Choose Your Open Source License

Posted on September 16, 2016 by Gerald Barnett

There’s a useful guide at GitHub for choosing an open source license. The guide presents a developer with three distinct options:

github1

These capture three common, primary concerns that show up once one has made the decision to be open with one’s source code. Simple, permissive licenses include MIT’s (which GitHub links to) and the BSD license (which GitHub doesn’t note). Open licenses that address patents include Apache 2.0 (GitHubbed) and OSL 3.0 (not GitHubbed) and GPL 3.0 (GitHubbed in the next category). If one wants to ensure that improvements, if made public, are shared on common terms, then the GPL 3.0 is a good choice (though there are drawbacks as well).  Continue reading →

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The IPA Public Covenant

Posted on September 15, 2016 by Gerald Barnett

[revised to add a discussion of Kennedy’s patent policy statement and distinguish it from COGR’s account of it; added an account of the various federal agency approaches to ownership of inventions]

Advocates for Bayh-Dole practice odd forms of historical revisionism. They claim that until Bayh-Dole, universities weren’t involved in patent commercialization–which is only deceptively true. Before Bayh-Dole, nearly all universities weren’t involved–as institutions–because administrators in those days were smarter than they were greedy and pushed patent work to external invention management agents. And when universities did take ownership of patents directly, often they did so to ensure broad access to everyone–so “commercialization” was not the objective, especially if “commercialization” means “profit-seeking monopoly licensing to the exclusion of research uses.”

And “commercialization” may–and does–take place in ways other than setting up a monopoly in which one company or one group of investors sets out to dominate a market–and has to come up with the money to do all the development in isolation. The idea that a monopoly is necessary as a remedy for “market failure” is just a goofy policy meme that gets retold around administrator campfires. It’s just that most administrators believe what they hear around those campfires, or at least believe that they will suffer ridicule, lose their jobs, and grow warts if they don’t at least pretend to believe the meme. The warts bit, no doubt, is true.  Continue reading →

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Faux Bayh-Dole Central

Posted on September 11, 2016 by Gerald Barnett

The Association of University Technology Managers sponsored “Bayh-Dole Central,” (now the “Bayh-Dole History and Research Central”), a site hosted by the University of New Hampshire School of Law and devoted to the Bayh-Dole Act. There you can find all sorts of papers provided by Howard Bremer, Norman Latker, and Joseph Allen, along with Senators Birch Bayh and Robert Dole–the “founding fathers” as the site calls them. It’s good reading, the organization is a work in progress, and the site does a great service to make the documents available, but the picture that emerges is less the heroic effort to pass the Bayh-Dole Act as it is the politics of happily spinning an idea about advantageous  policy to create a law designed by and for middlemen–for patent administrators–to pass patent monopolies created from university research to the pharmaceutical industry under the guise of serving the public interest better than could the federal government.

Consider the head note at Bayh-Dole Central:

The Bayh-Dole Act or University and Small Business Patent Procedures Act is United States legislation dealing with intellectual property arising from federal government-funded research.

Of course, Bayh-Dole does not deal so generally with “intellectual property.” Continue reading →

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They just can’t kill the beast

Posted on September 2, 2016 by Gerald Barnett

After the Supreme Court ruled in Stanford v Roche, Joe Allen and Howard Bremer wrote an article (“After Stanford v Roche: Bayh-Dole Still Stands“) in which they asserted that they had argued against the idea that Bayh-Dole vested with contractors ownership of inventions made with federal support:

When the vesting argument first raised its head, we warned that the theory was not supported by the Bayh-Dole Act, or its legislative history, which we were directly engaged in creating. It will never be known what might have happened if the vesting argument had not been put forth.

It may be true that that Allen and Bremer warned folks about the problems with the vesting theory. Nobody listened. Not AUTM, not WARF, not COGR, not any of the universities or university systems or research foundations that weighed in. Not the US Solicitor General. Not even Senator Birch Bayh. I don’t find it at all plausible that they warned anyone–but perhaps Joe Allen can document his warnings to AUTM or COGR or Senator Bayh and set us all at ease on that point. And it is of course true that vesting is not supported by Bayh-Dole. But the rest of Allen and Bremer’s statement is pure political porn.

First, Allen and Bremer for decades led the claim that Bayh-Dole was a vesting statute. Second, their warning about “vesting” appears to play with an idiosyncratic notion of the definition of “vesting.” Third, a year after their political porn article, they were back at the vesting idea, despite Stanford v Roche. Let’s look at how these folks have operated, and how they have misrepresented Bayh-Dole.  Continue reading →

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Bayh-Dole, the franken-sausage god

Posted on August 31, 2016 by Gerald Barnett

The full title is:

Bayh-Dole, the franken-sausage god
that destroyed private initiative and the federal research commons,
eliminated subvention from university research policy
and failed to create a public covenant
to use research inventions to develop new products and
create new industries
but did a super-duper job of building a new bureaucracy and creating many profitable opportunities for speculative monopolists

Bayh-Dole was all but written by the folks running the university research foundations–especially Howard Bremer at WARF. They knew exactly what the deal was with university patent policies, how assignments to research foundations worked, and how the IPAs operated–and what they liked about the IPAs (ownership) and didn’t like (federal review of their licensing capability and programs, limits on exclusive licensing, march-in).

Alienation of inventors

The problem the university folks had in shaping Bayh-Dole was how to move from a negotiated contract position in the IPAs that allowed universities or their designated invention management organizations to take ownership of just those federally supported inventions a university chose to patent and instead make university ownership of all federally supported inventions simply a condition of federal law–changing patent law to require inventions simply to vest with the federal contractor outright, no assignments or university choices necessary.

The university patenting people wanted to be told by the government that they, rather than inventors, should own inventions made with federal support. They wanted to grant licenses to the government rather than allow inventors to do so. They wanted to decide whether patents should be sought. They didn’t want inventors or federal officials to do so. They wanted to decide when a patent should be licensed exclusively, and for what payment, and they didn’t want federal agencies asking them to account. And they wanted the practices they preferred for biomedical technology to be endorsed as uniform policy for all inventions, regardless of industry or market or public policy. So they had to find a way to put these things into the appearance of Congressional intent, rather than their own intent.

It’s not that there weren’t problems with federal administration of research inventions before Bayh-Dole. There were. It’s just that Bayh-Dole was not built to remedy these problems–it was built to exploit the perception of problems in order create a huge private entitlement that harvested the ideas of university faculty and fed them into new a patent licensing bureaucracy that in turn developed a preference for speculative monopolists and troll litigation. Of course, they would use different words, involving the awakening of the entrepreneurial spirit at universities to develop research inventions in the public interest by creating incentives for the private sector to invest in developing federally funded discoveries and so bring them to market to create jobs for Americans and benefits for Americans, restoring America to a leadership position in innovation, envy of all the world. Or something like that.

Senator Bayh in his amicus brief in Stanford v Roche was adamant that the drafters never needed an assignment requirement because they intended for inventions to vest with contractors and that is how the law actually works. Continue reading →

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Senator Bayh’s inventor-loathing faux Bayh-Dole Act

Posted on August 28, 2016 by Gerald Barnett

There has been plenty written about the practice lesson taught by the Supreme Court decision in Stanford v Roche. I’m dismayed how much of it shows no evidence of an awareness of the facts of the case and the primary documents. In a way, it’s just academic and legal bullshit, offered to scare up new business. In another way, though, it is a symptom of folks who really want more institutional (or corporate) control over inventors and their intangible assets, mostly so they can speculate with those assets. It’s a strange way to advance science or encourage technology change.

The problems with Bayh-Dole are not merely those of poor reading abilities by academic and legal folks–though that is a problem, too. The purported authorities on Bayh-Dole led the effort to install a faux version of Bayh-Dole in place of the law that was enacted and implemented. Seventy plus universities along with their front organizations, Senator Bayh, and the U.S. Solicitor General all weighed in on the case with amicus briefs to the CAFC and SCOTUS, asserting that the faux Bayh-Dole was law, that Bayh-Dole without having to actually say so handed rights to patentable inventions to federal contractors.

None of these folks could agree on just how Bayh-Dole worked–a right of first refusal, a second right of refusal, a presumption of ownership, vesting of ownership on election to retain title, vesting of ownership on notice to the government of election to retain title, a prohibition on inventors assigning to anyone but the university, or automatically by operation of law. The pure variety of sober-faced accounts of how Bayh-Dole must operate argues for the conclusion that it’s all made up. And it was all made up. The faux Bayh-Dole was created by picking, presuming, and asserting, not by relying on the words written into law.

Senator Bayh in his amicus brief was particularly adamant that inventors were intended to come last in the pecking order. Read through his account of the pecking order, and then we will read it closely for the picking, presuming, and asserting. Continue reading →

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Vannevar Bush’s seductive lie

Posted on August 26, 2016 by Gerald Barnett

At The New Atlantis, Dan Sarewitz has published an interesting article, “Saving Science.” While there’s plenty to discuss regarding his major theme, that scientists “must come out of the lab into the real world,” here I’d like to deal with a couple of claims Sarewitz makes regarding Vannevar Bush. Sarewitz opens his article with a quote from Vannevar Bush:

Scientific progress on a broad front results from the free play of free intellects, working on subjects of their own choice, in the manner dictated by their curiosity for exploration of the unknown.

Sarewitz characterizes this statement as a “bald-faced but beautiful lie.” Certainly he doesn’t mean “lie” in the sense that Vannevar Bush knew the truth and chose to write a report to the President to deceive him and the American public. I am sure such things have been done (say, by climate scientists), but it’s difficult to see that this is what Bush was up to. Perhaps Sarewitz means “lie” in the Seth Godin sense of “any story a consumer believes.” In this sense, Bush’s statement is a lie simply because it engages a world view and invites belief. Perhaps.

But it appears that Sarewitz actually means that Bush was wrong and tells his “lie” as a “seductive manipulation.” Continue reading →

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There never was a promise to assign

Posted on August 25, 2016 by Gerald Barnett

When Stanford in its litigation against Roche appealed to the U.S. Supreme Court, it included in its petition for certiorari a declaration by Luis Mejia, the licensing manager responsible for filing the patents and offering an exclusive license to Roche. His account of Bayh-Dole helps to show the problem with how accounts of Bayh-Dole circulated in technology transfer circles. A look at his declaration also shows how there never was a promise to assign to Stanford that was later pre-empted by a rogue assignment to a company.

Here are the parts of the declaration that I want to focus on:

15. Stanford’s Policy on Inventions, Patents, and Licensing that was in effect in the 1980s is reflected in Exhibits 24 and 25, attached to the Rhyu declaration. According to that policy, Stanford allowed rights in inventions to remain with inventors “if possible.”

That is, Stanford’s policy required it to show that there was a legally binding requirement that Stanford obtain ownership of an invention before it could require assignment of an invention. Inventions could be assigned anyway, by choice, but doing so is not a condition of employment or use of resources or anything else that the patent policy recited as possible consideration to bind the promise to assign inventions when required to do so.

However, the policy recognized that “the great majority” of inventions arose from research that was externally funded and covered by those external funding agreements. (See Exh. 24, ¶ 1.)

But even then, Stanford’s policy was not simply that if there was a contract, Stanford had to own. The patent policy required that Stanford had to be obligated by the contract to own the invention. Continue reading →

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Faux Bayh-Dole and Stanford v Roche

Posted on August 24, 2016 by Gerald Barnett

I have been tracing the history of two versions of Bayh-Dole. One version is based in the law as written and reflected in the implementing regulations and the standard patent rights clause. The second version shows up immediately after the passage of Bayh-Dole in statements by Norman Latker, Howard Bremer, Joseph Allen, and others.

In the legal version, Bayh-Dole applies to federal agencies and directs them to use a standard patent rights clause, to be prepared, and sets out the conditions under which a federal agency can require the assignment to the federal government of an invention made with federal support. In the faux version, Bayh-Dole applies directly to universities and gives them title outright to inventions made with federal support. Any paperwork involving assignments is then something of a scavenger hunt to satisfy patent office rules that for some reason were never changed when Bayh-Dole came into effect.

Stanford v Roche

The Supreme Court in Stanford v Roche had to decide between these two versions. In one version, patent law had been changed to vest title of inventions with universities, not inventors. In the other version, federal rules regarding agency contracting were changed to limit what agencies could require as a condition of awarding money for research proposed by university faculty and small businesses. Over 70 universities signed on to an amicus brief advocating for the vesting version of the law. Senator Bayh submitted his own amicus brief arguing as well for the vesting version: Continue reading →

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University of California’s Office of the President self-servingly misrepresents Bayh-Dole

Posted on August 21, 2016 by Gerald Barnett

[TL;DR UC gets Bayh-Dole wrong, ignores the Stanford v Roche decision, makes it appear that UC has a right to take title to inventions, when it doesn’t. UC denies inventors their rights to invention under the color of law, a felony. There’s no “returning” rights to the federal government. It had no rights to start with. UC policy is bureaucratic fantasy. Nuff.]

Here is a bit of guidance regarding research agreements from the University of California Office of the President regarding sponsored research [The “Innovation Alliances & Services” unit has been renamed “Innovation Transfer Operations”–certainly that will improve outcomes. The same text is present, in 2023, some twelve years after the Supreme Court ruled that UC and other universities were dead wrong about Bayh-Dole]:

Federally funded research has special provisions on rights to inventions. Pursuant to federal statute, known as the Bayh–Dole Act, UC is entitled to take title to inventions arising from federally funded research; however, it must grant non-exclusive use rights to the Government. Also, if UC decides not to file a patent application on an invention or will not otherwise commercialize it, UC is required to return patent rights to the federal government.

I have highlighted some portions of this advice. Let’s work through these. Continue reading →

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