“Finding 6. …. In fact, successful
commercialization often depends on active inventor engagement, and,
in some cases, their playing a lead role.”
In fact? Or, “by way of a lazy assertion”? The AUTM-spawned confusion over the nature of agency and inventor role persists in the report. Bayh-Dole is a law of patent agency. First, the university is allowed to act as an agent on behalf of the public, if it chooses to take on this role. Circular A-110 makes clear federal policy–the university acts in trust with regard to intangible assets on behalf of the beneficiaries of the grant.
Second, Bayh-Dole permits the university to designate agents. The university may subcontract and pass the Bayh-Dole obligations to others when they invent. The university may assign its Bayh-Dole interest in inventions to any company that has a primary function in managing inventions–sure, an affiliated research foundation as a dutiful liability screen–but also any company–like an industry partner, say.
Third, Bayh-Dole doesn’t say that bureaucrats should make all the decisions about a subject invention. The university personnel designated for patent matters could be deans, or department chairs, or principal investigators–it is their grant proposals, after all, and their hiring, and their future work. For all that, the university personnel could be company folks in a consortium representing industry interests in university patent positions. And of course, the inventors could be designated to make decisions on behalf of the university (rather than be isolated with the presumption they only look out for themselves, or that in looking out for themselves they aren’t somehow performing an important service. After all, if the university can equate licensing income with public service, what is different about a research inventor doing that?)
I know, there’s no persuasive evidence for any of this. It’s like Bayh-Dole didn’t have to be written with all that flexibility. Why give us a flexible law when university administrators *don’t want it* and now they’ve got a NRC report that agrees with them.
Fourth, Bayh-Dole does *not* require “successful commercialization.” That is fabrication. Bayh-Dole is about practical application, collaboration, manufacturing jobs, small business support. That’s what the law says it is about. Oh, I know it is secretly about whatever the AUTMites want it to be about, like making money with monopolists. But commercialization gets a mention while practical application gets a full definition and is repeated throughout the law.
In some twisted way, I suppose practical application can secretly mean exclusively license to induce a company to make a product that makes a pile of money and some of it comes back to the university and the work of technology transfer personnel is to get more money out of the company than it would have paid without the work of these people.
But that’s just twisted. I don’t see why Bayh-Dole has to state one thing but be secretly about something else. That is quite a finding, but why not trot that out–Bayh-Dole has been co-opted by a commercialization fixation and a really narrow, ineffectual one at that, and this single-minded practice undermines other roles a university might play with its patent rights, such as participating in standards, creating open systems, cross-licensing to obtain access to technology on behalf a research or practice community.
There is no way that an inventor can play the lead role, unless the inventor has control, at times, over his or her inventions. How often is “at times”? How does anyone know when these times are? What would be a good mix? Do you think the report will have answers to such questions, and draw those answers to how policies could change to introduce a broader range of agents, greater roles for inventors and others, and a broader range of outcomes, not just money-making through “commercialization”?
The report writers cannot imagine any other well implemented approach. They only present arguments for a lousy implementation, and then they argue that those are indeed lousy arguments. But stating lousy arguments for implementation, and then dismissing those arguments, does not get one done with the issue. Is this a deliberate thing, to preserve the status quo? Or are these writers incapable of imagining any other approach with sufficient substance to make a real case? Say, the Canadian approach, taken by a number of schools, that allows inventors to take the lead.
And in all of this, no one seems to give a rat’s ass about principal investigators. It’s bureaucrats or inventors, and who can make more money. What a dull dichotomy. What a dull purpose for high points of university research.