Over the past couple of years, I have been involved in projects based in the idea of commons for the exchange of research and diagnostic assets. These projects have been blocked or resisted at each point by organizational technology transfer officers. In one project, it was clear that the tech transfer office vastly prefers trying to make money from patents than to let physicians share information that might help them better diagnose their patients. In another, the technology transfer officers cannot figure out how to read their own IP policy (or Bayh-Dole) and so are helpless (and courage-less) to acknowledge practices in the open source communities. Instead, they claim that they would violate policy to permit software developers contribute to open source projects, even as they acknowledge that software developers are indeed contributing to open source projects, policy or no policy. Whether it’s open source software, or circulation of materials under a Creative Commons license, or open hardware, open wetware, BioBricks or dedication to a patent public domain or copyright public domain–or both–university administrations have things to do to extract themselves from the hell hole of patent monopoly rent-seeking instead of supporting effective technology transfer.
Here are five things that university officials can do to return their technology transfer programs to at least modestly effective practices–and ones that are highly aligned with academic freedoms of research and publication and with entrepreneurial initiative.
1. End institutional support for AUTM
This one may seem weird, but it is the necessary starting point for an institution to regain control over its IP practices. AUTM was created (as SUPA, long ago) to spin up the appearance of organized university support for federal legislation (eventually, the Bayh-Dole bill) to turn university-based voluntary technology transfer into compulsory patent monopoly rent-seeking. AUTM has repeatedly blocked initiatives to give university inventors and authors greater freedom in how they deploy their work. AUTM was on the wrong side of history in Stanford v Roche, rallying university lawyers with a losing argument that university inventors should be disenfranchised of their inventions in favor of university-affiliated patent bureaucrats all hot and out of breath to do exclusive patent licenses with big pharma. AUTM repeats political spin as historical fact, sponsors economic models that produce outputs they haven’t bothered to validate and repeat cherry-picked bits of that output as economic fact, and they argue that Bayh-Dole somehow mandates the very approach to technology transfer that they practice–even though Bayh-Dole does not do that.
A university’s TLO will never get itself turned around so long as its professionals are members of AUTM, with their memberships paid for by your university, along with all their AUTM conferences and workshops. If a university wants to get a clean start with open innovation practices of all sorts as the starting point rather than a fringe, covert, policy disobedience that’s tolerated but not well supported (most places), then end support for your TLO slurping at the AUTM bung hole.
If you need a public reason, try this. AUTM is a lobbying organization, sending letters to federal agencies advocating for changes in law that advance patent monopoly rent-seeking in place of technology transfer. AUTM itself is a front to pass money on to things such as the “Bayh-Dole Coalition,” which manipulates the press and social media to propagate, oh gosh, political spin as fact to deceive policy makers. It’s fine for political organizations to spin all they want. It’s not fine for universities to be out giving money for such spin without accounting for it. So just end support for AUTM memberships and conferences. AUTM activities are not consistent with effective technology transfer–even if they are consistent with building a bureaucratic empire on compulsory, overreaching claims of university ownership of IP and non-IP. If you want to be rid of patent-monopoly rent-seeking, then AUTM is the first thing that has to go. Anyone in the TLO complaining that they have to pay out of their own pockets to be a member of AUTM is a good way to identify the folks that ought to find new work. Tell your TLO staff to start attending conferences that companies attend, that your faculty attend. Those conferences are not AUTM conferences.
If AUTM ever changes its ways–stops its political lobbying, reforms its licensing survey to be less overtly deceptive, gets honest about outputs, and supports a diversity of IP policy practices–then think again of restoring university support. But now, and until then, get out of AUTM welfare. It’s not good for your university, and you will never get to an open IP policy while your TLO is addicted to AUTM.
2. End IP policy claims to university ownership of IP and non-IP assets
IP ownership claims are now metastatic in university policies, so you will have to look at patent policy, copyright policy, consulting and outside professional work policy, ethics compliance policies, policy on startups, and research contracting policies.
A good starting point for the change will be with faculty governance–such as a faculty senate or a faculty union. Take it slowly. The idea of academic freedom is so close to being lost that at first faculty folks might fight you about it. There’s a set of faculty that feel that the clinicians and engineers (and anyone else in an invention and venture hot environment) would rip off the university if they were given the chance to own the IP in the stuff they make and discover and collect. Work with them. Help them to understand that despite the illusion put out by the TLO that they are making money for everyone, the situation is much less rosy.
Most inventions go to the TLO to die, suppressed by the load of patent-monopoly rent seeking–a default effort to secure patents and for each an exclusive licensee. The seeking sometimes happens, the exclusive deal rarely happens, and even then there’s no guarantee that an exclusive licensee will do anything with the licensed invention. So, yes, there’s money to be grubbed, but one deal a decade can be used to make the TLO appear to be doing lots of lucrative deals, when it just isn’t.
Big money for a decade or two can make university administrators happy for the windfall and not care about all the inventions and non-inventions that get suppressed in the effort to find that one big hit deal per decade (or two). It’s not technology transfer. It’s not effective. It’s not aligned with academic values and what makes academic creative work distinct–that it has smarts (generally) and it isn’t aligned with any particular institutional agenda (if the institution keeps its mitts off), or government agenda (though often it is, now), or industry agenda (though it could choose to be, and does sometimes).
End the compulsory university ownership part of university IP policy (and other policies) and you begin to see how aligning with individual choices provides a tremendous new role for university TLO efforts.
First, making participation in TLO activities voluntary pushes the TLO to show real value for each “technology” that it agrees to take on. The TLO has to be better than *nothing*, at least, which is a greater standard than TLOs in compulsory IP regimes are used to. It will take them some time to get used to the new reality.
Second, leaving ownership of IP (and non-IP) with those that discover, and create, and author, and collect stuff means that the university is not obligated to track and record and attempt to manage all that stuff. The universities I have worked at (California, Washington) have spent millions of dollars trying to create databases to manage all the research debris that their compulsory policies demand come to the TLO.
Third, when inventors own their inventions, the problem of “background” rights spread out through the rest of the university no longer is the university’s problem. An inventor dealing with her invention does not implicate anyone else’s stuff, and doesn’t implicate the university directly either. The patenting is a private problem. The legal advice is a private problem. The marketing and drafting and dealing–same thing, private not institutional. Sure, the institution might be there to authorize support in the public interest–but that support does not have to depend on ownership of inventions. If a university can pay for its employees to be members of AUTM, an organization from which the university derives little benefit, then the university can fund patent applications or legal support for its inventors and other asset-makers. It’s just a matter of identifying channels of support that work. If inventors need help, there are all sorts of organizations that might assist them. The university TLO is one. But there are plenty of others–let them have their role, too.
Fourth, going voluntary weeds out a lot of debris heading to the TLO. In a compulsory policy regime, people present stuff because they have to, and see no alternative. You get a lot of noise disclosures just because people are forced to under the implicit threat to their reputations if not careers. Not disclosing can be twisted to appear “unethical” and a “personal conflict of interest.” I’ve seen TLO folks argue that releasing software open source gives programmers the opportunity to make money consulting on the code, denying the university the income it would have gotten from licensing. It’s a hoot of an argument since most universities couldn’t generate a dime from codes that go open source.
In a voluntary policy regime, people present stuff to the TLO because they choose to. That’s a huge, positive starting point that can’t be overemphasized. When people choose the TLO, they have chosen to share licensing income with the university. When others see that choice, they recognize that they have colleagues looking out for the university in this way. Go compulsory, and all that good will is destroyed, as if it did not matter. It’s ugly to go compulsory, unthinking, bureaucratic–so unwind the compulsory requirement.
All that an IP policy needs to do by way of ownership is to authorize the Vice President/Provost/Chancellor of Research to allocate various university resources in support of technology transfer, and to accept ownership or (maybe) a financial interest in work distributed or licensed by someone also at the university. If one wants to handle edge cases, then include a provision that the university can commission work via a written agreement outside of anyone’s other “duties” (for the university) or “activities” (as scholarship and the like), with its own premises, consideration, and the like, with the university owning resulting work product. Fine. Add that. Now you’ve got most everything covered–of the assets that can be owned. A lot of tech transfer does not involve owned assets. It involves NIPIA–non-IP intangible assets. By making an ownership policy compulsory, one strips out a whole lot of NIPIA in the form of personal goodwill, reputation, support, collaboration, and network effects that spring from such things.
Changing the IP policy will also get rid of the abusive practice of making it appear that faculty have agreed to something simply because the IP policy says they have. Add as well getting rid of the compulsion to assign that violates the part of university policy that assures faculty that freedom of research and publication are fundamental to the university, and getting rid of the unconscionable overreach of IP policy to claim more than just those inventions that the university has an equitable interest in based on the circumstances. Remove these abuses, and you have an IP policy that is ready to provide support for innovation, not a premise for bureaucratic thumbs to soil every opportunity.
In many university IP policies, the change is as simple as turning “shall” into “may.”
University of California
An agreement to assign inventions and patents to the University, except
those resulting from permissible consulting activities without use of
University facilities, shall be mandatory [voluntary] for all employees, for persons not
employed by the University but who use University research facilities, and
for those who receive gift, grant, or contract funds through the University.
Such an agreement may be in the form of an acknowledgment of obligation [opportunity]
to assign.
And then:
I acknowledge my obligation [opportunity] to assign, and do hereby assign, inventions and
patents that I conceive or develop 1) within the course and scope of my
University employment while employed by University, 2) during the course of
my utilization of any University research facilities, or 3) through any connection
with my use of gift, grant, or contract research funds received through the
University.
University of Michigan
Regents Bylaws:
Unless otherwise provided by action of the Board:
A. Patents and copyrights issued or acquired as a result of or in connection with administration, research, or other educational activities conducted by members of the University staff and supported directly or indirectly (e.g., through the use of University resources or facilities) by funds administered by the University, regardless of the source of such funds, and all royalties or other revenues derived therefrom shall be [may become] the property of the University.
B. Computer software created by members of the University staff in connection with administration, research, or other educational activities supported directly or indirectly by funds administered by [expressly commissioned] by the University in writing, regardless of the source of such funds, shall be [may become] the property of the University. Such computer software may be made available for use on a nonexclusive basis by those who pay appropriate charges to reimburse [and] the University [may charge a fee] for the costs of development, distribution, and reproduction.
And then to the patent policy:
Intellectual Property made (e.g., conceived or first reduced to practice) by any person, regardless of employment status, with the direct or indirect support of funds administered by the University (regardless of the source of such funds) shall be [will not] become the property of the University, except as provided by this or other University policy [unless the University has expressly requested ownership in writing and has commissioned the work or authorized the use of funds or resources substantially beyond those ordinarily provided by the University.]
Rutgers
However, it is the obligation of the inventor to [may] disclose his/her invention or discovery, including improvements and reductions to practice, to the University in accordance with this policy[, preferably] before disclosure is made of research results by publication or through any other medium.
All persons who are subject to this policy are required to [may] assign their individual
rights to inventions, discoveries, improvements, and reductions to practice to the
University, including, without limitation, United States and foreign patent rights and the
right to claim priority under the terms of any international patent agreement.
You see, it’s easy. Some of these policies are a stinking mess, so actually editing them gets into the ick, but it’s so worth it. Make participation in TLO-mediated technology transfer voluntary. It’s the right way, the effective way. It’s even a lucrative way, if that’s what turns your head. Choose freedom. Do it.