A Brief History of University Patent Policies

[Updated May 2018]

American University Patent Policies:  A Brief History

1900-1924 Universities have no formal policy on patents, and follow defaults provided by law, addressing issues as they arise.

1912 University of California professor Frederick Cottrell forms non-profit Research Corporation to manage inventions submitted by faculty, starting with management of some patent rights on his own invention, the electrostatic precipitator. Faculty inventors receive royalties, and their institution or research foundation may also receive a share. Research Corporation donates income after expenses to the Smithsonian for research, and also supports research directly across the country.

Cottrell describes Research Corporation in “The Research Corporation, an Experiment in Public Administration of Patent Rights.” The Journal of Industrial and Engineering Chemistry.  December 1912, 864-67.

1924 Lehigh University adopts a formal patent policy.

1924-1950 By 1952, 73 universities have adopted a formal patent policy. By 1962, according to Archie Palmer this number doubles to 147 out of 359 universities that report conducting scientific or technological research. In 1962, 596 universities report they perform “little or no scientific or technological research” and have no formal patent policy. Of those universities that do have a patent policy, some abjure patenting, especially in biomedical fields. Harvard offers legal assistance to anyone challenging a biomedical patent.  Others claim patents but only to prevent patenting and monopoly behaviors. Ownership of inventions follows extramural research contracting. Typically, the patent clause of such contracts is negotiated by the faculty investigator. Those that adopt a patent policy often direct faculty to use an affiliated foundation or Research Corporation.

1925 Formation of Wisconsin Alumni Research Foundation to manage inventions submitted by University of Wisconsin faculty, starting with Steenbock’s invention to irradiate milk to create vitamin D. WARF invests its royalty income in the stock market, where it makes most of its money. WARF donates a portion of its funds to the University of Wisconsin. Originally, WARF insisted that its donations were to be used only for scientific research, and not to support the humanities or social sciences.

1925-1950 Formation of dozens of WARF-style research foundations, 55 by 1962. Archie Palmer identifies Purdue Research Foundation (formed in 1930) as a model. Palmer advocates for formal research and patent polices, and publishes a succession of compendia of policy statements and analysis.

1950 Formation of the NSF, leading to formalized research policies. Vannevar Bush’s Science the Endless Frontier (1945) proposes a National Research Foundation that will support civilian research using strategies of teamwork demonstrated during the Second World War by university faculty, industry scientists and engineers, and “gadgeteers” were able to produce technology that the military establishment could not think to propose, such as the digital computer, advances in sonar and radar, and the atomic bomb. University administrators object to concentrating basic research in a single federal agency; multiple federal agencies fund basic research, but with differing purposes and differing requirements regarding ownership of inventions.

1950-1981 Growth of university patent policies. A great deal of diversity. A few universities claim ownership of inventions, but typically restrict that claim to “official duties” in which an employee is hired to invent, and limit the claim to inventions that an invention management agent agrees to manage.  Institutions consider whether they have “equity” in faculty inventions. Typically a faculty-led committees review circumstances of institutional support and make a recommendation. Invention equity might involve recognition, reimbursement, a shop right, a non-exclusive license, sharing of royalty income, or institutional ownership. Institutional ownership is generally a recommendation by a delegated body, not a requirement of policy.

1968-1978 In response to the Harbridge House report (1968) highlighting the pharmaceutical industry boycott of Public Health Service inventions (which the PHS insisted should be public domain or licensed non-exclusively), the NIH and creates the Institutional Patent Agreement program (later joined by the NSF). Under the IPA program, nonprofits and the NIH enter into a master agreement regarding ownership of inventions made in NIH-funded projects. If a university decides to patent an invention made in an NIH-funded project, it must take assignment of the invention from the inventor. The IPA agreement, as a contract accepted by universities, takes precedence over university patent policies under most university research contracting policies. Since the IPA is a master agreement without any associated faculty-created research proposal, no faculty member is a party to the agreement and therefore has no say in negotiating the terms of the IPA.

1970s Research Corporation advocates that universities create “technology transfer” offices to assist in helping faculty identify inventions that might be “transferred” to Research Corporation for management.

1981 Bayh-Dole Act goes into effect. University patent administrators represent Bayh-Dole as allowing university administrators to take ownership of faculty inventions made with federal support simply by notifying the government. Universities are pressured to change their patent policies to “comply” with Bayh-Dole.

1981-2011 Universities adopt and revise patent policies, replacing invention equity with ownership claims. Universities migrate the requirement to assign from research policy to invention policy and expand ownership claims to include use of resources and participation in extramural research. Some universities also expand definition of “invention” to include “inventions that are not patentable” while others conflate inventions, copyrights, and data under a general heading of “intellectual property” or claim by an arbitrary definition ownership of a broad range of assets, listing variously inventions, works, data, materials, scholarship, and expertise.

2011 US Supreme Court decides Stanford v Roche, rejecting claims made by 70 universities, AAU, APLU, and AUTM that Bayh-Dole vests ownership of inventions made with federal support with host university. IP Advocate with IEEE and AAUP file an amicus brief that argues against the institutional taking of ownership to faculty inventions under the Stanford reading of Bayh-Dole. Bayh-Dole applies only to “subject inventions”–patentable inventions made in projects with federal support and which have been acquired by a party to a federal funding agreement. Bayh-Dole provides no special right or mandate for universities to acquire inventions made in projects with federal support.

2011-2018 Universities generally ignore Stanford v Roche decision in their policies and guidance documents. Some universities, notably Stanford, University of California, and University of Washington insert “present assignment” language into policy and employment documents, purporting to enact “automatic” assignment of any future inventions made by faculty. Advocates argue that such draconic ownership policies are necessary to preserve the institutional technology licensing industry that has been created around faculty inventions, and without this industry in place inventions will “sit on the shelf” and America will become a global technology backwater.

2018 NIST adds an assignment requirement to the standard patent rights clause as part of a rule change. Contractors are required to require their technical employees to assign to the contractor subject inventions–that is, contractor employees must agree to assign to the contractor any inventions that the contractor already owns. Mind numbing.

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