Some reading for technology transfer professionals

Every so often I have asked people what articles ought to be required reading for people in university technology transfer. One great suggestion is David Teece’s “Profiting from technological innovation: Implications for integration, collaboration, licensing and public policy.

Another has to be Benoît Godin’s work on the history of the concept of innovation. “The Linear Model of Innovation: The Historical Construction of an Analytical Framework,” for instance. But most anything by Godin is worth the read. Benoît Godin has two rooms full of books on innovation, stacked floor to ceiling.

For general innovation stuff, you might start with these:

Kevin Ashton, How to Fly a Horse: The Secret History of Creation, Invention, and Discovery
Scott Berkun, The Myths of Innovation
Jane Jacobs, The Economy of Cities
Steven Johnson, Where Good Ideas Come From: The Natural History of Innovation
Matt Ridley, The Rational Optimist: How Prosperity Evolves

There are the foundational articles. Frederick Cottrell’s account of the formation of The Research Corporation, an innovative social venture that has been forgotten for its newness, spark, and intelligence: “The Research Corporation, an Experiment in Public Administration of Patent Rights.” There’s also Archie Palmer’s work on the development of university patent policies. The introductions to both his 1948 and 1962 compendia provide a clear overview of the debates over university involvement in patenting:

Survey of University Patent Policies, Preliminary Report, 1948
University Research Patent Policies, Practices and Procedures, 1962

Palmer’s collection of university patent policies also makes for interesting reading. And there is Vannevar Bush’s Science the Endless Frontier, a work that gets attention but seems to be one that people don’t read carefully, skipping over nuanced arguments in favor of reading into it what we have now (the NSF, loads of federal funding for university research, the gawd awful linear model that just won’t die) rather than for what Bush proposed (“free play of free intellects”, a National Research Foundation reporting to the president, nothing more than a royalty-free license to the government).

And for the history of executive branch patent policies, including the Kennedy and Nixon executive branch patent policies and the 1968 Harbridge House report, this collection of materials is the place to start: Background Materials on Government Patent Policies. 

For Bayh-Dole related materials, the “Bayh-Dole Central” web site at the University of New Hampshire collects papers and documents of Howard Bremer, Norman Latker, and Bob Dole, with a link to the papers of Birch Bayh, which have been transferred to Indiana University. There you can find IPA template agreements, legislative history, and statistics on the relatively lousy performance of university patent agents in trying to license federally funded inventions. Only parts of the collection are arranged by date. Most everything rewards the reading.

If one wants a clear account of Bayh-Dole in its context, two works come to mind:

David Mowery, Ivory Tower and Industrial Innovation: University-Industry Technology Transfer Before and After the Bayh-Dole Act.

Rebecca Eisenberg, “Public Research and Private Development: Patents and Technology Transfer in Government Sponsored Research.”

Ashley Stevens was super wrong about the Bayh-Dole Act as law and cites unfounded proxies to claim its success, but he provides a useful account of the machinations behind getting the Bayh-Dole Act passed in “The Enactment of Bayh-Dole.” Keep in mind that accounts such as Stevens’s trace just one side of how Bayh-Dole comes about and provide political cover and talking points that suppress the other side, the motivation to find a way to circumvent executive branch patent policy in order to ensure access to monopoly patents based on federally funded research in medicinal chemistry wherever in federal government or nonprofit research that federally funded research might take place.

The US Supreme Court decision in Stanford v Roche (2011) provides an important interpretation of Bayh-Dole–perhaps the interpretation–one that renders almost every academic article and university technology transfer site’s account of the law obsolete, if not misleading. The amicus briefs in the case are telling. The AAU/AUTM amicus brief is notable for its utter failure to speak to the issue and instead talks around it–how wonderful the law is, how the world would end if Bayh-Dole did not vest rights in universities, how loathsome are university inventors in all of this. Senator Bayh’s amicus brief lays out the faux Bayh-Dole Act in all its glory, with inventors coming last in the pecking order–an argument that the Supreme Court rejected. Sean O’Connor’s amicus brief for the AIPLA appears to have played a significant role in shaping the Supreme Court’s interpretation of “of” in the definition of subject invention. And of course, there are the amicus briefs by BIO and IP Advocate, IEEE and AAUP, that argue the position that the Supreme Court eventually took–notably BIO parted ways with AUTM on this case, just when we thought the two organizations were joined at the hip forever.

For technology transfer, I admit I am partial to Robert Miller and Bernard Le Boeuf, Developing University-Industry Relations: Pathways to Innovation from the West Coast. The book covers a number of approaches for using technology transfer to do something really valuable–creating working relationships between universities and companies. That is, converting invention intangible assets into relationship intangible assets. Money is valuable, but relationships are invaluable. I am also fond of the moderately polemical glossary at the back of the book.





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