One of the challenges of dealing with university technology transfer is that many of the descriptions of what is to be accomplished are cast in the singular, without context. Policies are then built around these singularities, and anything multiple is simply a matter of repeating the singularity.
Thus, imagine an invention being made by an inventor, who dutifully reports to a technology transfer office, which reviews the invention, takes ownership, files a patent application, and seeks a commercialization partner, and when successful licenses the patent rights and receives royalty payments, which it shares with the inventor and with the university. It’s a simple, clear story about what should happen. Look at the number of singularities–
an inventor
an invention
a tech transfer office
a commercialization partner
a license
a university
Yes, there can be others involved, but these are *exceptions* to the expectations of policy and in fact disrupt the foundational architecture. If one looks at the patent literature, one knows that many inventions have multiple inventors. This is uniformly the case for university inventions. I just pulled the most recent 100 issued patents with a university as assignee. The average number of inventors is 3.5. 16 of the 100 had one inventor; 31 had two, 19 had three, 16 had four, and 18 had more than four. If this set is any indication, then 85% of university patents have multiple inventors. The max in my set, by the way, was 33, with a 13 and a couple of 12s. More inventions had *five or more inventors* than had a single inventor.
I would go so far as to posit that a sole inventor is a weak counter-indication of finding a commercialization partner: if someone in a university environment was not collaborating to do the work, why would one think they will suddenly find themselves all collaborative when it comes to dealing with the university administration over an invention? The overwhelming default for university inventorship is multiple inventors.
The same is true for “invention”. Rarely is there a single invention. The idea of invention for patents is one invention per patent, but the idea of invention for technology is “as many as it takes” and it often takes three or four just to establish the core patent position–and often these take the form of continuations and continuations in part and divisionals of an initial patent filing. In engineering, the number may be more like thirty, not three. Any invention worth talking technology rather than troll is multiple. Looking again at the most recent twenty issued patents to universities, only 7 are first level, that is, an application not based on a previous application. Two go 5 deep in continuations of various sorts. Only a couple are simple conversions of provisional applications.
Universities in reporting “invention disclosures” play on the idea that these applications are all independent singularities, when almost always a significant percentage of the disclosures are follow-ons to inventions already under management. In the case of the above twenty patents, there are on average 1.6 other patents. That is, the twenty issued patents build on 32 other patent applications, many of which have resulted in other issued patents sharing much of the same specification, some adding new material, and differing primarily in the claims. And we are not even talking about counting the foreign counterparts. It should be clear that one can’t count the applications in one year as independent from the applications in previous years–yes, they are new applications, but a significant number of them are procedural and do not represent new, independent inventions. Until universities report their inventions and patents as families of technology rather than as individual events we will not get a true picture of what is going on or the level of inventive activity. In essence, the universities report their inventions as would trolls, if trolls reported. It is a product of adopting a singularity policy architecture at odds with actual practice, and then not correcting the policy architecture.
It’s important to recognize the distinction between inventions as technology and inventions as troll.
A technology is a set of practices involving tools that allow a particular task to be accomplished. A technology expands one’s phronesis–the capacity to get things done. An invention family does not generally arise in isolation from a technology. There are other things that connect with the invention family. In particular, around every invention family is a halo of information–data, designs, recipes, experiments, old problems (solved or obsolesced), new problems (created by the invention), insights, instruction, best mode of practice, new lines of study and development, software, collaborators, competitors, emails, web sites, supplier lists, calibration settings, even dexterity. The developers and possessors of this halo of information is almost always broader than those who are identified as the inventors for patent purposes. Thus, the developer set is even a broader set than multiple inventors.
In any transfer of technology, much of this information is in play–it does not all have to be “transfered” (in the sense of wheelbarrow) but there has to be a new halo of sufficient information at the receiving end that what is transfered (even if only “rights”) can be used. I call this kind of activity “engagement”–where the receiving party comes to have the capability to use what is transfered–either because the transfer provides and teaches these things, or because upon inspection, combined with what one already has and can get from others, one comes to understand how to use what is transfered. Note that how a technology is used in the lab may not be identical to how it is used in the field. That means: no matter how much is put in the wheelbarrow and sent to the recipient, the recipient still has other work to do in order to be able to use the technology for the recipient’s purposes. Engagement rather than throwing things over the fence. If one’s “inventors” are working with the recipient, then unless the recipient wants to do just what the originating lab is doing, then the “inventors” will be helping the recipient realize new things, not previously known to the “inventors” or the recipient. These are not so much “improvements” of the invention but the artifacts of engagement–they are what technology transfer is about, certainly much more so than the provision of patent rights under contract.
Thus, “invention” not only means a family of related inventions but also this halo of information and the new work that arises in engagement, which is not so much transfered from one entity to another as it arises as an essential part of the activity of transfer. Once engaged in transfer, the conditions and commitments involved create a distinctive social and technology situation, one that is not addressed either by licensing or by sponsored research, the policy rules for either of which are inadequate to developments arising from engagement.
Invention as troll is another matter. Invention as troll means obtaining a legal position from which one forces another to pay to continue to operate. The shorthand is “payment to use the invention” but what the troll really means is “to avoid litigation”. Such activity is generally not technology transfer, because the folks that are operating already know how to do what they are doing. There’s no transfer or engagement required. It is purely a matter of who has the right to shut down whom. Of course, the troll doesn’t want to shut down anyone–the troll just wants everyone to pay for the right to continue to operate. In such cases, the transaction is strictly based on one of a legal position. Once one has a patent, and therefore this legal position, trolling becomes available as a way to make money. Administrators justify this as “defending one’s rights” and “if you don’t defend your rights, no one will respect you,” which are the ancient hallmarks of bloody honor culture (for which see the popular account by Gladwell in Outliers).
This observation regarding honor cultures seems remarkably parallel to invention troll matters:
Such cultures are likely to develop where (1) a man’s resources can be thieved in full by other men and (2) the governing body is weak and thus cannot prevent or punish theft.
If university administrators view their patents as a herd of wandering cattle, and the use of an invention as a kind of theft, then it would appear natural for the university administrators to adopt bluster and strength in response to “defend” their property. The effect of an IP policy architecture institutionally is that the administrators may feel that they have no choice in the matter. If a company has crossed the patent line and is using without permission, then the company *must be forced to pay for permission*. Rather than recognize the situation as one of wonderful success–a company is using technology akin to that arising in university research–administrators see it as a violation of rights and worthy of launching a legal attack.
Is technology transfer about teaching others how to use what has been discovered or developed at the university? Or is it about ensuring that everyone asks for permission to practice and pays for that permission? Or is it even more narrowly about denying everyone permission to practice until a company comes forward who will ask for permission and create a product that everyone will pay for, and then share a portion of those payments with the university? If it’s this last option, then the challenge is not merely getting a company to pay for the right to make a product to sell, and it’s not even that the product has to be profitable to the company after deducting the payments to the university–it’s that the profitability of the proposed university-permitted product has to be competitive with what the company can do with investments in its existing products or any other products it might develop. What are the odds? And folks wonder why university inventions “sit on the shelves”: the inventions are chained there by university policy architectures. It is a policy architecture set up for the transition from transfer to trolling, from helping culture to honor culture.
It may be that the unnatural augmentation of honor culture methods is the most important change that the Bayh-Dole Act’s streamlining of ownership has brought to university research enterprise. By making invention ownership merely a matter of taking invention rights from inventors rather than justifying a specific plan of activity supported by both the inventors and an agent to a federal agency, Bayh-Dole in essence devalued the very thing that appears to have made early university-originated inventions so effective–that the inventors chose their agents and developed a working relationship before presenting a funding agency with a case for private ownership. In its place is now substituted honor culture, which justifies troll behavior as something of a virtue: “we could shut you down and destroy you for stealing our invention cows, but we are merciful and only ask for a fair share of what you make on the milk or meat.” As for IP policy structure, the argument is: “we have to sue you for the money, because otherwise we would breach our policy deal with our inventors (which we imposed on them), and they would then have a basis to sue us!” Ethics is so frickin’ strange, isn’t it?
Thus far we have argued: inventors are multiple, inventions are multiple, inventions arise in a context of other stuff, and this other stuff has developers in addition to the inventors, and that other stuff includes additional stuff that arises through engagement as part of the transfer activity, along with the IP that might attach to this additional stuff, including more patent rights.
This is the default situation, not some gross complication. As Einstein quipped, explanations should be “as simple as possible, but not simpler.” The same holds for innovation practice. Indeed, one of the most pernicious problems in innovation practice is the refusal to deal with the level of complexity that arises in research enterprise and attempt to introduce a standard practice that is *simpler than possible* for the benefit of indifferent administrators, creating a host of problems in the process that are passed off as a “funding gap” or “lack of innovation capacity” or “academic culture”–when it is “technology transfer policy silliness” that is the generating force.
Returning to our list of singularities, we are not yet done. A singular policy assumes a single technology transfer office. There is no choice. Generally, faculty do not argue against choice, administrators do. That’s odd, right there. When we ran parallel offices for software and non-software, so that inventors could use either office if they had code, it was the non-software folks that bitched and moaned about “the confusion”. The software developers had a choice, and they understood that instantly, and it seemed to us that we built a better practice as a result.
At one point, the University of Washington identified five different agents in its policy that could handle inventions–the Office of Technology Transfer, the Washington Research Foundation (a private foundation with an operating agreement with the university), the Washington Technology Center (an economic development operation of the state), Research Corporation, and Battelle. The WRF hated the idea that the OTT could handle stuff, we at the OTT were bothered that the WTC was horning in on things, RC got mostly cut out except for some interest in starting biotech companies, and Battelle was around with ideas about partnering. The situation caused enormous administrative angst, but it wasn’t a problem for inventors at all. It would have been better to make choice of agent voluntary and let these agents and more compete for opportunities and negotiate their deals than to have a policy that tried to track everything to one door–which is pretty much where things are now, though there are still residues in the policy statement.
Licensing also assumes singularities. Some university licensing officials have made a virtue of the exclusive license. This, they said, was the essential difference between university practice and federal agency practice. Where agencies were loathe to grant private monopoly positions, university administrators are chipper happy to do so. As the administrators are fond of saying, “a non-exclusive license is just a tax”. That’s not true, but they like the sound of it, and so they keep repeating it, even in the face of the great successes in early biotech licensing–Cohen-Boyer, Axel, and Hall among them–all being non-exclusive licensing programs. What they actually are saying, however, is that their licensing model restricts their business to monopoly exchanges with speculating companies and investors who wish to make product and want to exclude all competition.
Taken as the default position, the exclusive patent license to university research assets is horribly destructive in a host of quiet ways. Exclusive licenses offered by universities interfere with collaboration among researchers and institutions, as well as connections with industry. It sends strange messages to the public about the university’s role in community economics and the values that administrators have–money or assistance. It raises risks with regard to the development of a technology that often would have been taken up for development or not regardless of the monopoly position. It creates enforcement conditions with regard to other users of technology and within the university with regard to dissemination of related research results. This list does not mean that exclusive licenses do not have their role, and indeed there are times where they are essential. However, when that license is made by a university directly, and not via an agent, the liabilities and adverse effects often far outweigh the prospective benefits–both to the university and to the community at large.
The exclusive license, for a university in particular, and in particular with regard to patents, should be an exception, not the default. One should be thinking in terms of multiple licenses (to multiple assets, and with multiple organizations). If there are advantages they may be to the first to adopt rather than those with the greatest speculative monopoly hutzpah. One should be thinking in terms of multiple “commercialization partners” if not more broadly in terms of multiple users of technology regardless of whether a “commercial” product is ever created. We all use the university-created internet, and it is not a commercial product though it is the source of many commercial opportunities. I can only imagine the big fat total screw-up that would have happened if the early core internet technologies had come under management by university patent administrators fixated on monopoly-granting exclusive licenses.
Finally, there is the idea that the beneficiary of licensing activity should be the university. Again, it is a singularity. Perhaps it sounds natural that the employer should enjoy the fruit of the employee’s labor and stuff like that. These, again, are arguments that are simpler than possible. Faculty and students are not employees for research purposes and shouldn’t be–they are not investigating nature and society and the imagination for the employer’s benefit, but for the community’s benefit–to advance science and research, to collaborate with companies, to provide the community broadly with new understandings, tools, ideas. It’s not some fatuous idealism. It’s stark pragmatics. The university is generally not the beneficiary of university research, never was, and shouldn’t be. It’s baked into federal grant funding agreements, for all that. What this means for our discussion is that there is nothing compelling in making the university the beneficiary of royalty payments for inventions. Bayh-Dole does not require the university to be the beneficiary of royalties–and in fact one might read Bayh-Dole to mean that after expenses, it is supposed to grant out the benefits. These could be to any organizations–for profit or nonprofit–or even to individuals. Yet we find not a single university that identifies a beneficiary for royalties other than itself, its “inventors”, and its legal advisors. All the fuss about licensing and enforcement and pushing back on industry is for self-interest, and when it is all added up, pretty piddly self-interest at that. Ask a university like the University of Washington what all their hundreds of millions in Hall licensing money has done, and they cannot tell you. They don’t know. It went to bitty research funds where it was spent on bitty research projects. Not worth tracking, not worth talking about. But somehow it is worth having a compulsory IP policy tracking all research assets to a monopolistic technology transfer office. It’s damaging, irrational, foolish. But it’s what everyone is doing, and trying to do even better.
If we consider research assets in context, we find they are multiple, mixed, and diverse; that the beneficiaries and uses are multiple, mixed, diverse, and often unanticipated; that the means of managing these assets are also multiple, mixed, and diverse. Starting from a singularity policy and working out is bound to fail and break. The defaults work against those with insight and initiative. The route that makes sense is one that assumes multiplicity, is wary of exceptions that are strictly singular, creates opportunity and makes benefits for others, and is able to move effortlessly among various activities to provide support or adjudicate competing interests. Universities were on the track to do this when Bayh-Dole was passed. Now they are largely retrenched in policy architectures that cannot support what the universities aspire to.
The great effort now must be to connect up the aspirations with pragmatic choices that advance activities toward those aspirations. That won’t happen with singularity policy architectures, nor with administrators determined to own everything and construct rationalizations for doing so.