The Chronicle of Higher Education published a note about Stanford v. Roche in June. It repeats the mantra given out by law firms regarding the decision: “The ruling was also a warning to universities to carefully check the language and grammar of the contracts they sign with researchers.”
The mantra is mistaken and damaging. Stanford v Roche is not about paperwork details. How does anyone get to that? A paperwork change wouldn’t have made a lick of difference in the Cetus situation. It does make a world of difference, however, in the effect university bureaucracy has on research activity. There, it is a sea change, and not one for the better. Stanford v. Roche was not about the manner by which an assignment was made, but the change in scope of claim that a university can make, and in particular, the change in scope that comes with a federal funding agreement. The Supreme Court found that the Cetus assignment prevailed over a later attempt to obtain an assignment. It had to regardless of whether that prior deal had been a promise to assign or a present assignment of an expectant interest, because the work at Cetus was *not an expectant interest* for Stanford. It was out of scope. It was still out of scope when the researcher came back to Stanford. But the Cetus deal was *not* out of scope for Cetus when the researcher came back to the university, because the conditions on that scope included any inventions arising from the work at Cetus, without regard to where that work might take place. It was still out of scope when Stanford researchers used federal funding to work on it.
One has to see that the deal with Cetus has to include anything arising from the work done at Cetus. That is absolutely central to the relationship. Otherwise, it amounts to “learn everything you can from us, report nothing to us, walk out the door, and then invent from what you learned, and we get nothing because you are so friggin’ clever.” So, no. The “arising from” language is critical to the relationship.
One might want to take a public availability of tools approach to all this and argue that Cetus should have let things go, for the greater good. On the same argument, however, then, so should have Stanford! Cetus puts in the present assignment and “arising from” language because someone there didn’t trust folks like those at Stanford. Apparently, whoever that someone was, they were right.
It appears a lot of universities are going to revise their IP policies after Stanford v. Roche. They are going to add present assignment language. They are going to strengthen their ownership claims. They may even restrict faculty consulting. They will increase the oversight, the penalties, the paperwork. None of it is based, rationally, on the lessons in Stanford v. Roche. Yet they are using Stanford v. Roche as the excuse to do this. Just like the bozonet, to get it wrong repeatedly, and then make a virtue of consistency. It’s where the idea of peer review stumbles horribly!
We are seeing a movement to central control in one of the greatest experiments in open innovation–that of American university research. It is now coming to an end. The bureaucrats are closing it down. The rationale they give is simply wrong. But they don’t care. It is about control and making money, not freedom and creating opportunity.
This will be very bad for research, for collaboration, for innovation.