The IPA and Wisconsin’s 1969 Patent Policy, Table of Links

In May 2017 I wrote a series of articles that traced the development of the University of Wisconsin’s patent policy, how the Wisconsin Alumni Research Foundation shaped federal policy to disenfranchise faculty inventors in favor of its own money-making ventures that favored exclusive licensing to the pharmaceutical industry. This behavior led to changes in Public Health Service patent policies, resulting in a pharmaceutical industry boycott of PHS supported inventions–whole classes of compounds that the pharmaceutical industry would not touch without assurance of a patent monopoly. The boycott was noted by the Harbridge House report, which concluded a single arbitrary federal patent policy was not workable. The NIH in response created the Institutional Patent Agreement program as an end-run around the Kennedy patent policy, which the PHS followed. Bayh-Dole is the successor to the IPA program.

Through it all, a few clever tricks used by WARF became a shadow claim on federal patent policy. Expanded scope for federal interest in inventions (to be made available to everyone) became expanded scope for university administrators to claim ownership of inventions (to be excluded from everyone in favor of a hoped-for future patent monopoly deal). A contract with the federal government which no Wisconsin faculty member could negotiate then could control all inventions in federally funded research without changing Wisconsin’s patent policy. The changes in policy followed Wisconsin signing the IPA agreement. Other universities used this same strategy with Bayh-Dole–claiming Bayh-Dole required something, then changing policy to comply with this requirement–even though the requirement itself was fake. Once policy was changed, the fake federal requirement didn’t much matter.

Anyway, the articles work through a range of topics illustrated by WARF. There are turtles and pigs.

Here is a table of links to this series of articles, with a brief summary of each.

The IPA and Wisconsin’s 1969 Patent Policy, 1

The 1969 University of Wisconsin patent policy. All rights with inventors. The “problem” of mixed sources of funding with different patent rights clauses. The administrative love of arbitrary policies.

The IPA and Wisconsin’s 1969 Patent Policy, 2

University as corporate agent to enforce research agreements. The IPA used to exploit university research policy. The university can agree in a “master agreement” to be required to take ownership of inventions and not have to change its patent policy. Faculty inventors given faux choice: assign to the federal government or assign to WARF. Review of inventions for compliance with sponsor obligations becomes review of inventions for institutional interest. Ground zero for Bayh-Dole, which follows.

The IPA and Wisconsin’s 1969 Patent Policy, 3

Finding a way to prevent the government from making inventions broadly available. IPA changes the presumption: the government does not fund public interest research so that inventions are broadly available, but rather so that private patent monopolies can exploit inventions. Role of patents in attracting private risk capital. Prospect that inventions are developed without patent monopolies. The difference between doing for the government better what it would otherwise do and doing instead of the government what the government by policy would not do.  Under the IPA program, the university becomes the financially interested sponsor, for inventions, in what the government otherwise supports in the name of public interest research.

The IPA and Wisconsin’s 1969 Patent Policy, 4

Federal subvention but under the IPA with invention procurement contracted to the university. Three limitations on inventions made with federal funding–government license, public covenant (broad availability on reasonable terms and limited term for exclusive licensing), march-in. The institutional argument against the public covenant: what’s good for the university financially is good for the public. Institutional conflict of interest. The new Wisconsin “patent agreement.”

The IPA and Wisconsin’s 1969 Patent Policy, 5

The IPA definition of “subject invention.” Wisconsin controls the interpretation of the IPA’s scope. Patentability. Contemporaneous recognition. Scope of invention reporting vs scope of institutional ownership claim. Reporting as a clever means to expand the number of inventions claimable by the institution by having patent personnel identify patentable inventions, rather than inventors. Alignment of university administrators and federal sponsors against inventors. IPA requires assignment of patentable inventions the university has decided to patent. Easy to switch this around to require the assignment of all inventions, and then sort out which ones to patent, retaining ownership of all the rest, including those that cannot be “owned” because not patentable. Conflating subvention with procurement to harvest inventions.

The IPA and Wisconsin’s 1969 Patent Policy, 6

This history of WARF, a “captive venture” to generate revenue for Wisconsin’s scientific research programs. Differences between Research Corporation and WARF–WARF aims to make money only for Wisconsin; run by wealthy alumni rather than industry representatives, makes most of its money from stock trading, not patent royalties. Designed as an end-run around public expectation that university research should be openly available. Patents held for public purposes; patents held for money-making ventures with public benefits as a possible side-effect. The foundations of Bayh-Dole: middlemen serving speculators gain control of publicly supported inventions, beating back both inventors and federal sponsors.

The IPA and Wisconsin’s 1969 Patent Policy, 7

WARF’s charter excludes non-scientific research. WARF’s antitrust problems with Vitamin D. WARF manages the Vitamin D patents to advance the Wisconsin dairy industry and prevent the poor from having access to the invention’s benefits for oleomargarine. The public interest in patents on publicly funded inventions. Bayh-Dole’s statement of “policy” shapes the patent property rights for publicly funded inventions.

The IPA and Wisconsin’s 1969 Patent Policy, 8

WARF’s antitrust problems with 5-FU. PHS argues that WARF’s exclusive license for 5-FU constitutes “restraint of trade.” PHS’s revised patent policy to make clear that WARF’s licensing behavior is unacceptable for inventions made with subvention funding and directed at public health. Inventions in pharmaceuticals involve hundreds to thousands of compounds in a single patent. The broad scope of the PHS’s claim on inventions–resulting in an expansion of availability. What happens when this same broad scope is co-opted by university patent brokers to do just the opposite of the PHS policy–to secure more inventions behind patent paywalls for exclusive licensing, where only one compound from a claimed class might get developed as a product–if any product is developed at all.

The IPA and Wisconsin’s 1969 Patent Policy, 9

Deliverables in procurement. The problem of deliverables in research. The problem of “markets” in matters of public health. If the federal government supports university faculty seeking things that will alleviate suffering, should the government also divert those discoveries to a “market” of speculative investors in patent monopolies and which includes the university administration itself? The problem of fragmentation of rights as federal support for a given area of research is spread out among faculty investigators at a number of universities. Harvard’s patent policy in 1962: no patents on therapeutics, and well will provide legal advice to anyone at the university aiming to prevent patenting by others. Kennedy patent policy distinctions between commercial contractors and others who might call forth private risk capital in the public interest.

The IPA and Wisconsin’s 1969 Patent Policy, 10

The pharmaceutical industry, in its dispute with the PHS over inventions made in medicinal chemistry, drives federal patent policy for all funding in all areas with all contractors. Why should the federal government subsidize the creation of patent monopolies to be passed to corporations via speculative investors? Why, especially, when the target of speculation is human suffering? Bayh-Dole assumes the federal government has no further interest in inventions made with federal support–despite a superficial apparatus that claims to be in the public interest, none of which is designed to operate. But should public money drive out private interest in research results? What about institutional interest in the work of inventors? Is there a problem reasoning from the concept of “public interest”?


The IPA and Wisconsin’s 1969 Patent Policy, 11

Capitalism and commons. The irony of WARF’s position on patent property and the Wisconsin Dells river frontage. Who should decide when a patent should be sought for research conducted with a claim to be in the public interest? The PHS claimed the Surgeon General should decide. The crux of the debate then reduced to whether university bureaucrats were better at making decisions about patenting than were federal bureaucrats–to the exclusion of whether anyone else (inventor, faculty investigator, company officials). The pharmaceutical industry boycott of PHS inventions. How the IPA program unwound WARF’s settlement with the PHS and restarted WARF’s exclusive patent licensing. WARF’s expansion of control over Wisconsin inventors.

The IPA and Wisconsin’s 1969 Patent Policy, 12

How history informs the present. WARF’s licensing behavior shows why the PHS felt the need to act to expand the scope of government interest in inventions made with federal support. The NIH circumvented the PHS with the IPA program, and the IPA program laid the foundation for Bayh-Dole. A war over federal patent policy fought from 1945 to 1968, won for the pharmaceutical industry by university-affiliated patent brokers. But should the government be so ready to disrupt emerging commercial activity directed at public health?

The IPA and Wisconsin’s 1969 Patent Policy, 13

The Harbridge House report. Problems in medicinal chemistry. Markush style claims claiming classes of compounds. Two products, with four more possible, from 40,000 university compounds. PHS moves in on territory coveted by the pharmaceutical industry–searching for new chemicals that might become commercial products. Pharmaceutical companies boycott PHS supported compounds and refuse to provide screening services. Why screen only to let the rights slip out to everyone? Everyone worked to circumvent PHS policy–chemists, universities, companies. Even the NIH! Harbridge House concludes a single arbitrary federal patent policy is not workable. Some federal agencies achieved high rates of invention usage without privately held patent monopolies.

The IPA and Wisconsin’s 1969 Patent Policy, 14

Three sorts of university invention: tools, tools that can also be sold as products, and articles that can be used only as products. Federal government supports speculative areas of research but has no interest in follow-up support. University inventions are particularly “perishable” according to the Harbridge House report. “High risk” here means “more likely to fail.” University licensing offices made “buffers” between PHS policy and industry demands. A crappy compromise is better than a chronic standoff.



This entry was posted in Bayh-Dole, History, Policy and tagged , , , , , , , , . Bookmark the permalink.