I’ve been working recently on “research chattels”. These are things created in the course of research that are tangible in some way, and so not real property, but also are not simply the intellectual property. I’ve done some work developing concepts of NIPIA related to research–the non-IP intangible assets. So it makes sense to look at the tangible assets.
Typically tangible assets end up looking like something out of a patent handbook, but lacking something. So, for instance, a chattel could be the best mode of practicing an invention, as might be a circuit board or a cell line. Or, it may be just like an invention, except not patentable (which sort of makes it not an invention, really, for policy purposes, but then again, for policy purposes, it seems to work to treat it as an invention and then remove the key elements that make it inventive, like novelty or non-obviousness).
Generally, tangible stuff is handled by material transfer agreements. These are transfer instruments that make a contract out of a transfer activity. Typically, the contract makes the transfer a bailment–a kind of loan of the material so that possession changes but not the ownership. But bailment is also a kind of fiction, for in a conventional bailment, the recipient possesses the chattel but does not have the free use of it. One might argue, a bailment for research purposes only entitles a recipient to inspect and analyze the material, but not to use it. Or, we might say in a fictional spirit, “use it only for research, which isn’t really a use at all, if by use we mean for production or commercial purposes.” Really, the idea of bailment exists in these transfers to get around gift and sale issues. How can a state university, anyway, gift things to private parties? Isn’t that just corruption? Abuse of state assets? All that. (Isn’t that kind of thinking just total crock? And yet we can’t get rid of it. Smells like bozonet spirit washing up with every tide!). Same is true for sales, leasing to questions of sales tax, unrelated business income, alienation of property, unfair competition with private industry, and on-sale patent bars, and first sale exhaustion of IP rights, if there are any.
There are good reasons to have some form of notice with the transfer of research materials, but they aren’t based in IP. That’s not to say there aren’t reasons given that are based in IP. But first the good reasons: notice of hazards, proper disposal, and allocation of risk. If there is going to be any formal elements to a transfer of research materials, these make sense. For the most part, these can be handled by notice, not by contract.
IP reasons are less useful. The typical one is based on patent rights. By transferring the material, a provider gives a recipient a better opportunity to study the material, think up inventive improvements and rush to the patent office ahead of the provider. So the provider tries to restrict the use–perhaps even requiring that the recipient not investigate the material but only use it, and then only in an agreed-upon research protocol. Typically also, the source wants data back, notice of any invention, and sometimes also a grant of license in any inventions made regarding the material or using the material. These kinds of requirements are called “reach through”. The need for such requirements points up a fundamental paranoia of advantage that populates thinking about transfer of materials. For research universities, it boils down to trying to preserve an exclusive licensing position. For that, it makes sense (in a weird kind of way) to put up barriers to use by others. Validation is fine. Use in limited research, also fine. But the rest is pretty much seen as competitive with one’s own interests. It wouldn’t be so bad as this, except a whole lot of materials transferred under MTAs have no IP rights attached to them. So all that reach through and paranoia and barrier and prudence is left over apparatus from the general idea that a research chattel ought to be treated as if it were an invention, even if it is not. An invention without essential inventiveness. When really, a material is transferred as a deposit, for reference, for validation, or as a tool. I point out only that whatever practice universities have, industry practice is even more paranoid.
But this is just by way of context. What is bothering me is how a research chattel comes to be owned, that is, becomes “property”. With ownership, we have four basic properties: possession, use, enjoyment, and freedom to alienate. (No, not the way tech transfer offices often do with MTAs–alienate as in ability to transfer to another). It’s easy with incoming raw materials that are purchased: reagents, parts, seeds, paint, whatnot. For these, the sale documents a transfer in ownership. But now what happens in a research setting?
Someone plants the seeds, and tomato plants grow. Someone mixes reagents and poof, there’s a precipitate. Someone uses the paint to paint an image. Does the property right that starts with the material extend to its transformation? Let’s say the folks doing the transformations are university faculty conducting research. Let’s say tomato plants are selected based on variations and crossed to produce new varieties. Does the ownership of the seeds spread throughout all the plants that descend from those seeds? Does ownership rise up from the ground on which seeds from descendants are sowed? Does ownership flow through the hands or paychecks of those who take care of the plants? If a farmer shows up at a university farm, and asks for seeds to try out, and an investigator hands some over, on whose authority is the investigator acting? If an investigator picks a tomato and eats a slice, is it okay if it’s to test the flavor or other property, but not if, say, she is hungry or wants to enjoy the flavor?
For these sorts of things, we have transformative chattels. The stuff that was purchased with university funds is transformed through the activities of research, and becomes some other thing. If it is inventive, we say there are patent rights and hold onto those. If it is original expression (a painting, a sculpture) then there is copyright. But if it is just useful in a transformed way, how does ownership come about in this changed research chattel? How does ownership jump and skip from seeds to a new hybrid? How does it slide into a circuit board or the output from a lathe?
In a corporate setting, this sort of question has an easier answer. The employment agreement, at least, can make an attempt at it. The employee agrees that all work effort is the company’s, not just inventions and expression, but anything at all. The catch-all premise is trade secret. Combine that with a non-compete clause for post-employment activities and forbid disclosure, and it’s pretty sealed up, except for some bits about the scope of claims to inventions.
But in a university, a lot of this doesn’t happen. Trade secret, in particular, is not so easily implemented. The whole idea around a university is that it is open–not in the sense that every thought is forced to be divulged, but rather, that the university as an institution does not seek to constrain information. We see this most clearly with copyright, where most universities do not assert ownership of copyright in scholarly expression, or “independent academic effort” as the University of California copyright policy puts it. Some folks get horribly mixed up about this, by the way, and think that faculty are working for hire because it’s within the scope of their employment to produce scholarly works. Such assertions miss both that employment in copyright is not identical to the meaning of employment for HR purposes, and that an employer and employee have the freedom to agree on what constitutes scope of employment for copyright purposes. For chattels, this matters as well. Despite using the resources of the university–labs to do research, computers to write reports, mailing services to send off manuscripts for review–the faculty generally own their copyrights, and they should. Why would the university want to decide what gets published and what suppressed?
Yet the lingering feeling one might suspect is that the reason there’s a question about research chattels–data, artifacts, prototypes, tools, developments–is that there’s a defect in the policies and employment contracts. That, from corporate experience, there are ways to “fix” things so the ownership question is settled. Unsettling, perhaps, if one believes that a distinctive value of university research is precisely that it does not adopt corporate style approaches to IP. Given the really horrible record of corporate management of IP for innovation, one wonders why anyone would go there. Perhaps the allure of order is stronger than the insight of innovation.
If one thinks in alternatives, then one might turn to personal ownership. The tomato plant, twenty generations along, is now the personal property of the investigator. The circuit board, assembled and tested out, personally owned for being assembled creatively. The image, as painted, is in its tangible form, personal. Going this route leads to the concern that all these apparently public materials become personal simply by having a research activity take place on them. It may be. It’s not a natural thing, anyway. It would be something we decided to say happens.
If a faculty member pulls paper from a university printer to make a grocery list for personal shopping after work, we might say, oh, that’s conversion or theft. But if the faculty member prints out a draft report on his research and sends it off to the publisher, the paper that it’s printed on goes away never to return. It’s not a bailment, not a sale, not a lease, not a gift. It is just the disappearance of the paper moving from the possession of the investigator to the possession of an editor at some journal. Same for a grant proposal to a foundation. The chattel changes hands. Not theft or conversion, even when the copyright in the work conveyed is personal. But if we are indiscriminate with this, we end up with the idea that research personnel are squatters permitted to take their gleanings, but that the are independent, even of their funding sources, their duties to the university, of the on-again-off-again social contract with the public about instruction and integrity and the community good at heart. It’s not as simple that everything becomes personal the moment a researcher touches it.
So here’s the thing. What if we have a normal environment here where research chattels are not owned as either corporate property or personal property? What if this is not an abnormal, poorly organized state of affairs, but rather one of the shining examples of commons at work? WIPO has developed the concept of “traditional knowledge” as a form of IP. TK does not have to follow statutory formalities. It may reside as IP in tribal practices, in social conditions, in the stories or weaving patterns that one family or line of artisans holds, and others do not. In a TK development, IP arises in a commons–and in some ways is deeply linked to the social fabric of that commons. It’s almost like IP as a fiction of IP, or IP’s imaginary part. A form of intangible asset that has the properties of IP but isn’t. Sort of how universities treat inventions that are not. This sort of TK is perfectly natural, it may be highly stable, but it is not necessarily formal, contractual, consistent (on some superficial basis), or statutory. We see these kinds of collisions when anthropologists collect artifacts (or designs on artifacts), or agriculturalists harvest native crops, or entomologists collect their entoms. Who owned these before collecting? To whom should decisions about circulation and use (and especially, but not necessarily most importantly, commercial use) be referred? To the artisans, the farmers, the elders? Perhaps.
In a research setting, who are the artisans, the elders? It may be that these are readily apparent, and are generally not the administrators that are designated to deploy delegations of authority and enter into contracts. Generally, we might expect that the stewards of TK are the investigators, and that they obtain possession of TK by virtue not of their employment or position, but by virtue of their leadership in the research commons that transforms raw materials supplied through the agency of the university into something new, just as they create expression in their report of findings. With the rise of Bayh-Dole (not B-D’s fault, by the way), universities claim ownership of inventions (and really, the patent rights in inventions). They do not need to do this (even under B-D) but generally that’s the case. The corporate claim settling in like a pallor over the TK commons of research.
This is where I’m coming to: that research chattels are creatures of a traditional knowledge commons presided over by investigators who by transforming raw materials into things of research purpose–artifact, tool, prototype, instance–they establish a proper authority over the things that result for all activities for which research is conducted. In this capacity, the investigators are the artisans and the elders. There is no administrative intervention that can add value by changing the ownership conditions, whether interposing a corporate claim or insisting on a personal claim. The ownership is tribal. It is the commons of research participants that sets those conditions, and it is up to the lead investigators to articulate the conditions as decisions and actions.
If this holds up, then universities should get out of the business of MTAs. At least, they should stop claiming to own research chattels, and stop trying to extend and improve corporate-style policies and contracts to bring order to what was already orderly. The imposition of corporate style order, or the assertion of personal claims–neither adds value to the performance of a research environment. Rather than seeking to impose IP and contractual restraints on research activities, a better, more challenging, and necessary activity is to seek how to extend the mores of research conventions into transactions that support community adoption and use, whether via open transactions, classroom mediate instruction, or various commercial and investment pathways, whether managed by governments, NGOs, or captains of industry and finance. If all this is so, then the policy we need is one that recognizes research commons, confirms the proper role of investigators as the stewards, if you wish, of research chattels, and that corporate and personal theories of ownership are simply inappropriate.