Some reading for technology transfer professionals

Every so often I have asked people what articles ought to be required reading for people in university technology transfer. One great suggestion is David Teece’s “Profiting from technological innovation: Implications for integration, collaboration, licensing and public policy.

Another has to be Benoît Godin’s work on the history of the concept of innovation. “The Linear Model of Innovation: The Historical Construction of an Analytical Framework,” for instance. But most anything by Godin is worth the read. Benoît Godin has two rooms full of books on innovation, stacked floor to ceiling.

For general innovation stuff, you might start with these:

Kevin Ashton, How to Fly a Horse: The Secret History of Creation, Invention, and Discovery
Scott Berkun, The Myths of Innovation
Jane Jacobs, The Economy of Cities
Steven Johnson, Where Good Ideas Come From: The Natural History of Innovation
Matt Ridley, The Rational Optimist: How Prosperity Evolves
Continue reading

Posted in Technology Transfer | Tagged , | Leave a comment

University of Connecticut patent practice hash, 4

So now back to UConn’s patent policy claim. Look at it again:

Under Connecticut state law, the University owns all inventions created by employees in the performance of employment with the University or created with University resources or funds administered by the University (“University Inventions”).

It’s simply not true. “Created” does not show up in the state law. The state law uses “conceived,” “conceived or developed, “emerges.” The invention “vests” with the university. The university does not own the invention until assigned. State law authorizes the university to own and limits the scope of that ownership claim by reciting the situations in which the university can require assignment. The university’s patent policy, however, does not respect those limits–and that’s unacceptably awful.

And now garble: “by employees in the performance of employment with the University.” What can we make of that? What does “with the University” mean? For that matter, what does the policy mean by “employment”? The state law is fussily clear about Category A inventions–“customary or assigned duties.” “In the performance of employment” is nonsense written by someone with fantasizing about rainbows and dancing hippos. Clearly, the university’s policy overreaches.

There’s no mention in the state law of “funds administered by the University”–state law’s treatment of “at university expense” is not the same thing at all. Money provided by a donor or sponsor in support of a project is not “at university expense.” Same for “University resources.” State law identifies only with the “aid” of “equipment,” “facilities,” and “personnel.” Again, the patent policy generalizes without authority.

In all, the UConn patent policy is a con job. Continue reading

Posted in Bayh-Dole, Policy, Stanford v Roche | Tagged , , | Leave a comment

University of Connecticut patent practice hash, 3

Here’s UConn’s policy on invention ownership:

Under Connecticut state law, the University owns all inventions created by employees in the performance of employment with the University or created with University resources or funds administered by the University (“University Inventions”).

No definition there of “invention.” So we go to Connecticut General Statutes, 10a-110a:

“invention” means any invention or discovery and shall be divided into the following categories: A. Any invention conceived by one employee solely, or by employees jointly; B. any invention conceived by one or more employees jointly with one or more other persons; C. any invention conceived by one or more persons not employees.

Not much help here, either. “Invention” means “any invention or discovery.” Invention means invention, dammit. The categories are fussy bureaucracy at their fussiest. Moloch state drinks Moloch beer. Continue reading

Posted in Bayh-Dole, Policy | Tagged , , , , , | Leave a comment

University of Connecticut patent practice hash, 2

The definition of subject invention in federal funding agreements is not a matter of university administrator preference. Either an invention meets the definition of subject invention or it doesn’t. The administrator’s job is to gather the documentation that provides the basis for making a determination. But why do actual work when one can postpone the effort (“most grants won’t produce inventions”), pass the work, and the blame if things go wrong, to the inventor? And that’s of course just what the UConn disclosure document does at the end–

The inventors are to confirm “the completeness and accuracy of the information.” Well, there you have it. The inventors not only must provide their opinions, but also they have to swear to the information. One would think that the university administrators are the ones charged with confirming the completeness and accuracy of the information. The only thing an inventor is asked to do is to provide a description of the invention. Here’s the requirement from the standard patent rights clause at 37 CFR 401.14(a)(c)(1) (I have added numbering and broken up the layout):

The disclosure to the agency shall be in the form of a written report and shall

[1] identify the contract under which the invention was made  and the inventor(s).

It shall

[2] be sufficiently complete in technical detail to convey a clear understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention.

The disclosure shall also

[3] identify any publication, on sale or public use of the invention and whether a manuscript describing the invention has been submitted for publication and, if so, whether it has been accepted for publication at the time of disclosure.

The standard patent rights clause then requires university contractors to require their technical employees to make a written agreement to disclose inventions so the university can meet this standard (37 CFR 401.14(a)(f)(2)): Continue reading

Posted in Bayh-Dole, Policy | Tagged , , , , , | Leave a comment

University of Connecticut patent practice hash, 1

Let’s work through the University of Connecticut’s intellectual property practice on disclosure and ownership of inventions. We will start in the middle, with a disclosure form–much like a university inventor might do.

UConn has an “Innovation Alert” web “portal” that can be used for “pre-disclosure”:

Inventors are invited to disclose before they disclose. Something about this smacks of a failure of language. One might think that this “pre-disclosure” starts the 60-day clock ticking for UConn to report a pre-disclosed invention to a federal research sponsor. I expect the university administrators who chucked up this idea will argue that this cannot be an invention disclosure because it has “pre-” right there in its name. They fail to understand that an instrument is what it does, not how it is labeled.

What is to be pre-disclosed is variously called a “big idea,” “new idea,” an “innovation,” or an “invention.” Apparently in pre-disclosure, UConn administrators cannot focus on any one thing. “Big idea” is cartoonish condescension; “new idea” is nonsense, because ideas don’t have much to do with invention, and the focus is invention not, say, business ideas in general; “innovation” is pretentious because innovation is something adopted by a group as new, a change in the established order as it were, not merely something new in one’s head or lab; and “invention” is the putative target of an “invention” disclosure form–but the “Innovation Alert” portal makes a hash out of that by inviting disclosures of stuff that isn’t inventive (in the patentable sense).

The actual focus of the disclosure should be a patentable invention–one that’s new, useful, and not obvious. How difficult is that to communicate? Furthermore, the university’s scope of claim to ownership is restricted (we will get to this later), but here the offer is to evaluate any “big idea, new idea, innovation, invention” regardless of the university’s ownership position. Big-hearted, if true.  Continue reading

Posted in Bayh-Dole, Present Assignment, Stanford v Roche | Tagged , , , , , | Comments Off on University of Connecticut patent practice hash, 1

Subject invention reporting and federal funding agreements

It would be interesting to see an audit of university invention reporting practices, especially in light of the definition of “funding agreement” and what it means for an invention to be made “in the performance of work under a funding agreement.”

In very short. Developers working under standard university exclusive licenses that function as assignments also produce subject inventions that go unreported.

That is, with less shortness, subject inventions are produced not only by federally supported research but also by product development that follows on that research when either (i) the product development is clear in the proposed work–as proposed by the federal government or by the university-approved proposal or by the proposal taken in the context of formal university statements with regard to a commitment to commercial development (such as a determination to “commercialize” results), or (ii) when the developer becomes a party to the federal funding agreement through “any assignment, substitution of parties, or subcontract of any type”–such as happens when the developer accepts assignment of a subject invention from a university and must therefore also accept the nonprofit standard patent rights clause. Continue reading

Posted in Bayh-Dole | Tagged , , , , | Comments Off on Subject invention reporting and federal funding agreements

The effect of eliminating Bayh-Dole invention reporting

The invention reporting requirement is fussy bureaucracy as it is presently practiced. Federal agencies appear to do nothing with the information reported other than to run up costs at taxpayer expense to receive the information. Nothing meaningful happens as a result, not for the practical application of inventions, not for free competition, not for American industry and labor, not for government practicing and having practiced any subject inventions. The invention reporting requirement is just a tax on innovation to bloat university administrations and federal agencies alike. Call it the beer of the Moloch state. Moloch beer.

Getting compliance with subject invention reporting is no easy task. First, one has to audit all university inventions–not just the ones that universities claim, but also those that people working at a university claim privately. I’ve seen university faculty with way more private inventions than ones disclosed to the university. Second, one has to establish whether any given invention was made in performance of work funded in least in part with federal money under a funding agreement. It would all be so much easier if government rights were restricted to stated invention deliverables, either in the request for proposals (procurement) or request for support (subvention). Beyond that, what should the government care? (There are reasons why a government should care, but (sigh)).

If subject invention reporting were dropped, nothing but bureaucracy would change. Bayh-Dole’s public covenant is virtue-signaling without substance. Nothing of substance is enforced in the standard patent rights clause. Bayh-Dole’s only reason for being–despite all the garbage thrown around by its advocates–is the one thing they refuse to mention: to pipeline federally funded research as patent monopolies to the pharmaceutical industry and to venture investors hoping to sell their companies to the biomedical industry. Bayh-Dole sets it up so that even if universities choose not to deal in patent monopolies on publicly funded inventions, the federal agencies–and especially the NIH–are authorized to do so.

Essentially Bayh-Dole sets up a second shadow patent system right in the middle of the legitimate patent system. Continue reading

Posted in Bayh-Dole | Tagged , , , , , | Comments Off on The effect of eliminating Bayh-Dole invention reporting

Why universities might fail to report subject inventions

James Love asks why universities fail to report subject inventions.

The question might seem rather odd, because in practice Bayh-Dole has been construed to give university administrators incentives to expand the definition of subject invention and so claim anything and everything they can. University administrators viewed Bayh-Dole as giving them an end-run around university research policies. Those policies generally state that research contracts take precedence over patent policy inventor ownership rules–which at the time often favored faculty inventors. Thus, according to these university administrators, Bayh-Dole happily also preempted academic freedom, freedom of research, and freedom of publication–all things otherwise assured by university policy. University administrators did not have to change any policy–they just asserted that federal law required them to take ownership of any inventions with a whiff of federal support. Then they went back and made changes in university policies to bring the policies into compliance with federal law. It was all bogus–incompetence and clever malice all rolled up into one slime ball of self-interest. But that’s what we have. You can see why university administrators are pretty much the only folks in love with Bayh-Dole–oh, along with much of the pharmaceutical industry.

But Love reports that his organization (KEI) is finding numerous instances of non-reporting of what appear to be federally supported inventions made at universities. Here is a KEI “Briefing Note” that provides a bunch of information with regard to Bayh-Dole invention reporting.

So if Bayh-Dole offered incentives for university administrators to expand the definition of subject invention and report everything as a simple way to claim institutional ownership with the apparent power of federal law, why would administrators under report?

Here are some possible reasons why: Continue reading

Posted in Bayh-Dole | Tagged , , , , | Comments Off on Why universities might fail to report subject inventions

Nonprofit assignment of subject inventions in the standard patent rights clause 37 CFR 401.14(a)(k)(1)

Universities ubiquitously claim as a matter of formal policy to handle patentable inventions in the public interest. That expectation forms a basis for the federal government to award grants–subvention funding, grants-in-aid–for faculty-proposed research hosted by these universities. That’s also the basis for the requirement in Bayh-Dole that federal agencies must require in their funding agreements that nonprofits  include the nonprofit patent rights clause in any assignment of a subject invention. See 37 CFR 401.14(a)(k)(1).

Again. Universities swear they will manage inventions in the public interest. Bayh-Dole agrees and requires federal agencies to use a patent rights clause specific to nonprofits in funding agreements with nonprofits. That nonprofit patent rights clause requires that when a nonprofit assigns a subject invention, the nonprofit patent rights clause is included. The nonprofit patent rights clause requires nonprofits to use income with respect to any subject invention, after allowable costs, to support scientific research or education. The same goes, then, for any assignee of a subject invention. If you are a company, then unless you are a big-hearted, publicly spirited sort of company, you really, truly do not want to receive assignment of a subject invention from a nonprofit.

Here is the original version of the nonprofit patent rights clause (my emphasis), as a required by clause (35 USC 202(c)(7)):

In the case of a nonprofit organization, (A) a prohibition upon the assignment of rights to a subject invention in the United States without the approval of the Federal agency, except where such assignment is made to an organization which has as one of its primary functions the management of inventions and which is not, itself, engaged in or does not hold a substantial interest in other organizations engaged in the manufacture or sale of products or the use of processes that might utilize the invention or be in competition with embodiments of the invention (provided that such assignee shall be subject to the same provisions as the contractor)

Here’s the amended version, circa 1984, after the university patent brokers finished removing the restriction that an invention management organization could not have a conflict of interest by holding stock in companies that also might compete with others for licenses: Continue reading

Posted in Bayh-Dole | Tagged , , , , | Comments Off on Nonprofit assignment of subject inventions in the standard patent rights clause 37 CFR 401.14(a)(k)(1)

GAO reports Bayh-Dole is a do WTF you want law

Bayh-Dole is a do WTF you want law. Don’t take my word for it. You don’t even have to go read the law to see what I have been talking about. Here, check out this report from the GAO, for 1998.

The repeated theme of the report is that “we talked to someone” and “they think Bayh-Dole is doing wonderfully” along with “but they don’t have any way to check that their thinking is accurate.” And of course, the university thinking about Bayh-Dole is mostly inaccurate, except for one key point–universities can do pretty much whatever they want to, as long as they insist they are complying with Bayh-Dole. Here’s a major heading:

Check out that left column summary: “The administration of the Bayh-Dole Act is decentralized and relies heavily on voluntary compliance by the universities.” Of course, the Bayh-Dole Act applies to patents on inventions made with federal support and to federal agencies, and dictates how federal agencies must contract for rights to inventions made with federal support. But what happens if the universities haven’t bothered with compliance? Nothing, apparently. Universities haven’t bothered with the (f)(2) written agreement requirement, routinely assign inventions under the cover of exclusive patent licenses, fail to (knowingly) require their assignees to accept the nonprofit patent rights clause, and spend the income from licensing and from other exploitation of subject inventions however they wish, disregarding the standard patent rights clause. Continue reading

Posted in Bayh-Dole | Tagged , , , | Comments Off on GAO reports Bayh-Dole is a do WTF you want law