Here is a university article from April, before the Supreme Court decision. I was hoping that the correction appended would have to do with errors having to do with Bayh-Dole, but no, it was not to be. Thus, I’ve supplied a few points, fwiw.
Correction appended.
As the Supreme Court examines an invention-ownership dispute between Stanford University and Roche Molecular Systems, Brown is tightening its own regulations. Under federal law, universities currently own faculty inventions. But while some faculty members stand with administrators in support of University ownership, others are skeptical of the system.
Last April, the University co-signed a brief siding with Stanford in support of university ownership of faculty inventions.
Now let’s see. What could be wrong with the above statement? Could it be that federal law–meaning Bayh-Dole–does not provide universities with ownership of faculty inventions? Does not require university ownership? Does not mandate university ownership?
It is not just that the article gets it wrong about federal law–it certainly is not alone in making this mistake, since a whole lot of technology transfer “experts” got it wrong, too, and appear to be very happy about which side of history they are on. Rather, it is that the article reflects this common rationalization in the technology transfer community. Somehow Bayh-Dole has been construed as a federal entitlement, taking faculty inventions and handing them to the university. And this is seen as a good thing–the part, perhaps, that made the law “inspired”, at least as far as many administrators are concerned.
The article goes on:
The case, Stanford v. Roche, challenges the current federal standards regarding invention ownership, which is granted in full to universities under the 1980 Bayh-Dole Act.
This must be the reading that “elect to retain title” really means “has title already by operation of law.”
The article then divides up amicus briefs according to whether they side with Stanford or with Roche. This is very strange, as if the debate was about whether Stanford or Roche should “win.” The actual debate was over whether federal law strips university inventors of their rights, something that the AIPLA brief addressed very well, siding with no one. Stanford “winning” the case meant all federally funded university inventors lose their rights. Roche “winning” meant that Bayh-Dole does not take inventors’ rights. The university was arguing against what makes universities attractive for federal funding–the independence of expert investigators with access to institutional-scale resources. The big company was arguing in favor of inventors holding ownership and conveying that ownership by private agreement.
In essence, the university position was that all inventions must pass through a bureaucracy, and the lesson we are supposed to learn is, if they don’t, then the bureaucracy can’t sue industry for a piece of the industry action, and this, in turn, is supposed to be very bad for innovation.
Further:
In response to the court case, Brown and other universities have “tightened up” the language in their invention disclosure documents to avoid similar disputes, said Katherine Gordon, managing director of the Technology Ventures Office. The office now ensures that researchers assign rights to the University when they first disclose their inventions.
Of course, the dispute arose because Stanford allowed a researcher to spend nine months at a company learning its proprietary technology. “Tightening up” the policy language by requiring an assignment upon disclosure does not address the problem in Stanford v. Roche. To “tighten up” that, the university would have to prohibit consulting agreements with assignment requirements, or prohibit folks with such consulting agreements from participating in university research, where they might invent to someone else’s advantage. And of course, “tightening up” here is bureaucratic speak for “radically changing.”
Even when confronted by the fact that requiring assignment upon disclosure would not address the problem, folks appear ready to persist in the tightening anyway. It is as if the tightening is desired, and folks are looking for an excuse.
Here’s the reasoning, as reported:
“A system that assigned ownership to faculty members could be problematic, Gordon said. ‘It would basically go back to the Wild West of the way things used to be — there’d be very little things that get commercialized,” Gordon said. She said granting ownership to faculty would not be fair to those with less money, and as a result, “the University’s technologies as a whole would not be very well-served.”
The way things used to be was that faculty inventors created the whole idea of using patents to promote technology transfer, starting with Research Corporation and WARF. In that Wild West, they created inventions of all sorts that had commercial success. They even created the internet.
The fairness argument leaves me bewildered. Let’s see: it would not be fair to those who could not afford to pay the costs of patenting if others could and did, so we will therefore take ownership of inventions made by those who could pay, or could attract partners who could. That is: Because crappy stuff made by economically poor faculty would not find investors, the university has to take ownership of everything. This is a strange usage of “fair.” Apparently those without access to funding could not voluntarily choose to assign to the university (or some other agent). No, they would give up hope and not do anything, and without patents, nothing would be commercialized. What is the fallacy of making a dichotomy in which one prong is terrible and this proves the other prong must be right?
This really isn’t a deep, technical problem with logical reasoning. It is almost like this is a belief system, an aspirational rhetoric, an expression of how life is good now and before it was less good.
But there is some hope:
But Justin Fallon, professor of medical science, said his ideal system would be one in which faculty members were given the choice about assigning rights to the University or retaining ownership.
Go, Justin!
Now, if we could only match the Justins up with a university willing to go back to the Wild West, we would see how innovation might fare if faculty investigators have a choice with their inventions, just as they do with their publications. I expect industry, investors, and local governments would like the results.