Reflections on Shill Reflections on Bayh-Dole, 5: Incentives and basic research

Posted on September 19, 2020 by Gerald Barnett

We have been working through a set of reflections on Bayh-Dole by a set of patents-in-healthcare shills. We are at this claim:

prior to the Act, the government often funded research to spark innovation, but then put the research in the public domain for non-exclusive licensing,…

We know the premise is fake. But the claim now goes bizarre:

which left inventors without an incentive to research.

The claim is that university researchers had no incentive to do research if their universities could not take ownership of inventions and keep the inventions from open access, including access by the researchers themselves outside the university that hosted their work. University researchers had not stopped doing research for the thirty years of federal policy on open access. University researchers were not the ones boycotting federal funding or asking federal agencies to make it a default that university administrators could take inventions from their work whenever they wanted, and the researcher would have no further right of access to those inventions, but for the approval of the administrators.

Researchers had incentives to conduct research that did not involve hoping to profit from patent monopoly positions held by university administrators. If a given researcher thought that any particular idea was suitable for patenting, that was a researcher’s choice, not a university patent administrator’s choice. That researcher selectivity was crucial to effective use of patents in research settings. For federal funding, the researcher had to make a case for pulling back rights from open access. But default open access appears to have had nothing to do with researcher incentives. Continue reading →

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Reflections on Shill Reflections on Bayh-Dole, 4: Fake history, executive branch patent policy, and contamination

Posted on September 18, 2020 by Gerald Barnett

Back to reflecting on fake history, namely this:

prior to the Act, the government often funded research to spark innovation, but then put the research in the public domain for non-exclusive licensing,…

Executive branch patent policy from Kennedy on (until Reagan botched it all up) provided that company contractors with non-governmental markets should be allowed to own patentable inventions made by their employees, and nonprofits and contract research organizations, which did not have markets, should have to make a case for their ownership of patentable inventions–how would their exclusive control better serve the public than open access? Put another way, how would their legal right to exclude all others, or to discriminate among those having an interest, better serve the public? How would their opportunity–nonprofits, mind you–to align themselves with suppression of inventions (competition!) and with monopoly pricing (more money for research! and administration!) better serve the public? Nonprofits and contract research organizations could request exclusive rights, but they had to make a persuasive case for those rights.

Much of Bayh-Dole is about university patent administrators not wanting–or being able to–make a case for how the public benefits from their exclusive control of inventions made in work these same administrators petitioned the government to support as being in the public interest. So, make the case. The other bit of Bayh-Dole is about university patent administrators upset that some federal agencies–NIH, NSF–allowed (no, conditionally required) the universities to take ownership of inventions while other federal agencies did not and instead required the universities to make a case for that ownership. These conflicting requirements, claimed the university administrators, created huge uncertainty–one federal agency did not require the university to make a case that its ownership would be better for the public than open access would be, and another federal agency did. Oh, my! Continue reading →

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Reflections on Shill Reflections on Bayh-Dole, 3: Fake history, sparking innovation, and a pernicious requirement

Posted on September 18, 2020 by Gerald Barnett

[I have made revisions and additions and placed the second half of this article in part 4.]

We are still reflecting on reflections on Bayh-Dole by “leaders” hoping that you will follow them. More:

prior to the Act, the government often funded research to spark innovation, but then put the research in the public domain for non-exclusive licensing,…

This is fake history. It is true that some federal agencies did take ownership of inventions and place inventions in the public domain or patented them and released them non-exclusively and royalty-free. And it is true that in some cases Congress attached a requirement of government ownership of inventions to specific funding authorizations, such as in the Space Act that established NASA. But it is not true in general and not true in general for the nonprofits receiving most of the government’s basic research funding. It’s fake, but you are supposed to believe it because it is stated as a general fact and made to sound true.

Company contractors with non-governmental markets could own and exploit inventions made under federal contract. This was long-standing practice for the defense agencies. Most of the 26,000 patents held by the federal government–vastly most–were defense-related inventions that the defense contractors had waived their interest in patenting. The government then patented these inventions to publish them (and perhaps to show that their research support produced patentable inventions) and (if it matters) define some control over the domestic market for the invention. The government, as it were, could by means of patents control imports of products practicing these inventions, thereby protecting in some way the interests of U.S.-based companies in the U.S. market (if not also internationally).

Continue reading →

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Reflections on Shill Reflections on Bayh-Dole, 2: Commercialization and certainty

Posted on September 17, 2020 by Gerald Barnett

We are working through reflections of Bayh-Dole made by some iron rings in cows’ noses that claim to give milk–er, “industry leaders.” The exercise is useful not merely to mock them for their nonsense–mockery is here salutory and inclusive–but also to provide a basis for reflecting on the Bayh-Dole that these folks have never known, don’t want, and work to prevent–that is, the Bayh-Dole as it is in the statute, and what Bayh-Dole practice would do, if the law were enforced.

More cow nose ring reflections, then, on Bayh-Dole:

it has been extraordinarily successful in that respect.

The “in that respect” is apparently the claim that Bayh-Dole “facilitates commercialization.” That’s an evidence-free claim, directed to a non-objective of Bayh-Dole. Commercialization is so unimportant that no one bothers to track commercialization with respect to Bayh-Dole. No one says–here are my Bayh-Dole patents, and for each, here’s when, if ever, the claimed invention has been commercialized. The NIH IPA rate of commercialization was 4% of patents. Stanford reported, a few years ago, that 20% of their patents were licensed. And of those, only 257 of 6,400 had made enough money ($100K+) that it was reasonable to expect these had been “commercialized.” Again, 4%. And that’s not considering whether the invention carried federal funding (and federal conditions).

While people coo over the idea that universities have gotten way more patents after Bayh-Dole came into effect (without any consideration for whether Bayh-Dole caused any of it), no one asks whether there’s been more “commercialization” or–and this was something discussed by the federal agencies when they were aiming to put together federal patent legislation in 1976–whether the commercial utilization of inventions made in federally supported work was any faster when exclusive patent rights were held by nonprofits. AUTM does not track “commercialization” in general and does not track “commercialization” specifically for subject inventions–inventions subject to a Bayh-Dole patent rights clause. No one tracks this. No one cares. Not an objective of Bayh-Dole. Heck, commercialization not even a fantasy objective of Bayh-Dole. Commercialization is a fantasy premise for patenting activity but not for compliance with the law. To top it off, Bayh-Dole purports to exempt any reports of invention utilization from public disclosure law (35 USC 202(c)(5))–and does not require federal agencies to ask for reports. So whatever does get reported with regard to subject invention utilization becomes a state secret. Continue reading →

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Reflections on Shill Reflections on Bayh-Dole, 1: Intent and utilization

Posted on September 16, 2020 by Gerald Barnett

Rebecca Tapscott has posted an article at IP Watchdog, “Industry Leaders Reflect on Bayh-Dole at 40.” There are lots of problems with this article–and with the “leaders'” “reflections” when it comes to Bayh-Dole. But hey, folks are entitled to mis-remember and to create fantasies that make them feel like experts. It’s just that the rest of us don’t have to be taken in. To put these reflections to good use, let’s reflect on them, and use that reflection to inspire us also to reflect on Bayh-Dole. We will all reflect together, like a thousand points of light. Or something.

Let’s start out by reflecting that the folks quoted in the article aren’t “industry” leaders. With the exception of Courtney Silverthorn from NIST–who works for what amounts to a lobbying arm of NIST–the rest all work for industry lobbying organizations. That is not likely to be what you think of when you think of “industry.” So we start with a fantasy headline. Lobbyists are the new industry leaders. Iron rings in cows’ noses give milk. A fine reflection. Okay, then.

Continue reading →

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University Patent Policy for Effective Technology Transfer, 2: Non-exclusive, voluntary, negotiated practice for effective technology transfer

Posted on September 10, 2020 by Gerald Barnett

We will get into the operational details of non-exclusive, voluntary, negotiated university IP management for effective technology transfer. Short answer–everything is navigable and has already been done, even if folks have forgotten how to do it. We can look at what technology transfer is. We can fuss over the silly nonsense of that patent monopoly meme. We can wallow in Bayh-Dole compliance nonsense. We can show how things work in practice down to forms of agreement and network dynamics. But for now, here’s an overview.

Are you a vice president of research at a university? Do you want to make a lot of money from new sources of revenue? And you want good publicity? And you want to grow your research programs? And you want your faculty to stop bitching about IP and return to bitching about IT or parking, if there’s ever any need again for parking? Then adopt a patent practice directed at effective technology transfer, not at harvesting patent rights to shop exclusively to speculative investors and companies willing to take what’s on exclusive offer. You can do it now. It is easy to come in from the cold.

The appropriate purpose of university IP policy is to protect those involved in research from the claims of the institution. Think of IP policy as a bill of inventor and author and public rights, relative to claims that the institution might otherwise make. This bill of rights thing is a good model that has been used elsewhere. Follow it here, as well.

I have sketched an outline of a university patent policy for effective university technology transfer. Core elements: no exclusive licensing, no compulsory institutional ownership, no pre-set royalty schedule. These elements are directly aligned against most present university patent policies. What? No exclusive licensing? Yup, none of it. But these elements are strongly aligned with effective technology transfer. They are also aligned with the core of university research policy–especially the parts that assure faculty of freedom of research and publication. These elements then are strongly aligned with academic values and public expectations. Continue reading →

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University Patent Policy for Effective Technology Transfer, 1: Outline

Posted on September 8, 2020 by Gerald Barnett

Universities have never had patent policies centered on technology transfer. Not back when, not now. It should come as no surprise that universities don’t track technology transfer and don’t report their outcomes. What would a university technology transfer IP policy and practice look like? Let’s work the problem. From there, we can look at metrics. First, an outline. Maybe I will find the time to fill it out, piece by piece.

1. Current university patent policies are a mash up of past policies, following a line of administrative “reasoning” that historically has run counter to technology transfer practices. In short: keep patents out of the university; then, review patents and take a financial interest; then, take a patent ownership interest and bring licensing in-house for a better financial position; then require university ownership of all university-hosted IP for a better financial position; then federal law requires university ownership and commercialization. Oh, no? Oh well, compulsory institutional ownership is a good idea anyway, even if federal law doesn’t require it. That’s where we are. Doesn’t sound much like technology transfer. Research Corporation introduced “technology transfer” to refer to a university’s campus operations to identify inventions and prepare disclosures for submission to Research Corporation for possible management. The transfer was patent rights from a campus inventor to Research Corporation. The technology moved from inventors to companies, if and when Research Corporation arranged a license. Continue reading →

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The Wall Street Journal publishes an editorial against using Bayh-Dole march-in for remdesivir

Posted on September 4, 2020 by Gerald Barnett

Sally Pipes has published an op/ed piece at the Wall Street Journal on Bayh-Dole and Gilead, “The Remdesivir Patent Isn’t State Property.” There is so much going on with Pipes’s work. We should take a closer look.

First, the title of the article states a straw man. No one argues that redesivir patents are “state property.” So let’s not bark up that tree with Ms. Pipes. The shape of the article is to undermine the state AGs that have asked the federal government to march-in on redesivir using Bayh-Dole. For that, Pipes argues that:

1) Bayh-Dole has been wildly successful [hasn’t]

2) redesivir is not within scope of Bayh-Dole [is, but in a weird way]

3) march-in isn’t allowed for price [is]

4) Gilead can supply all the drug that’s needed [isn’t, but not relevant–see price].

And more–Pipes’s whole argument is not relevant. Gawd. Do we really have to do this? Okay. Here goes. Continue reading →

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Bayh-Dole’s repeal is more worser Bayh-Dole

Posted on August 31, 2020 by Gerald Barnett

I’ve worked this idea before, but I will try again.

What happens if Bayh-Dole is repealed?

First, things fall back to EO 12591, which stipulates that the heads of federal departments and agencies shall, among other things (1)(b)(4):

promote the commercialization, in accord with my Memorandum tot he Heads of Executive Departments and Agencies of February 18, 1983, of patentable results of federally funded research by granting to all contractors, regardless of size, the title to patents made in whole or in part with Federal funds, in exchange for royalty-free use by or on behalf of the government;

And that is worse than Bayh-Dole. The EO focuses on commercialization rather than utilization. The EO is narrower–restricted to research only. The EO grants title to patents rather than the right to retain title to inventions acquired. The EO limits public protections to a royalty-free use, and use rather than practice and have practiced. Continue reading →

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AUTM weighs in on march-in for remdesivir

Posted on August 27, 2020 by Gerald Barnett

AUTM has issued a statement on march-in with respect to remdesivir. To date, AUTM has never supported march-in. This new statement is no exception. Howard Bremer, an AUTM founder back when AUTM was SUPA, worked on the implementing regulations for march-in and later bragged that he had to design them not to operate. So there’s no surprise that AUTM would not consider march-in during a public health crisis.

Let’s work through the AUTM statement. It’s political spin, so no shocked faces anywhere,

In 1980, Congress passed the Bayh-Dole Act —

So true!

the signature legislation that launched the technology transfer system

Not true at all! A university technology transfer “system” was already in place. The Bayh-Dole argument was that the law would place more inventions into that system rather than have those inventions move through federal agency open access or have university patent officials have to make a case that patent monopolies for specific inventions, especially in public health, would better serve the public interest. Continue reading →

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