It has been a wild two weeks since I raised some points with regard to university patent practice under the Bayh-Dole Act. There is much to develop, but I can’t do it all in a single post. So it will come in parts. Here is a starting question: why has university practice under Bayh-Dole been so uniform? That is, why do so many universities claim ownership of patent rights in federally supported inventions rather than use any of the alternatives provided for–even anticipated–in the law?
Related to this question is another: what are effective strategies for helping communities gain the benefit of discoveries and inventions made in the course of federally supported research?
Both of these questions take a run at diversity of practice. One may think that universities in different locations, with different research expertise, variations in IP expertise and emphasis, and different surrounding communities, investors, and industries, might take different approaches to inventions and patents. Or that different industries might have different needs for research outputs, have different sorts of value chains in which those outputs figure, and take up new stuff at different points, for different reasons, with different transactions. It’s not a given, of course, but the gesture is, diversity of practice adapted as needed to potentially wildly different situations.
What I am wondering is: why is diversity not the default? Why is it nearly non-existent in university “technology transfer”? Why does everything look the same with regard to ownership under Bayh-Dole, even in universities where the practice differs–from a big emphasis on industry research to a conventional license a lot of stuff to a start-up intensive program?
In asking these questions, I’m looking for different sorts of answers. Some will track history. Folks made these assumptions, drafted these documents, and others liked the look and took advantage of the work effort and did something similar. Maybe that’s the deal. Some others will track rationales. This kind of program made a lot of money licensing this way, or that program got into trouble and we should avoid their problems, or faculty here want it this way. Fine, those are reasons that ought to count for something. And there may be answers in something more abstract, even bureaucratic, such as that when faced with competing interests, rather than attempting to meet those competitors with multiple gestures, instead seeking to harmonize bits and pieces of these interests into a single program that has defects associated with most but meets the needs of a few quite well. That is, compromise for administrative simplicity rather than deploy in challenging ways to address directly disparate interests. That would make sense, though it may not satisfy.
In all of this, I have been struck by how quickly technology transfer folks in the US turn defensive. In some conversations, I have not been able to even lay out the case for diverse practice without folks working in overdrive to prevent the topic from even surfacing. There’s generally not: we are always looking to expand our range of tools. Not: wow, how would that work and do you think we could use it? Not: it would be worth knowing how to do that so we wouldn’t have to learn it when we really needed it. It’s mostly the other way: There is no data for that. That’s never been done. We’re doing really well. Why are you making things more difficult? Are you suggesting we’re not doing our best? Or: I don’t believe you. Prove it. And: inventors don’t know much at all about commercialization.
I’m sure there’s life in all of this. I just don’t see why we have 200 university tech transfer offices as the result of Bayh-Dole, instead of, say, 50 specialized, diversely located invention management shops focused on key areas of community, investment, and industry practice. Or, a mix of all sorts of practice, with some schools waiving all rights and others working with incubators and proof of concept centers, and yet others working in what are now regarded as conventional licensing offices. Bayh-Dole permits alternative realities. It just hasn’t happened. Why?