End the disaster of university patenting for exclusive licensing

While there is a place for exclusive patent licensing (but why not just assign?), the university screws over its public mission by involving itself in exclusive deals. Just because those deals aren’t obvious to the public unless they make big money for the university and it brags it up doesn’t mean that the deals are healthy for the university. My observation goes further–merely the attempt to do exclusive deals, merely leaving the lingering expectation that a university might attempt to do an exclusive deal, is damaging to a university’s public role, to the public’s sense that a university is doing what it ought.

And that damage–from the expectation a university might deal a patent exclusively, might try to make money on the value of suppressing use, suppressing improvements, suppressing applications, might set up some single company to troll industry, to set up that company to sue on behalf of the university, to shake down those that would otherwise benefit from access to the invention–that damage runs through all the inventions that the university holds.

The damage takes the form of lost relationships, lost goodwill, lost gifting and sponsored research income, a stench of public betrayal and betrayal of university claims to ethical practice, disruption of industries rather than service to those industries, withering of rainmakracketeering using patents, ineffective technology transfer, and perhaps worser of all, motivating companies that do not expect or want an exclusive license to design around university inventions, or avoid those inventions, to exclude those inventions from industry roadmaps, to delay adoption. And those behaviors render university research and billions of federal research dollars (treated as pork) irrelevant, useless–at least until the patents lapse.

Institutions never apologize. Universities say technology transfer is hard, but they don’t bother to consider how their own stupid policies (no, really, I’ve read hundreds of those policies–most of them are stupidly written, just mind bendingly stupid–and they are so stupid, Dunning-Kruger style, that they can’t even see it) and the stupid ineffective practices they use following those policies (policies may expect money-making from licensing, but I haven’t seen a policy yet that fixes the default position to be exclusive licensing even though that is, everywhere, the default university practice).  Yes, their stupid choices for policy and practice make technology transfer all that much more difficult. But to a bureaucracy that’s dumb, life getting harder means better pay, bigger budgets (to comply!), more empire, more status. If technology transfer appeared easy, why then you wouldn’t need to spend a few million a year on staffing the office.

My argument is that if you got rid of your patent and invention policy altogether, then you could cut your technology transfer budget by over half, run the office as a voluntary service if anyone still wants it (there are reasons to have folks who can help with IP when it makes sense for the university to serve as curator or escrow or aggregator for a commons or consortium). Continue reading

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Stop being Moloch

Here is a short form of the argument that nothing is a better way than the approach to technology transfer, IP, licensing that universities have at present.

The present approach universities take to IP management/technology transfer does not work, has not worked.

The approach is wasteful, ineffective, damaging, even corrupt. It’s not working. It’s very. bad.

Despite what you read, the whole effort has been a huge clusterfuck of misrepresentations, bungling, pettiness, and half-truth reporting. Big picture, over the past forty-odd years, universities (and their research foundations) have obtained around 150,000 U.S, patents on maybe 300,000 inventions reported (and many more claimed). They are presently patenting away at about 7,000 U.S. patents per year. If obtaining a patent costs say in round numbers $10,000 then we are talking about a spend of $1.5 billion spend over the past forty years just on patenting. And that does not count maintenance fees, or all the failed patent applications, or the foreign filings. So let’s say a big nice round $2B. What have we got for that $2B spend–and what of that would we have got anyway?

Pretty much nothing. Most of these patents have not been licensed, and of those relatively few that have, most have not resulted in “practical application.” The University of California once estimated that only 1 in 2,000 inventions in their program achieved commercial use. Stanford a decade ago reported only 53 of 6,400 inventions over a span of 36 years earned sufficient income to be considered even modestly commercially significant.  And those are top programs. Not much has changed. It’s still a bad approach.

On any measure–technology transferred, practical application, making money for university research and instruction, economic development–the university approach to IP simply stinks. Continue reading

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Dubilier, university IP policy and, er, inner life

Dubilier set in motion a cascade of things that leads us to, well, to where we are. In Dubilier, the Supreme Court established that inventors own their inventions unless they agree otherwise, even if they are employees, and even if they use their employer’s resources, and even if they work on their invention when they are supposed to be working for their employer. The employer’s compensation is the shop right to practice the inventions made by employees, if the invention is at all useful to the employer. If an employee is hired to invent, or to conduct experiments that might lead to an invention, then a promise to assign title to any inventions is implied in the employment relationship, called “equitable title” by the courts. Thus, the defaults confirmed by Dubilier, and the two concepts–shop right and equitable title–that have been developed to deal with Dubilier.

In the absence of an inventor agreeing otherwise, then, inventors own their inventions and the shop right means inventor employees leave their employers alone when it comes to patents. Continue reading

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Contemptuous Invention Claims

Let’s start with the Dubilier decision. In 1933, the U.S. Supreme Court determined that two federal employees, working within the area of expertise for which they were employed, using the employer’s time and resources, still owned the inventions they made in that work. The federal government did not obtain ownership of the inventions as a consequence of employing these two workers, not even if they used the government’s resources and time while working on their invention. The government did not even have a right to obtain ownership. This decision has had lasting consequences. In a way, the present university IP policies are a debased sort of response to Dubilier.

In 2011,  in Stanford v Roche, the Supreme Court reaffirmed the core tenets of Dubilier:

Our precedents confirm the general rule that rights in an invention belong to the inventor. See, e.g., Gayler v. Wilder, 10 How. 477, 493 (1851) (“the discoverer of a new and useful improvement is vested by law with an inchoate right to its exclusive use, which he may perfect and make absolute by proceeding in the manner which the law requires”);  Solomons v. United States137 U. S. 342, 346 (1890) (“whatever invention [an inventor] may thus conceive and perfect is his individual property”); United States v. Dubilier Condenser Corp.289 U. S. 178, 188 (1933) (an inventor owns “the product of [his] original thought”). The treatises are to the same effect. See, e.g., 8 Chisum on Patents §22.01, p. 22–2 (2011) (“The presumptive owner of the property right in a patentable invention is the single human inventor”).

Under the Dubilier reasoning, it is not somehow “fair” for an employer to own inventions made by employees. Whether the ownership claim is based on employment, or on use of resources, or use of employer’s time, or even if what’s invented is something that the employer wants. Another way: It is not fair. It is not equitable.

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Better than drinking oneself silly

In my last article, I argued that “the better way is no way.” Sounds sort of zen-like, no? That is, universities would do a better job of technology transfer if they started by getting out of the claim-everything-own-everything-patent-everything-try-to-license-exclusively-or-not-at-all-for-one-big-hit-in-2000-inventions business. Or, another way, people did a better job transferring technology before universities got in the way to “manage” things through policy and ownership, seeking money. There are roles for universities in technology transfer, but grasping and owning and holding stuff behind paywalls defaulting to exclusive licenses that rarely happen just isn’t one of them.

The challenge put to me by one vice chancellor for research was to come up with a better system of university management–that is, a better way of working the problem created by the university blunderingly demanding to own everything. You know–if lots of alcohol isn’t good for me, find me something better to drink that has the same effects. Won’t accept just not drinking something intoxicating.

As for these other university roles, consider:

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The better way is no way: background rights, royalty stacking, and double licensing arising from university IP claims

Let’s start blunt. Then extended discussion. Snark as needed.

Current university IP policies create a background rights problem that drives away collaborators, makes university-based inventions irrelevant, and makes university dealings with IP default to unreliable.

One of the dark problems with a university claiming to own all faculty, student, and staff inventions has to do with what’s called “background rights.” A background right is a claim on anything (IP or otherwise) that is needed to practice under a foreground right. Examples, a university may have two patents, one broad and one narrow operating within the claims of the broad patent–an improvement, an application, an alternative method. One might get a license to the narrow patent–but one would also need a license to the broad patent to have freedom to practice with regard to the licensor. As you can see, it makes no sense to take a license to the narrow patent and not be assured of access to the broad patent.

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More on Feynman’s Patents

Back in 2013, I wrote a stubby post to create a link to audio of an interview with physicist Richard P. Feynman, in which he describes how he came to be named as inventor on U.S. patents. Since that post is getting a number of readers recently, I thought to take a look at it, and as seems usual, I found some comments forming. So here goes.

First, another link to the interview, posted by Muon Ray on YouTube. Feynman tells the story in Surely You’re Joking, Mr. Feynman! in the chapter titled “I Want My Dollar!” (pp. 162-65) in my Norton paperback edition.

Short version: Feynman is working at Los Alamos during WW2 when he gets a note from the lab’s government patent officer, a Captain Smith, asking for inventions involving nuclear energy, to be patented by the US Government. Feynman later meets Smith at lunch and tells him that his note was “kind of crazy” to ask the scientists for *every* idea–“There are so many ideas about nuclear energy that are so perfectly obvious, that I’d be here all day telling you stuff.” Smith responds with–“Like What?” Feynman rattles off nuclear powered submarine, airplane, rocket, and amped up nuclear reactor as an electrical power station, and, as he was leaving, says there are “a million ideas.”

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Espresso Granola

Okay. I have been making granola for dunno over five years. Here’s my once uber-non-public recipe. Combine the Goop Mess and Espresso with the Dry Mix. Bake, stir, and cool. Easy. Expectable IP comment to follow.

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Why I stepped away, and why I am back

I’ve been asked where I’ve been for the past year, and to brief about it, I decided to step away from writing and focus on other things, such as working with companies. I also felt that I had had enough dealing with Bayh-Dole and its rambunctious, logic and history challenged advocates, who seem to have a never-ending budget to cock up even more stupid positions, such as coming out against using the public protections built into Bayh-Dole to lower the prices charged for drugs based on federally supported inventions by introducing competition from the get-go. I’ve documented their failures sufficiently that it just gets stoopidifying to stay at it. Anyway, the step away became weeks, and weeks became months.

And months have brought a new sense of perspective, and a sense that there are still things worth writing out, and worth making an argument for (or against). And maybe that serves some purpose in the big wide world. Continue reading

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Thorin’s Deal

For the past few months, I’ve been memorizing The Hobbit as part of a project of mine to have a look at how (my) memory works. So far I’m towards the end of Chapter 2. The poetry is the hardest to work with, with some remarkably lame lines–“the fire was red, it flaming spread.” Maybe that’s a Tolkein commentary on dwarf song-writing ability. But onward. The Hobbit is a story about a contract between a company of dwarves and a small foot-furry human-like creature that lives in a very comfortable hole in the ground built by his father.

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