In the last post, I suggested a new reporting for subject inventions. Nothing like this presently exists. The ubiquitous university licensing survey aggregates information and therefore becomes useless for tracking subject inventions. And misleading. One might add, as a basic audit question based on this conflation of subject inventions with everything else, how universities are complying with the Bayh-Dole stipulation that royalties received by the contractor cover the expenses incidental to managing *subject inventions* and the remaining funds for scientific research or education. If royalty income is being used to manage *other inventions*, how compliant is that with Bayh-Dole?
Meanwhile, back to the new metrics. Much of the information becomes public anyway. Patent filing dates and issue dates. Patent marking for government rights. Even net income, for public universities, should be available via public disclosure law. The big problem is assembling this information. The patent record is fine, except it does not track whether a university has complied with the government rights legend. Sometimes this gets added later, so it does not show up on the face of the issued patent. Much better to have subject inventions identified up front, and then their progress through the sequence required by Bayh-Dole updated. That is, it is disorienting and unproductive for university information to be broken up and released piecemeal, or aggregated into categories that erase what is actually going on with any given subject invention.
In a sense, the new metrics creates an accrual system of accounting, spread over time, tracing each reported subject invention through from start to wherever things end up. This, in contrast to the present “cash” based system that lumps everything together in a single year in bins that don’t sort out whether the patent application filed today was for an invention reported this year, last year, or even the year before.
From such information we could start to see things such as the percentage of subject inventions claimed, the percentage of those for which patents issue, and further downstream, the percentage that result in net revenue. Those bits of information alone would say a bunch about the nature of subject invention management.
There are still ambiguities. How does one sort out an exclusive field of use from a general exclusive license? What does one do with a non-exclusive license done once (sometimes called a sole license)? What does one do with a non-exclusive plus a standstill that ends a chain of non-exclusive licenses? What happens if someone gets the light and offers a general public license for making and using–how does one know when someone has taken the offer on the other end? And how does one differentiate use in evaluation of an invention with a systematic use in operations? Lots of stuff still frothing on the surface, beyond the simple bits reported.
But this set of details avoids lots of troubles involved in writing reports of efforts. The marketing of a particular technology can involve luck, diligence, using standard methods, and personal referrals. It’s hard to say at any point just what is going on, beyond that patent applications have been filed. So leave those communications between the university and the agency.
However, one might also harken back to Stanford’s practice with Cohen-Boyer. There, they went to industry with the idea of filing the application, and when industry folks said, yes, you should file, they then kept the prosecution open, so everyone could see the progress. Posting the prosecution documents would make a huge difference for universities. Good patents not only would get through and bad ones weeded out, but industry could see the activity from the start and accept it or design to avoid it. Why would universities want to entrap industry, publishing neat academic articles that do not identify patent work, and then surfacing patents that were kept secret in prosecution?
Really, the most powerful thing universities could do to establish the importance of their portfolios to industry is to open up their patent prosecution records, make them public, at least for companies that want to see the activity. I would think that companies would be willing to pay more to see the prosecution record as it develops than they would for a resulting patent! Think about it–100 companies subscribing to the University of Washington patent prosecution record, at $5K a year. Now throw an opportunity on top of that to acquire a non-exclusive internal use right for any patent in the bunch, before it issues, for, say, $2oK. Reduce rates for small companies. Free for companies with a commercial license to any UW technology.
Dunno. Sounds better than accumulate in secret, then sue. And seems responsible, too, given the public mission universities claim for their research and technology transfer. If it’s so public-minded, then make the key records public all the way along.