University Patent Policy for Effective Technology Transfer, 1: Outline

Universities have never had patent policies centered on technology transfer. Not back when, not now. It should come as no surprise that universities don’t track technology transfer and don’t report their outcomes. What would a university technology transfer IP policy and practice look like? Let’s work the problem. From there, we can look at metrics. First, an outline. Maybe I will find the time to fill it out, piece by piece.

1. Current university patent policies are a mash up of past policies, following a line of administrative “reasoning” that historically has run counter to technology transfer practices. In short: keep patents out of the university; then, review patents and take a financial interest; then, take a patent ownership interest and bring licensing in-house for a better financial position; then require university ownership of all university-hosted IP for a better financial position; then federal law requires university ownership and commercialization. Oh, no? Oh well, compulsory institutional ownership is a good idea anyway, even if federal law doesn’t require it. That’s where we are. Doesn’t sound much like technology transfer. Research Corporation introduced “technology transfer” to refer to a university’s campus operations to identify inventions and prepare disclosures for submission to Research Corporation for possible management. The transfer was patent rights from a campus inventor to Research Corporation. The technology moved from inventors to companies, if and when Research Corporation arranged a license.

2. It’s weird, really, to think about needing technology transfer policy. In a way, such a policy is about how to keep an institution out of technology transfer. But for stuff by fate associated with an institution, policy helps to stave off bureaucracy and mitigate those who would dump the liability on the institution and harvest all the goodies personally. But as Dante had it, there’s no defense in a community for the intelligent fraud, so there are limits to policy. Don’t hire intelligent frauds. Base policy on confidence not distrust. Technology transfer is not merely patent licensing to create space for speculative investors to try to make commercial products for a lucrative return, calling that effort public benefit. Technology transfer moves technology–ways of doing things–to those who don’t know it but want it, or need it, or ought to have it, or would have fun if they did have it. The interest is not merely in inventions made by a university’s personnel but rather technology anywhere it may be found that might be used and conveyed to others. Not merely “research” to “product.” There are a number of drivers. Money is one. But so is power. And so is whimsy. And so is brokering. And so is doing things for others. And so is the pleasure of finding things out. Bureaucrats don’t get this, and write policies that value compliance and consistency. Those bureaucratic policies spend much time on money and authority but don’t end up supporting even the practices that would make money for a university, if money is the thing.

3. TTX IP policy. Three elements: no compulsory institutional IP claims, FRAND distribution default, no pre-declared royalty-sharing schedule–negotiate sharing for each project, if sharing is requested. Otherwise, income goes back to the project. The institutional resources join each project rather than extract IP from the project. A technology transfer policy is not designed to make money “for research” but to create an institutional resource for technology prospecting to serve audiences that would have a reason to adopt. Two key problems: (1) personal IP claims, esp against a project or research/educational use; and (2) commercial activity and management by individuals and their companies within a university. Can be addressed. A technology transfer practice will look like a mashup–part technology “library” and part “university press” and part “university extension (non-credit teaching)” and part “tech extension consulting (like ag extension). Add in IP management, open innovation practices, industry affiliates programs, subscriptions, memberships, consortia, and you are pretty much there.

4. How to get there. Repeal or moot existing patent policy. If you cannot do that, then carve out an exception for real technology transfer. If you cannot do that, then alter IP practice defaults–no university patent policy demands exclusive licensing or requires that a university own everything it is required to claim to own. If you have to fish, then catch and release. Rig for catch and release as the volume default activity. Build around technology projects rather than patents, around non-IP intangible assets rather than IP. The Project is the anchor intangible asset. A Project has intake, use, and dissemination functions. Prefer peer-to-peer networks. Develop FRAND template licenses specific to each project. Create financial management for intake/use/distribution practices. Self-sustaining where there’s no grant or donation or subsidy support; free, is a good target. Aim for 15% or less IP/finance/transaction administrative overhead.

5. Metrics. List and count of technology transfer projects. New projects. Retired projects. Download/checkout/service activity by project. Count of companies involved, by project, and total. Count of IP assets under project management, %local to university. Annual cash accounting per project. Annual cash accounting for the institutional “tech transfer” function.

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