members”:

In their dealings with and on behalf of the University, they shall be held to a strict rule of honest and fair dealings between themselves and the University.

In one way, this is a very strange “strict rule.” Stylistically, methinks it repeats itself:

in their dealings they shall be held to a strict rule of dealings

What makes this rule “strict”? Is it that policy elsewhere is “non-strict” but here it is “strict”? That would suggest must other bits of policy, unless they also declare themselves to be strict, are more like guidelines. And what is this about “honest” and “fair”? Why not also “utmost good faith,” if not also “candid” and “committed to the benefit of the University above personal interests”? What dealings are there that are dishonest or unfair that would otherwise be contemplated by the university? Is there an expectation that the university routinely gets into deals that are dishonest or unfair and by toosh the university won’t tolerate such deals from faculty and staff members?

Removing the passive voice we get something like this:

The University shall hold faculty and staff members to a strict rule of honest and fair dealings with and on behalf of the University.

Removing the “strict rule” nonsense we arrive at:

Faculty and staff members must be honest and fair in their dealings with and on behalf of the University.

But even this is strange. If the “dealings” rise to the level of contracts, then it would appear that the policy statement here contemplates faculty and staff acting as agents–dealings on behalf of the university–or doing business with the university–dealings with the university. That’s interesting enough, given that faculty don’t get delegated responsibilities for research contracting or IP licensing. If the dealings are contractual, then the contract establishes the mutual understandings and carries with it an implied duty of good faith. Continue reading →

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Penn State’s Protection Racket, 22: Agency

Posted on August 29, 2017 by Gerald Barnett

For all the talk about conflict of  interest in Penn State policies, Penn State does have a policy, HR91, that directly addresses conflict of interest. It’s odd that administrators can’t seem to focus their conflict of interest worries there and instead spread it all around in whatever policy of the moment happens to strike them. The statement of purpose in HR91 is straightforward, if unrealistic:

To avoid the possibility of any misunderstandings concerning the appropriate conduct of faculty and staff members in regard to all transactions touching upon their University duties and the property of the University.

It’s strange that a policy on conflict of interest can’t have as its purpose to identify conflicts of interest and manage or eliminate them. Instead, HR91 is worried about misunderstandings and appropriate conduct–as if the problem is confusion about actions (by anyone, even those given over to confusion about many things) or conflicting moral values, as if Socrates is just confused about Callicles, and gosh it would sure have helped if the both of them just had a university policy on the matter and didn’t have to try to reason things out using dialectic. Continue reading →

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Penn State’s Protection Racket, 21: Outside Activities

Posted on August 28, 2017 by Gerald Barnett

We are into Penn State’s policy on “Private Consulting Practice,” HR80. We arrive at, finally, a definition of “outside activity”–since one can be involved in outside consulting or merely go AWOL:

Outside consulting or other professional activity or service, paid or unpaid, that is beyond the scope of the individual’s University employment responsibilities.

We can re-write to eliminate the obtuse style:

Any professional activity beyond the scope of employment.

The only qualifier that remains is “professional.” We should reasonably interpret “scope of the individual’s University employment responsibilities” as those “reasonable” assigned duties referred to in the policy on academic freedom. What’s assigned is that for which one has been employed. But for faculty, it’s nuts that anything that’s not assigned is somehow properly regarded as “outside.”

There are then at least three meanings of “outside” at work. In one (here in HR80), “outside” means accepting payment from other than the university. In another, “outside” means anything beyond assigned duties. In a third, “outside” means something that isn’t obviously connected with one’s faculty activities, assigned or otherwise. Here, of course, the policy claims to control everything that isn’t subject to the university’s control as employment. That means, this is beyond a non-compete covenant–it purports to control even activities that cannot possibly compete. Continue reading →

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