After Bayh-Dole was passed, university administrators got the idea that universities had to have policy statements to claim ownership of inventions to comply with Bayh-Dole. The idea was that “elect to retain title” meant “elect title” which meant “title vests with the university until university administrators elect otherwise”. This is the “system” that Joe Allen and Birch Bayh are now arguing that they intended to create, and would be a shame to dismantle/replace/change in any way. I disagree. Bayh-Dole did not propose the system that is now dominant. The present “system” itself is a terrible mess that’s trying to get by with spin, narrative fallacy, and confirmation bias. And it would not be so bad to make some changes, if not to the “system,” which may as good as it is going to get, then to introduce other approaches, to give the system a little competition and see what it is actually made of. Last I heard, competition was good for innovation. I haven’t heard the same thing about monoculture, central administrative control, or compulsory ownership policies. Funny, one would think that folks dealing with innovation would have gotten the memo.
That said, the Stanford v Roche verdict is rather remarkable, as it overturns a 30-year scheme to assert institutional ownership of research inventions based on a wrong interpretation of Bayh-Dole–and this situation would not have been made so clear had not AUTM, WARF, and MIT been so intent on seeing Stanford’s litigation against Roche escalate. In the wake of Stanford v Roche, I have not seen any university administration go, “Gosh, we sure got that wrong” and revise or withdraw policy or guidance statements that claim that Bayh-Dole requires university ownership of inventions. Instead, university administrators are actively seeking new ways to claim ownership of faculty inventions. If Bayh-Dole won’t do any more, then surely there is another way to get there.
The Bayh-Dole Act was passed in an environment in which only a few universities operated in-house licensing shops–Stanford and MIT, notably. A number used external foundations or Research Corporation, University Patents (now Competitive Technologies), and the like. Technology transfer offices, where they existed, mostly collected invention disclosures and sent these on for review by a designated invention management agent. When University of Washington created its technology transfer office in the early 1980s, this was what it was to do–gather invention disclosures and hand them to the Washington Research Foundation (which in turn was based on Research Corporation). Only later did the technology transfer office develop a direct licensing function, and only years later did it become the exclusive licensing agent for the university.
Given the diversity of ownership policies at the time–a university like MIT could claim ownership of sponsored research, while a university like Wisconsin could disclaim ownership of pretty much everything it was not required to own, and others could direct ownership decisions to an affiliated foundation or take no interest in inventions at all–it is difficult to see how Bayh-Dole could have been intended to force universities to adopt any one approach. The whole point of its sophistication on the matter of title is to leave open how universities deal with inventions, provided that if inventors do not seek patents, then the funding agency has the choice, based on its funding agreements, to do so.
The reasons why at the time of Bayh-Dole universities could recite success in licensing (30% to 4% for the agencies) was that the universities for the most part used voluntary ownership models, were highly selective (that is, the faculty inventors were highly selective), and used approaches that were matched to the nature of the research and regional situation in which the university operated. A smaller rural university might benefit from Research Corporation’s national reach, while Stanford sitting in the heart of an emerging technopolis might be best off with its own licensing office.
AUTM in particular adopted the idea that the reason for the universities’ licensing success was not voluntary-selective-matched management, but rather compulsory-comprehensive-administrative process. Nothing could be further from the truth. In fact, the compulsory-comprehensive-process approach was just the thing that the federal agencies were using, and which was what organizations like WARF had to work against to get exceptions under which a federally supported invention might be managed privately.
Now advocates for the compulsory-comprehensive-process approach set up the idea that an argument against the “system” is an argument against orderliness and expertise and service to the faculty, when the actual argument is against bureaucracy, non-selectivity, and overreach. The claim is, without the “system”, the public is left with “nothing”. As time goes on, this may indeed come nearer the truth, in the sense that the present “system” is destroying faculty expertise with managing inventions through agents of their choice, on a very selective basis, while releasing many inventions to scholarship or to the government. As it stands now, however, without the “system”, faculty are not left with “nothing” but rather have the prospect of restoring the approach that the “system” has stifled for two decades or so. We are approaching that time when the last faculty members who remember the prior approach won’t be around to explain it, and then the innovation insights that faculty had, and which built the foundations of the present approach to research inventions, will be much harder to recover.
Bayh-Dole favored the faculty approach over federal agency bureaucracy. Faculty were selective, motivated, and chose agents to accomplish their purpose. University administrators, however, have ignored history and success and, for reasons that escape me, have re-implemented the federal agency approach at the university level, making it out that what Bayh-Dole was meant to do was to shift federal bureaucracy to state and private bureaucracy! They argue that Bayh-Dole required them to build this new “system”, or that to exploit fully Bayh-Dole they should have this new “system”. It’s hard to see how a transfer of bureaucracy would be the crowning achievement of Sen. Bayh’s work. Surely the Senator will rethink his position.
From all indications, compulsory-comprehensive-process systems, wherever implemented, work against innovation, personal initiative, and the benefit of the implementing organization. I have talked with people at Xerox PARC, for instance, about how the company policy of claiming all “strategic” inventions and imposing company managers on these meant that researchers at PARC hoped that their work would be judged “non-strategic” so they could actually do something with it–thus, ethernet, graphical user interfaces, postscript, the mouse, among other things, were “non-strategic” for Xerox and thus got deployed in useful ways.
The “system” that university administrators have built is neither fair nor objective. The “system” is not more productive than the prior approaches, nor is it as diverse or attuned to the potential for scholarship. In fact, the “system” is horribly mismatched with most everything about academic endeavor. The system creates the appearance of a new “two cultures” problem, this time profit-making vs scholarship, not sciences vs humanities. This new dichotomy expects faculty to “change” to this new, apparently entrepreneurial way of dealing with research discoveries via proprietary IP positions. It appears, however, that the prior approaches were much more entrepreneurial in their way than now. The growth of the internet is a telling instance, where many faculty contributions built standards, common technology platforms, tools, and shared expertise to scale the internet for use in research, then communications, and eventually, in commerce.
We hardly recognize academic entrepreneurship these days, as we impose the expectations of profit-seeking, risk-taking, personal advantage on all such activity and consider it all potentially grave conflicts of interest to be resolved not by changing the paradigm of expectations but rather by taking the property–the IP–away from faculty and handing it to administrators, who have the same conflicts of interest, and more, as they also represent the institution, which is charged with governance of necessarily competing interests. These administrators aim to replace governance with management, arguing that top-down authority, deployed with orderly process, is fair, efficient, and effective. Doing this makes for lousy governance and ends up in the most capable people asked to serve the process and bow to authority rather than to take the actions they may to advance scholarly enterprise.
Universities have persisted so long by governance–responsive, judgment-based adjudication of competing interests–not by management. That is why shared governance is not a debate between administrative governance alone or faculty and administrative governance working together, but rather about the superiority of governance to management. (A fun read on this, by the way, is The Management Myth, by Matthew Stewart).
In its small way, the Bayh-Dole/Stanford v Roch issue is a microcosm of this debate. This is also, coarsely, the debate between Hayek and Keynes, with Hayek arguing for a few constant general rules and much private initiative, and Keynes arguing for government central planning, intervention, and control. The route to shared governance in IP is not to for faculty to seek some advisory voice in administration management, but to chase out the idea of “management” as corporate model of efficiency while retaining concepts of reason, discourse, and due process as proper attributes of governance.
The argument in Stanford v Roche is not really that faculty are better at invention management than administration-hired experts are, but rather that governance is a better approach to research discoveries than is a compulsory-comprehensive-process approach. That’s what Bayh-Dole was based upon, and what has been buried by this rush to technology “management” and what Stanford v Roche has brought to light. Now the same folks that created the compulsory-comprehensive-process system for federally funded research, when shown their system has no basis in law, rather than backing down are trying to impose it on everything and prevent anything different from being considered at any university. Worse and worse.
In each generation, it seems, we have to find a way to sweep back the folks who mistake authoritarian order for due process, who align their power with some moral and then insist that going against their power goes against the moral and is among other things disrespectful and rogue if not criminal. When we find ourselves aligned with a given moral, we have a difficult time resisting the argument for order and authority that seeks to “protect” that moral. For innovation, in particular, authoritarian order is useful only later, well after the core events of innovative activity have taken place (thus, Walmart adopting RFID was a huge event). The assertion of institutional authority over discovery is not only antagonistic to academic freedom and the social purpose of publication, but also dooms university research innovation to the service of rent-seeking speculators. What a disaster for university governance, at the heart of its research enterprise.