The Bayh-Dole Act comes about as a response to a series of situations that develop after the federal government takes an interest in supporting basic research conducted at universities. Much goes on. The usual narrative on universities and patent rights has been composed and repeated by the victors (or so they would have it) and answers to the question “How has today’s success come about?” That question carries with it a number of assumptions about what sort of account its audience should expect to hear.
In the usual narrative, before Bayh-Dole, universities were not involved with inventions and research languished “on the shelf” and the public had no benefit from it. After Bayh-Dole, suddenly there were incentives to commercialize those inventions, and universities developed tremendous programs in technology transfer, have licensed thousands of inventions and started hundreds of companies, with success stories everywhere, for which patent administrators should be justifiably proud, the public grateful, and the government struck with awe. Why anyone would think there were problems or want to change things now is beyond credible discussion. This narrative is a tidy package–part true, part marketing, part confirmation bias, part substitution of intent for action, part made up to fit the purpose of the narrative. Above all, the usual narrative moralizes. The morals of the story are that
- Government ownership of inventions hurts the development of inventions (there is something to that)
- Introducing a government-wide uniform policy on patent ownership was a brilliant step in freeing inventions from the often conflicting claims of federal agencies (the freeing part is of interest, the uniform policy part is meh)
- The patent system provides needed incentives for non-profits to take an active role in seeing that inventions are developed (there is something to that, too, but government has been wary of creating private monopolies)
- Exclusive licensing is often necessary to share those incentives with companies, entrepreneurs, and investors (less true, depending on the invention and the industry)
- The protections built into Bayh-Dole have not been needed because university administrators have been scrupulous in protecting the public interest through their licensing practices (debatable)
- The growth in activity metrics shows the success of the technology transfer effort sparked by Bayh-Dole (actually, not at all)
To challenge any of these morals of the usual narrative is to appear incapable of reading and understanding the usual narrative. It’s like debating whether the dog with one bone really was worse off when he dropped the bone in the water trying to get its reflection. “Don’t you get it? Here, let me explain it all again.” Whenever there’s a challenge–that Bayh-Dole isn’t working or that inventors ought to own their inventions, or that drug prices on federally supported compounds are way higher than they ought to be, say–there’s a group of people who rush to defend the usual narrative.
Alternative narratives are not allowed. It’s serious stuff. The usual narrative has been woven into university patent policies. Senior university officials have publicly endorsed the narrative. Jobs and careers and reputations depend on the narrative (or at least many people think so). The narrative has taken on the force of prophecy. There is a deep need to be right, to be moral, to be victorious over forces of government bureaucracy and ineptitude (on the one hand) and corporate greed and power (on the other) and to change the archaic university values and practices (on the one foot), and to navigate the many difficulties that lie in the way of the development of inventions into commercial products with public benefit (on the other foot).
To challenge this stuff is to threaten livelihoods, authority, respect for the heroes of the past, and the vision of the future offered by the usual narrative. To challenge this stuff threatens the honor of those involved, disparages the efforts, and works against everything that people have been striving for. When blips show up, such as, say the Supreme Court decision in Stanford v Roche, tellers of the usual narrative stand up to show that the usual narrative is still right, but with some clarifications that show its true meaning that was latent all along. Once a story has achieved this standing, there is little that can falsify it that doesn’t appear seditious, spiteful, stupid, desperate, or just plain wrong.
The problem in such situations–oh, yes, there are many problems in such situations–one problem in such situations is that the usual narrative cuts off civic debate. The narrative carries with it the conclusions to be drawn, the actions to be commended, the things to no longer touch or think. There cannot be an open discussion regarding the rehabilitation of sin, or the correction of error, or the recognition of fallacy. A Dodger fan does not become, easily, a Giants fan. A confession or conversion experience is required, something with stages of grief, dark nights of the soul (now no longer helped by Vin Scully’s call of the game), and the like. The narrative provides a framework for professional identity. It’s not something open to discussion, any more than the idea that, say, terrorism is good for business and ought to be encouraged somewhat by government policy.
But unlike religious narratives, the discussion of how the government influences the directions and conduct of research, how patents figure into it all, and what the outcomes ought to be is an important matter for civic discourse. The technical elements that arise–how to obtain a patent, how “title” differs from “principal rights,” how to make infringement become the consequence of breach of contract –often mask the underlying issues, which are often less technical than they are stark. Is research an act of honor or commerce? Should our government privatize one of its functions without oversight? Does any of these contribute materially to environments in which creative work gets done–and results in stuff beyond our imaginations and expectations?
There are the beginnings of an alternative narrative. Among others, Rebecca Eisenberg (e.g., this and this), David Mowery (this, this, and this), and Jennifer Washburn (this, this and this) have developed portions of that narrative. From their perspectives, there are flaws in the usual narrative and other narratives that should be told as well. Federal patent management was not so bad as the usual narrative reports; universities were actively involved with technology transfer before Bayh-Dole (and hence a bunch of them had IPAs with HEW); and the outcomes of all this activity include some not-so-nice deals between companies and university administrators and faculty inventors.
My approach here is to consider a different sort of narrative. I have a distinctive experience set to draw upon. I come from a practice background–two decades of working in university technology transfer, from the university side and later helping faculty, entrepreneurs, and companies navigate the university or stay clear of the university.
Unlike the academics that study technology transfer, I know the technical details of the craft. I know my patent and copyright fundamentals, trademarks and trade secrets practices, university policies, invention reporting practices, and Bayh-Dole. I’ve also been point for negotiating industry-sponsored research agreements. I can and have drafted with the best of folks, been involved in my share of multi-million dollar deals, and directed technology licensing programs.
And unlike many current practitioners of university patent administration, I do not have any commitment to the usual narrative, and I’m willing to be out about it.
I also have spent almost a decade studying textual interpretation–reading complicated texts is something I’m used to do. I actually enjoy it.
I’ve been willing to dig into the primary materials that frame the issues around patents and university research–regulations, testimony, policies, histories–consider various perspectives and ask what is indeed helpful to the construction of practice responsive to the findings of university research. All in all, I come to this work prepared–wanting to get at what we can do to support environments in which great research gets done and results of that research get used.
My questions are these. Or, among the questions I have are these. Or, I’ll come in again. What sort of policy drafting strategies did people face as the federal government moved into the support for basic research? What concepts, policies, and practices did they carry with them? How did these get deployed? What is the result? What remains to be done? To get at the answers requires a deep dive into history, policy, and regulations. If you are interested in alternatives to the usual narratives, come along for the ride.