Patents on ordinary inventions and subject inventions

Posted on September 27, 2016 by Gerald Barnett

We have discussed “of a contractor” in Bayh-Dole’s definition of “subject” inventions. But that’s not the only place in Bayh-Dole where we get restrictions that at first might look like mere repetition. Consider this passage from 35 USC 200, the statement of “Policy and objective”:

to use the patent system to promote the utilization of inventions arising from federally supported research or development

The part restricting the policy and objective to inventions made in federally supported research is clear. But look at the middle part–use the patent system to promote the use of inventions. What does this middle part do? If it is surplusage, then it merely states that one use of the patent system is to promote the use of inventions. But that means that we can just take the words out:

use the patent system on inventions arising from federally supported research or development

That would be a mandate to file patent applications on subject inventions. But that’s not what Bayh-Dole is about. Continue reading →

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Bayh-Dole’s management of title

Posted on September 26, 2016 by Gerald Barnett

There is no need for “of the contractor” in the definition of subject invention if a subject invention is just any invention made within the scope of a funding agreement. 

The US Supreme Court looked at the definition of subject invention in Bayh-Dole and held that “of the contractor” did mean something–“of” meant “owned by,” so “of the contractor” restricted the definition to those patentable inventions made with federal support that the contractor owned. The definition did not presume that the contractor owns all patentable inventions made with federal support. Just the opposite: the definition divides inventions into those that are owned by the contractor and those that are not owned by the contractor. The definition also does not operate to assign or vest all patentable inventions made with federal support to the contractor. It simply distinguishes between some inventions (those that are patentable, made within scope of the funding agreement, and owned by the contractor) and other inventions. The definition, appearing in federal patent law, makes patents on subject inventions a new category in federal patent law with its own boundaries of property rights, different from those of other patents.

The IPA approach worked this same territory, but did so with greater clarity. Continue reading →

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Saving Bush

Posted on September 25, 2016 by Gerald Barnett

Over at the Science of Science Policy discussion group, there was a brief flurry regarding Dan Sarewitz’s article in The New Atlantis, “Saving Science.” Here is what I posted in that discussion:

Militaristic research directors demanding disciplined obedience don’t appear to have done any better in advancing science than managerial ones fussing over merit and efficiency. Sincere research directors give impassioned talks about their sincerity, but that too isn’t of much help. Climate science is fully aligned with political goals–“post-normal” science and all–and so spins data and gins up models that produce the desired pronouncements in support of policy demands. Clinical research is well aligned with corporate interests, but John Ioannidis argues there’s little in the findings that’s right–or that’s useful even when right. We appear to have a well funded exercise in quantitative confirmation biases and halo effects. Continue reading →

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Has Bayh-Dole Been Successful?

Posted on September 24, 2016 by Gerald Barnett

I answered a Quora question a while back. I thought I’d repost it here. The question was:

Has the Bayh-Dole act been successful?

Just over 30 years old, the Bayh-Dole Act has set the path for most research universities and commercialization, yet few seem to really generate substantial revenue through its frameworks.

Gerald Barnett, IP specialist with major universities, 20 years dealing with BD

Written Aug 23

It’s a difficult question to answer. Here’s why. First, Bayh-Dole gutted public oversight that previously came with federally funded research. Reports on the status of inventions made with federal support claimed by universities (“subject inventions”) were made optional. A federal agency had to expressly ask for reports. And even then, Bayh-Dole exempts the reports from public disclosure law, so while the federal government might have the data on how all those subject inventions are doing, the public does not have access to that data, and universities don’t publish it. One might be able to get status data from public universities under state public disclosure laws, but expect a costly fight to do it.

So there are no real data available.

Continue reading →

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Georgia on my mind

Posted on September 23, 2016 by Gerald Barnett

At the University of Georgia, the Office of the Vice President for Research has a bizarre reading of the Bayh-Dole Act:

The Bayh-Dole Act, passed in 1980, makes it possible for the federal government to assign its patent rights to universities, which then have the obligation to pursue intellectual property protection and commercialization. Prior to Bayh-Dole, only a handful of universities had technology commercialization offices.

I have highlighted some text to consider.

federal government to assign. Yes, it’s in Bayh-Dole, but only with regard to inventions made jointly by contractor personnel and federal employees. Here’s 35 USC 202(e): Continue reading →

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Say so long to your abusive patent policy

Posted on September 22, 2016 by Gerald Barnett

Let’s be blunt. The compulsory, comprehensive, portfolio approach to university invention management is a disaster.

  • It has a rate of 0.1% to 0.5% producing new products.
  • It is 100x less effective than the approach it displaced.
  • When you try to use it to make money, you lose friends.
  • When you ever do make money using it, you lose friends.
  • You lose money unless you are lucky once a decade.
  • And most of you are unlucky: you are wasting your money.
  • It prevents research from reaching the commons.
  • It creates bitterness wherever it goes.
  • It is based on compliance, not confidence.
  • It has destroyed the private network of invention support.
  • It has displaced assistance with procurement.
  • It is expensive, complicated, next to useless.
  • It co-opts rather than encourages innovation.
  • It is built on a pack of lies.

Skip the unsupportable spin and happy talk and selective metrics and bullshit about Bayh-Dole and how innovation has to happen through commercialization–meaning lots of failed profit-seeking from patent positions. 1 product in 1,000 inventions, if you are lucky. Your lucky product has to sell north of $3b just for you to break even on your cumulative office costs. Fat chance. Isn’t it time you pull out of this abusive relationship? Don’t you hate coming into work each day, knowing that you live with a drunken patent practice that is destroying your life? You don’t have to be trapped on Grey Street. It’s time to change. You have to do it.

  1. talk to the faculty senate
  2. end compulsory ownership
  3. introduce public covenants tied to projects
  4. look to equities, not ownership
  5. let people pay you because they want to

‘Nuff said. It’s easy once you have the courage to act. Say so long to your crappy policy. And on the other side, there is a great sense of accomplishment, relief, restoration, focus. Oh, yeah, and the now funny, bombastic fuss of all the second-rate speculators you chased off. Good on you. Choose to do something for your people rather than be someone who climbs up through the organization. Do it. Stop living a dream believing things that just ain’t true.

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Change state law

Posted on September 21, 2016 by Gerald Barnett

Restoring voluntary assignment for university inventors is the first step in reconditioning university invention management–and putting that management on a road of development consistent with university mores and roles. Voluntary assignment can be accomplished a number of ways. I will outline a few here.

  1. correct interpretation of policy–often policies are drafted with a narrow scope on claims but that scope has been expanded by administrative interpretation
  2. change policy–often the change does not have to involve dramatic redrafting
  3. change acceptance practice in the IP office
  4. implement (f)(2) properly for subject inventions
  5. change state law (for public universities)

We have looked at a number of ways to restore voluntary assignment of inventions in university research enterprise. Let’s turn now to another approach to creating a voluntary invention assignment policy at universities. This time we will focus on state law and public universities.

Bayh-Dole has many defects. But one of its virtues is that it does not dictate to universities anything about whether they must own inventions made with federal support–subject inventions–or what they must do with inventions they do acquire, other than that they must use the patent system to promote practical application. Universities don’t have to own, don’t have to license, don’t have to license exclusively when they do license, don’t have to exclude research uses, don’t have to require a royalty, don’t have to even have a capability to manage patents, don’t have to have a patent policy. It’s all wide open for diverse practices, experimentation, and adaptation to changing conditions.

Universities have ignored all this freedom and rushed for a particular version of patent management–portfolio-based speculation on the future value of the patents, rather than agent-based efforts to place subject inventions so they may best be used. Continue reading →

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Common bits of faux Bayh-Dole bullshit

Posted on September 20, 2016 by Gerald Barnett

Faux Bayh-Dole has been de facto federal research innovation policy now for thirty-five years. The real Bayh-Dole is sketchy enough, but the faux version is downright vile. Here are some “truths” of faux Bayh-Dole that are, in reality, simply not true. We could call them lies, except those repeating them don’t think they are untrue. They don’t have a regard for the truth–thus, it’s what Frankfurt would call “bullshit.”

As one senior university official blithely told me with regard to a compliance requirement (in that case, implementing the (f)(2) agreement), “We will do that when the feds tell us we have to.” And that was 1989. That’s the attitude university officials take to all of Bayh-Dole–the only parts they “enforce” are the ones that make it appear that they have a right to take any invention they want–either because Bayh-Dole requires or permits it, or because if they don’t then perhaps in some strange way they might not comply with Bayh-Dole, or because inventors might not realize that something is inventive and so would fail to comply with Bayh-Dole.

So the middlemen take all inventions, patentable or not, and pin it to compliance with Bayh-Dole. But it’s faux Bayh-Dole. And the feds have let it happen. Either this is what they, too, desire, or they just don’t care. Either way, it bodes ill for universities, research, and innovation.

Here are some common bits of faux Bayh-Dole bullshit. Together, the faux bits form something of a religious belief system, a sect of middlemen, as it were. Continue reading →

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Would an Apple and Broadcom v Caltech case deliver a second pounding to faux Bayh-Dole?

Posted on September 19, 2016 by Gerald Barnett

[Yes, you read the title correctly–Apple and Broadcom should be suing Caltech.]

In Bayh-Dole, the public covenant that runs with patent rights in subject inventions is not as well developed as it was in the Institutional Patent Agreements. It is still there, but it has been broken up into pieces to make it more difficult to reconstruct. In the IPA approach, federal contracts are made within the framework Kennedy’s Statement of Government Patent Policy. Bayh-Dole’s framework is 35 USC 200–“Policy and objective.” It’s just that the relationship between section 200 and the rest of Bayh-Dole is not made express. It’s easy enough to read section 200 as a rationalization for what follows, a set of hopes for the law rather than a policy framework that contracting and practices must stay within. But if section 200 is read as a rationalization, then it is mere surplusage, adding nothing to the law.

It is important that section 200 is placed in federal patent law, unlike Kennedy’s Statement, which is a directive of government policy. The connection between section 200 and the standard patent rights clause that Bayh-Dole authorizes comes by means of a restriction on the property rights available to the owner of a patent owner. Here is the basic calculus: Continue reading →

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The Public Research Patent Covenant–Narrative Version

Posted on September 18, 2016 by Gerald Barnett

The Institutional Patent Agreement approach to patent rights arising from federally supported research carried with it what we may call a public covenant, a set of conditions that run with each patent on a subject invention that place limits on the property right represented by the patent. Over 70 research universities eventually adopted the IPA scheme before Bayh-Dole dismantled it. If we made the argument in prose rather than in the form of legal clauses in a master agreement, the IPA public covenant looks something like this:

The federal government supports research at universities which may result in patentable inventions and discoveries. That research may expand the frontiers of science or solve problems faced by the public, such as in public health or national security. The public interest is generally served when the results of such research are published and made broadly available for use and development, including the creation of commercial products.

The federal patent system is based on the premise that inventors, if they enjoy for limited times exclusive rights to their inventions, will promote the progress of the useful arts by developing their inventions and introducing them into public use. Thus, it is expectable that patents may play a beneficial role in the development of inventions supported with federal funds designed to improve the capacity of universities to support research in the public interest.

The patent system, however, is not perfectly suited to the specific objectives of federal funding. Continue reading →

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