AAU, APLU, and others aim to “bolster” federal technology transfer, 5

Higher education associations, led by AAU and APLU, give advice to NIST about ways to bolster federal technology transfer by telling NIST about non-federal university technology transfer. The HEAs have insisted that Bayh-Dole has been working as intended, which we may take to mean that the HEAs are pleased with most inventions faltering behind university patent paywalls, sky high prices for those few university inventions that become successful prescription drugs, and metrics on patents, startups, and jobs creation that are presented to look impressive but on closer inspection are unvalidated, paltry, and not specific to federally supported inventions. But it’s all good if one is bluffing for political ends. No one should expect the truth, even from HEAs.

The AAU and APLU convened working groups to study university technology transfer. They found, after extensive study, that university technology transfer should serve the public interest. We were astounded. But there was more–the AAU and APLU went on to offer suggestions to their university members:

The two associations urged university leaders to embrace the role of university technology transfer in promoting innovation and economic prosperity. These recommendations included: . . .

Wait for it…

  1. write better mission statements
  2. restrict university licensing inventions to patent trolls
  3. create new metrics that focus on economic and societal impact

Well now, that’s work well done. A new mission statement will help bolster those flagging, under funded, but wildly successful university licensing operations. Bayh-Dole should be “tweaked” to require better TLO mission statements. NIST should make sure all federal laboratories have a clear mission statement that embraces promoting innovation and prosperity. That should do it. We are all set.

That may be a great gap in Bayh-Dole. Bayh-Dole doesn’t require universities to have invention licensing mission statements at all. Without a carefully wordsmithed mission statement, how would technology transfer professionals know what to do? What would companies hoping to deal with university licensing offices expect? Bayh-Dole does not even require a university to have a patent policy or even to present the results of its licensing efforts for review. At least the IPA program required a review of university policies and licensing practices as a pre-condition. Perhaps, according to the HEAs, better mission statements will bolster new technology adoption based on dealings in patent monopolies. But, snark aside, perhaps university licensing practices would change, would improve, if universities published exactly what they have done with each invention they have claimed to own. That is, “be transparent”–meaning, publish the data, rather than bullshit, and own what your people do rather than hide behind averages and goofball economic models.

The HEAs then cite a National Research Council report on university technology transfer:

The NRC report describes the successes of university technology transfer after the enactment of the Bayh-Dole Act

Here’s what the NRC report says, in summary, about Bayh-Dole:

By most accounts, the Bayh-Dole Act of 1980 (P.L. 96-517, the Patent and Trademark Act Amendments of 1980) together with a number of important changes in the patent system has stimulated extensive patenting and licensing activity among research universities in the United States.

And even here, the NRC merely repeats what other accounts say, without stating a fact. As David Mowery has shown, university patenting was growing before Bayh-Dole and continued to grow at about the same rate afterwards. Any search of the PTO records shows what Mowery has pointed out. More:

Although a substantial amount of research has centered on this means of transferring technology developed by university scientists and engineers, there is a lack of consensus about the intended and unintended effects of university management of technology transfer and the lessons learned from more than three decades of experience.

Although many accounts claim Bayh-Dole has stimulated patenting and licensing, there isn’t a consensus about the effects. That’s not “describing the successes.” More from the NRC report:

Although the system created by the Bayh-Dole Act has remained stable, it has nevertheless generated a good deal of debate about whether it is as effective as it could be and whether it has produced unintended effects that are adverse to other modes of technology transfer and even to the norms of the university community.

and this:

Although the Bayh-Dole Act is effective in its primary purpose, its implementers have failed to establish a stable, effective framework for government oversight.

and this:

institutional reporting has been judged by the Government Accountability Office to be incomplete and access to the data is severely restricted.

And the typical fake history and misrepresentation of Bayh-Dole:

The system put in place by the Bayh-Dole Act, that is, university ownership of inventions from publicly funded research and latitude in exercising associated IP rights subject to certain conditions and limitations, is unquestionably more effective than its predecessor system—government ownership subject to waiver in circumstances that varied from agency to agency—in making research advances available to the public.

The NRC report came out the same year as the Stanford v Roche decision and doesn’t take into account the Supreme Court’s correction of the widespread university claim that Bayh-Dole gave universities rights to federally supported inventions. The predecessor system included the IPA programs in the NIH and NSF, which permitted upfront university ownership on demand for inventions that a university had decided to patent. Over 70 universities and nonprofits were in the IPA programs–pretty much everyone who had any significant NIH or NSF research awards. The predecessor system for universities provided broad opportunities for university ownership of inventions without agency review. Some agencies–DOE and NASA, for instance–operated under statutes that required federal ownership but the DOE in particular had worked to expedite post-disclosure review of inventions for contractor ownership. Bayh-Dole does not give universities any special ownership rights to inventions made in projects receiving federal support, and arguably (if the patent rights clause were ever enforced) would limit the ways that a university could obtain ownership of such inventions.

And finally, after a lengthy discussion on university licensing–including that only 0.5% of university inventions ever earn cumulatively $1m–meaning, basically, that fewer than 0.5% of these inventions actually result in practical application or a commercial product–we get this:

Although there are notable exceptions (e.g., discoveries instrumental to the development of new blockbuster drugs and royalty streams or other payments to universities), in the large scheme of things, licensing transactions have not been of high near-term economic value to either universities or businesses.

So much for the HEAs’ claims for the economic impact of university licensing.

The NRC report is not really a rousing endorsement of the successes of university technology transfer. The NRC panel concludes that there’s no good evidence for anything much better than Bayh-Dole, other than the idea to give faculty inventors greater autonomy–something that is actually buried deep in Bayh-Dole, though plenty of people who advocate for Bayh-Dole don’t want to see it.

The HEAs continue, repeating the ubiquitously repeated fake history constructed for Bayh-Dole:

Prior to BayhDole’s enactment, inventions developed with government funding in most cases were owned by the government.

Nonsense. IPA program for universities–NIH and NSF–allowed university ownership. That was all that mattered. But here’s an even more important point–when the federal government did acquire ownership of an invention, it almost always made that invention available to everyone–royalty-free, if not dedicated to the public domain. No one bothered much even with the formalities of licensing. Only in rare instances were such inventions formally licensed. The federal government used the patent system to publish inventions–the primary Constitutional purpose the patent system–in an established formal reference archive.

For biomedical inventions, prior to Bayh-Dole, the federal licensing rate was 23%–comparable to the best university rates for non-federal inventions and at least 2x the university rates for IPA inventions. What’s more astounding is that the other 77% of federally owned inventions were made broadly available–exactly the opposite of what generally happens when a university or other institution acquires ownership. Even if the licensing rate is the same, the effect of practice on all the non-licensed inventions is entirely opposite.

The HEA approach is to build policy on fake history and for decades of political bluffing. Hey, it worked then. The IPA program was shut down for being ineffective and doing sweetheart deals with pharma. Bayh-Dole revived the monster–crazy wild more of the same.

And, in 1980, fewer than 500 patents were granted to U.S. universities.

That’s because in 1980, most universities allowed faculty inventors to publish rather than patent, and when they inventors did wish to patent, university administrators referred the inventors to Research Corporation or an affiliated university research foundation–or the invention went to the federal government for disposition, in the case of federally funded research outside the widespread IPA programs of the NIH and NSF. Only a few universities directly owned inventions and sought patents. Even so, in 1980, 22% of university utility patents cited govt funding. In 1990, 24% did. Whatever growth there was in patenting appears to follow increases in research funding, but Bayh-Dole had no remarkable effect–and why would anyone expect to see an effect since most universities that mattered had been in the IPA program for nearly a decade before Bayh-Dole was passed. Yes, university patenting increased. There was more extramural research, more invention reports, and university administrators became *less selective* and *consulted industry less* before patenting.

The data discussed above show that Bayh-Dole has had a deep and far-reaching positive effect, both in the U.S. and globally.

Nonsense. Nothing of the sort. The data doesn’t even show Bayh-Dole was the cause of increased university patenting. Slope of the increase is the same before and after. And besides, the HEAs’ data does not distinguish federally supported inventions from other inventions. A majority of university patents don’t involve federal funding or Bayh-Dole. The HEAs want readers at NIST to delude themselves and act on data that is not evidence for the HEAs’ claims. It’s all good as bluff and bullshit, but is it HEAs’ intent that the university contribution to NIST’s deliberations should be bluff and bullshit? Apparently so.

Numerous examples of innovations from university laboratories have had a tremendous, recognizable impact on our daily lives, including 3-D virtual colonoscopies, cochlear implants, the CAT scan, the seat belt, e-ink, plasma screens, and lithium-ion batteries.

The HEAs give no source for these claims. But the HEAs have moved far afield from Bayh-Dole. First they switched to university owned patents, without distinguishing the minority of those patents were subject to Bayh-Dole. Now they move to “innovations” rather than “patentable inventions” and shift even further away to merely stuff “from university laboratories”–doesn’t have to be inventive, patentable, or federally supported. NIST asks for ideas to improve federal technology transfer and the HEAs go off talking about universities.

Even so, the HEAs cannot seem to get things right. CT scanning was invented in 1972 by a UK scientist, using theory published in the early 1960s. How about seat belts? The first US patent was issued in 1885. Perhaps Bayh-Dole works even backward through time! I won’t even go into why we would care about virtual colonoscopies–real ones would appear to be the ones with the bigger impact, and colonoscopy was developed at Beth Israel Medical Center in New York in the late 1960s and early 1970s–not in a university laboratory. As for the cochlear implant–that was the work of William House in the 1960s. House did not work in a university laboratory and never sought a patent. But the HEAs want readers to think otherwise.

It’s true–an early patent for materials used in lithium ion batteries was issued to MIT in 1977, and that’s wonderful. Furthermore, the patent recites federal funding. And this is pre-Bayh-Dole, back when according to the HEAs all such inventions were owned by the federal government. The MIT inventor was John Goodenough, but he invented the lithium ion battery while at Oxford University in 1980 (and in which Oxford apparently asserted no claim). After that, he has worked at the University of Texas–where his key lithium ion inventions were supported by private funding. But to make a viable battery, inventions were also needed from other inventors, who weren’t at American universities, such as Rachid Yazami, who did his lithium ion battery work at a national laboratory in France. And the work to create a commercial product was undertaken by Sony after a joint venture with Union Carbide fell through–with a first product, a lithium-ion rechargeable battery, introduced in 1991. I can find nothing that indicates that Sony licensed MIT, Goodenough, or Texas patents to create their lithium ion battery–Sony scientists and engineers developed their own inventive technology.

Look, for any area of modern technology, there are hundreds to thousands of patents, and even more publications that contribute ideas and data. According to the USPTO database, 2,087 US utility patents with “lithium” and “ion” and “battery” in their abstract have issued since 1977. That’s just a subset of the patents involved. Of these, 206–about 10%–are assigned to an assignee with university, college, foundation, or institute in their name; 84 cite federal funding, and 29 of those that cite federal funding are assigned to a university, college, institute, or foundation. 46 of these US patents with “lithium ion battery” in their abstract are assigned to Sony. It is clear that university research–and with federal funding–has played a role in the development of the lithium ion battery. But the story to be told is how the science and engineering accumulated expertise around the world and eventually a company with a pressing need–Sony, aiming to make a battery that would not when disposed of leach mercury into the environment.

The story–here a couple of paragraphs–shows that making the commercial product that has a “tremendous, recognizable impact on our daily lives” can just easily by-pass all those university-held patents. The research has been valuable–who knows what bits might become useful over time? But the HEAs’ story about lithium ion batteries is fake.

The Bayh-Dole Act authorized universities, medical schools, and other non-profit organizations to retain title to their federally funded inventions….

Only in the sense that if these institutions acquired inventions, they could keep them. Nothing in Bayh-Dole requires institutions to acquire inventions, nor if they acquire inventions, to keep ownership of them. “Retain title” means, exactly, that institutions may “keep title to whatever it is they already have” (to quote the Supreme Court on the matter). But the HEAs persist in ignoring the Stanford v Roche decision because, apparently, it does not suit them. Much better to bluff and bullshit when giving policy advice to the federal government.

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