In the Bayh-Allen view of things, university technology transfer offices do not have the capacity or resources to handle inventions other than those made by their own faculty. This is at the heart of “this compulsory assignment business is really a service” argument. This argument is repeated in this article from Inside Higher Ed.
It is clear that many university administrators do not want to get up what they have got in the habit of taking, and what they have been taking is private property under what amounts to false pretenses, whether it is a claim that federal law requires or mandates it, or whether it is a claim that faculty are hired to invent (when they are not). They defend their actions in the name of administrative efficiency, sometimes with a veiled argument that faculty investigators and inventors are selfish doofs, and that regional economic development depends on compulsory institutional ownership, not on the availability of capital markets and industry ready to locate or expand operations near to research expertise.
It certainly is true that many technology transfer offices lack capability and resources–that isn’t in dispute. It’s clear enough that in many cases they cannot deal with the inventions of their own faculty. But technology transfer offices create much of the problem of capacity and resources by demanding ownership of all faculty (and often also student) inventions. Thus, rather than dealing with maybe 25 high quality, well matched inventions a year, they are dealing with 100 or 200 or 300 inventions or more that they are on the hook for, because they have claimed ownership, and now nothing will happen until they act. No wonder they don’t have resources–they are pawing through way more stuff than they need to, and at the same time, foreclosing opportunities to collaborate with other institutions.
Some technology transfer offices say they would never handle inventions for “outside” inventors. But they do this all the time.
They handle joint inventions, where some inventors are at other institutions. They accept donations of patents, which they then manage as their own. They manage inventions for faculty and students who leave for other universities. In some cases, they agree to co-market inventions with inventions made at other institutions.
In the old days, when one accepted inventions on a voluntary, mutually arranged basis, it made sense to limit one’s interest to those in one’s primary service area–such as those affiliated with the university, if one was at that university. But if an invention showed up that was highly relevant to those inventions–presenting with background rights, improvements, ancillary–then it was also a service to one’s faculty inventors to manage that invention as well. Certainly an agent such as Research Corporation could, should it have the opportunity, take advantage of its national scope of interest to develop industry relationships and combine inventions from various sources together to create licensing packages that make coherent sense for everyone. You can’t get that at a strictly local, provincial licensing shop.
If a particular university licensing office does not want to do share inventions, that’s fine. Just say: “we don’t want to manage background rights, improvements, or related inventions, even when doing so would be a service to our own inventors and investigators, would develop licensing relationships we already have, would import new technology to our campus, and generate additional income for everyone involved.” Fine. Don’t do that. But don’t say you never would, or couldn’t, or can’t if an inventor is not “yours”–because you already do.