I have been working through how Bayh-Dole operates to distribute patent rights arising in federally funded university and non-profit research. How things work aren’t so entirely obvious, but I’m finding folks have some deeply held beliefs about it. Things can get technical in a hurry. That I’m sure loses some folks, who would just as soon continue dealing as they always have. For these folks, any statement that removes the will to discuss is sufficient, regardless of the particular technique employed. That’s politics, of course.
If we turn toward looking at the law, and how things work, or appear to work, or could work, what do we find? That’s a different deal. That’s what I’m trying to get at. What’s the point of the effort? To open up ways to advance research assets to community practice–discovery, invention, insight, tools, data, expertise–to use, development, standards, products, and services, commercial or otherwise. To extend and improve practice by laying out how things can be done to involve the people that matter. Matthew Stewart, in The Management Myth, quotes Mary Parker Follett to the effect that management is the “art of getting things done through people”. Andrew Hargadon, in How Breakthroughs Happen, emphasizes the role of an active social network in moving an idea or invention into commerce.
A couple of citations about management doesn’t make a case, of course. My sense, however, is that research originated inventions, especially, often carry a bunch of tacit knowledge–expertise embedded in a research team, in particulars of research set ups and lines of reasoning, and the abstraction of this to “invention” and from there to “patent claims” breaks up this context of tacit knowledge. In its place stands a patent right with ownership markings and an opportunity to exclude others–something one would expect is precisely the opposite of what scientific or university instructional norms might suggest. But more: the patent stands as something on its own, a line in the sand. Doing anything with the underlying technology, ideas, insights still requires people with those capabilities. Doing things with the patent–licensing, threatening, doing business deals–that can go on apace using the capabilities of professionals who know how to handle the instrument, parry it, and trade on it.
In this, the “valley of death” is another way of saying, “we stripped off all the living direction from this research event and now have this rock of a patent that some investor is going to have to put up money to develop a product or company worth the risk.” Valley of death means: fear the evil of ownership of a right stripped of expertise.
This split between tacit knowledge of potential technology and the tacit knowledge of patents, contracts, and business threats and opportunities is what is at stake in creating ownership positions around research events and removing the assets from the lab for disposition. Either one brings critical chunks of the lab along, or there is a lot of challenge in keeping the patent work on track as a technology instrument, rather than as a financial and legal one.
Oh, yes, a patent is certainly a legal instrument to be used for financial or business purposes, but if we look at Bayh-Dole, we can see that the purpose is to use the patent system to promote the utilization of federally supported inventions. It’s a stretch to say that Bayh-Dole permits one to ignore the use of technology so long as the university makes money over the patent right. It’s a stretch to say that the purpose of Bayh-Dole is to give universities a source of income at the expense of investors and industry, in some predatory or parasitic way. It’s a stretch to say that Bayh-Dole intends universities to go directly at money-making, any way they can with patent rights, as if their own uses for licensing income must far outweigh the use of the inventions made with federal funds. That is, the use of the patent (in this way of thinking) is to make money. The use of the invention is to benefit the community. It’s all too easy to conflate these. The odd part is, who cares?
In other words, to get at the interface of research assets and community, one might do well to start by focusing on “getting things done through people” who have capability with those assets, and involving the patent-side, business-side, contract-side, threat and thrive folks as part of a network, not the anchor-owner-starting point for a money proposition.
It’s not that ownership doesn’t matter, or that patents are bad, or that university IP offices do a bad job, or that Bayh-Dole doesn’t provide a means by which universities can claim ownership. It’s just that effective research to community invention practice doesn’t require any of these things, and where it does benefit from patent practice, the distinctive mandate for universities managing inventions is that they promote the use of the inventions, using patents. The other stuff–making money, developing products, starting companies–arise out of promoting use. That’s the societal nut B-D asks universities to focus on. In addition to the money bit from licensing, universities also should be looking to create standards, build new platforms, and get technical folks excited rather than weighed down with restrictions, contracts, and huge money thoughts.
All this no doubt sounds impossibly fluffy to folks who have dedicated their efforts to generating patent licensing income as the primary measure of their success. My point is that licensing income is not a metric of success under Bayh-Dole, though it is anticipated that there will be licensing income. The success happens with use promoted by the patent system–use that provides benefit to the public, that supports American manufacturing jobs, that helps small businesses, and develops university-industry relationships. It’s easy enough not to care about these things and just accumulate patents to deal in. I expect most university administrators don’t care at all about these things. They show little understanding of these things, and don’t have time to, and so long as they aren’t fired for their lack of care, they have no intention to care. They don’t report these things in their annual reports as metrics, though some show up as accidental anecdotes.
They care about the money. They care about status. They care about “success”. They don’t particularly care how they get there. They don’t care how Bayh-Dole operates or what it says, beyond: “we own patents to research inventions and make money through licensing.”
It’s a shortcut. It’s a cut to the chase. Being thoughtful about research interests is idealistic overhead. Being technical about Bayh-Dole is purely academic, or worse, obstructionist. Being focused on low-value things like “platforms” instead of high-risk, high return things like “the next Google” or “a deal like Emory’s” is a waste of resources. Poof.
In working with Bayh-Dole, that’s the condition we face on the politics. Is the law about enhancing social impact arising from the federal investment in university research as represented by a particular class of output–the patentable invention? Or is it about making money off patents any way one can? We can guess what university folk believe, and here it may be as true for a lot of university inventors as for administrators. The fight over ownership under Bayh-Dole between university inventors and administrators clearly is not positioned about who might serve as a better steward of inventions on behalf of an interested public. It’s about who gets to the money trough. For that, there’s no amount of legislation that will get it right. May as well pass a law to try to prevent terriers from digging. If there’s going to ever be a focus by universities on the interface between their federally sponsored research and community over inventions, it will come because folks decide to do this, recognize the value of doing this, and choose to deploy patent rights to encourage this.
That’s the reason for going after the ownership issue under Bayh-Dole. To show the stewardship nature of ownership. To show the objectives asked of the steward-owners. To ask for accountability relative to those objectives. To develop out new practice that adapts the patent system to emerging community, and industry, and investor, and research needs. We won’t get there focused on licensing patents for the money. We won’t get there assuming Bayh-Dole is just a corporate ownership ticket to troll.