Senator Maralyn Chase has introduced a bill in the Washington State senate that would prohibit public universities from making compulsory claims of ownership of intellectual property based on employment or use of facilities unless required by a sponsor of research.
The text of the law is available here.
The University of Washington and Washington State University are, in a reflex action, opposing the bill, though it is in their best interests. The bill is motivated by a recognition that it is time to free up the creative capabilities of faculty, staff, and students to get out into the community and develop their ideas. They cannot do this if they have to wait for bureaucrats (however specialized, however well-meaning) to decide what to do with their ideas. Nor can the community–industry included–wait for a patent attorney to muscle up 35 pages of technical text that pushes all the risk and financial obligation onto a poor “licensee” just so that someone can read a scholarly publication and expect to be able to practice what they learn there.
The standard university tech transfer mantra is no license without payment! no license without a commitment to sell product! no license without us seeing if there’s someone who wants it more than you do! oh, and did we mention the 35 pages of gotchyas?
The bill is also introduced in recognition of the University of Washington’s demand that all faculty wanting to work outside of their employment have to request permission even if they are not charging for their work, but in the view of the University they could have. And of course, the University’s Center for Commercialization (the form directs questions to the Commercialization office) has put into that form a free-standing present assignment not just to inventions made in the consulting that the university otherwise already has a claim to, but to all inventions, oh, and all copyrights and trademarks, and hey we’re on a roll, all um, “know-how”, yeah, and, and, any other kind of intellectual property that we are too thick to think of right now but whatever, “any other” should cover it well, since we’ve made it clear that “intellectual property” means a lot of things, and not just, you know, patents, copyrights, and trade secrets.
This reads, essentially, to mean, if you could make money on it, then it’s valuable to us. If we could make money on it, then it’s also valuable to us. That’s what we mean by “intellectual property.” Oh, and as a public service, if you can’t make money on it, and we can’t make money on it, but we think you are trying to cheat on us, we will take title to that too, just to make sure it stays truly worthless.
It is more than simply botched. It is malbotched. That is, badly done, with bad intent.
University of Washington faculty face the choice: seek prior written approval for contact with folks outside the university AND sign all your work and expertise away to the Center for Commercialization in advance (including whatever they want to pick at in your outside work, because what is outside anyway when you work for the Center for Commercialization?) OR face being charged with ethics violations for failing to report all your interactions and IP and expertise to the Center for Commercialization. Gotta love it if you are into state control of faculty activity. The nanny state gets an edge.
Reports from the field indicate that some faculty at least are refusing to collaborate with folks from the community for fear that UW will claim the community folks’ ideas if the UW faculty folks learn them (that “know how” assignment thing again). And they don’t want to sign all their rights away (and “know how” and whatever the “other” stuff is), just to answer a phone call or help a local engineer with an idea.
I honestly don’t understand why senior UW officials put up with being played for fools by the Center for Commercialization. Here’s this bomb in their lap thrown by the Center for Commercialization, claiming it’s required under Stanford v Roche, will deal with “title uncertainty”, isn’t a change in policy, and is like a really, really good thing that will be opposed only by the selfish, inept, gullible faculty who do not respect authority and have to be brought into line with there-there talks about how state control of innovation really is the first step toward a prosperous new society, even for proles. How does that become the winning line of reasoning? Who will come forward and say–“this is my idea, I think it’s a good one, and here’s why”? So far, it’s entirely faceless. We have no idea who is behind it, except that it’s pretty clear the Center for Commercialization is fine with it.
Having the public institutions claim ownership of everything against the wishes of scholars runs against academic freedom, raises legal questions–even Constitutional ones, creates “title uncertainty” (the very thing the patent adminocrats argued they most feared if Bayh-Dole wasn’t a vesting statute) for everyone, and creates huge organizational conflict of interests that cannot possibly be managed by the technology transfer offices. Oh, and its bad for innovation generally.
An innovation bill of rights provides a foundation for a state to set limits to its own powers, as expressed in its public universities, to make a space for the innovation of research supported by institutions but initiated by individuals. If universities close off this space, to be more like companies, or to be more like government, or to be more like the military, they essentially close off the space from society. Their distinctive public mission is to keep this space open. It is the faculty, especially, acting on their best personal judgment, that *is* the public service of a research university. They should not have to get permission from bureaucrats, beg for the right to practice or teach what they discover, invent, or compose, and they should not be made to buy back what they should not have had to give up in the first place, as current University of Washington policy would have them do (see Executive Order 36, I.C. (3). This is not a discussion of the Geneva Conventions–it is not how to be kinder to captive inventions. It is a discussion about how to limit such capture in the first place. This is the starting point for restoring the faculty’s role as a source of innovation–not by turning everyone into rooting hucksters for a band of folks intent on making money for the university and for their wealthy investor friends–but by being engaged with the broader community in all its diversity, from investment-backed startups to large corporations with need of outside perspective, to small companies, and just interested and interesting people in the community, doing things, thinking, observing, realizing. Thus, oddly, there is not a big gray area as the University of Washington would officially have folks believe from their testimony in the senate working session last Wednesday–available right after my talk on the video at the link given at the top.
An Innovation Bill of Rights is a huge move for American public universities and the state governments that love them. University innovation has always been a creature of freedom, and rarely can the hoary institutional hand create any thrill in a young, hot independent idea. The same is true, by the way, in companies. There are rationalizations to tie up ownership of ideas with the state. The University of Washington and the University of California apparently are ready to trot some of these rationalizations out. But as institutions, they are conflicted and compromised. On the one hand, there is their public mission; on the other, their institutional self-interest. How long will anyone tolerate the equation that their mission is to be self-interested? Ah, this is what you mean for universities to run more like a business, you say? Make institutional claims because businesses make institutional claims? But is that what you really mean?
In Stanford v Roche, a lot of university tech transfer offices said in their amicus briefs that if Bayh-Dole wasn’t a vesting statute, why then university technology transfer would crumble into nothingness. the Innovation Bill of Rights as the death of tech transfer. As in many other things about Bayh-Dole and Stanford v Roche, they are wrong about this, too. Freedom is never the foe of research innovation. AUTM, the University of California, and other organizations even argued in one amicus brief (to the CAFC) that present assignments might not hold up in state court (see the top of page 10). And now here are the University of California and the University of Washing trying to impose present assignments anyway. Plan B must have been as bad as Plan A for this to be the result.
In fact, an Innovation Bill of Rights represents the rebirth of university technology transfer. We could be looking at a University Intellectual Property Spring, where faculty, students, and staff rise up and throw off the assertion of ownership that encroach on their personal property. It’s not just that inventions and works of authorship are constitutionally protected, and that the taking of personal property for public use is constitutionally protected, but that there are deep, rich sources of innovation in personal initiative and freedom to partner, teach, assist, and develop the insights and inventions and discoveries and works that university personnel create.
To turn their work into the inputs for a “commercialization” outfit trying to sell things to anyone willing to pay, or worse, not sell anything but run around waving their hands about economic impact and public benefit while pulling down $150K+ salaries is just not going to cut it. This part isn’t rocket science. This part anyone can get. Tech transfer high on the hog begging for more resources while making sure there’s no competition from rogue faculty and students giving stuff away or holding back on their best ideas.
For all this, there are positive pathways to resolve the situation. First, there will be the stand-down of technology transfer officers who insist on owning everything. That can be simply a confession and apology for past badness, and reconciliation with the new way. Or it can be dismissal, with thanks for the service and time to hire new folks with a new attitude.
But beyond these things, there are technically sound ways to manage a voluntary regime. A university can stipulate what invention agents to use. The university can commission work it really likes, and manage assignment in the commissioned works. The university can offer incentives to participate in technology transfer. Paying for patent costs can be a tremendous inducement. Taking the liability for badness is a close second. The university can limit use of the workplace if commercial activity interferes with academics.
And above all, the university can implement the (f)(2) agreement as required by the standard patent rights clause. That’s as compulsory as it gets, as the inventor is faced with a Vogon choice: offer it to the government, which might take it, or pick an agent acceptable to the university, which might just be only the university’s tech transfer office. It’s still a *choice*. It *is voluntary*. It will cover 75% of your inventions. Most of the rest you may not want, anyway. So it will lighten your load, improve your collaborations, put rainbows, glitter, *and* unicorns back into the world.
It should be clear. The proper response to Stanford v Roche is to implement the (f)(2) agreement in 37 CFR 401.14(a) as it is written. It is easy to do. I’ve previously provided the text for it. Everyone who is hired on a federal grant signs on, so that’s where to add this paperwork. That will call out any prior agreements that conflict and allow those agreements to be addressed. And the (f)(2) is a federal agreement, so it will have precedence in competing obligations. If Stanford had complied with (f)(2) rather than trying to rely on its own promise to assign, or some general now discredited argument about Bayh-Dole, they’d have had a great chance to get things all resolved before there was a dispute. That’s the lessons for universities.
Consider, then, the opportunities for a new start offered by an Innovation Bill of Rights. For public universities, it’s the next step in the evolution of technology transfer, and it’s also a restoration of the approach that made American technology transfer great. Given the needs of the American economy, it’s a step whose time has come.