Penn State’s Pscyhomagnotheric IP Policy

Posted on May 31, 2016 by Gerald Barnett

[I have restored some broken links–I will have to revisit to see how Penn State has dealt with its goofy policy drafting. 15 Nov 2022.]

Four years ago, Penn State announced that it was adopting a new policy to allow industry research sponsors to own inventions made at the university with their support. As I was working through an article on the announcement, I thought it would be a good idea to see how things were going.

Here is Penn State’s [as of 2016, at least] current policy on ownership of inventions made in industry-sponsored research. The policy is broader than just patentable inventions and extends to “Intellectual Property”–a complication. In the “Project Participation Intellectual Property Agreement” (called PIPA), however, the wording skips back and forth between “any patents resulting from the above referenced project” and “intellectual property that has potential commercial value.” (Why the pdf document posted on the web at Penn State is titled “University of Georgia” is beyond me!) These are mixed up propositions. Intellectual property could refer to patents and copyrights, or it could include the stuff that is the subject matter for patents and copyrights, and it could include as well technical information (under a trade secret theory).  Continue reading →

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FOIL Technology

Posted on May 28, 2016 by Gerald Barnett

A few years ago, the University of Washington claimed to have started a bunch of companies. I went through their lists of startups for two years and found they were making it all up. They claimed to have started 35 companies, but at best it looked like they had been involved in about 13, and that was being generous. They were counting pretty much anything they had done business with, and were indifferent to when the company had started and why. So they counted non-startups as startups. They counted companies that had started for other reasons as startups because UW provided a license at some point. They counted companies as startups that hadn’t been named, that were nonprofits, that were little more than web sites covering for typical university research or distribution activities. Virtually no operations, no products, little investment, no economic development–all a matter of bullshit metrics, as I called it in an article that responded to the university president’s swipe at my efforts to get the university to come clean.

Eventually, just as the money from the big hit Hall patents ran out, the university president, who had made this pattern of behavior his signature program, left, and the vice provost in charge of all the hype and apparently (according to the hype) at the peak of success, suddenly was out of a job. They had blown through over $100m in Hall money and state money. They had burned through their reserve funds, too. If it was a green thing, they had eaten it, and when things began to look brown, they left. And nobody caught them.

As I was restoring links in my articles after the port to researchenterprise.org, I had the opportunity to chase down more information involving Ennaid Therapeutics, one of the startups that UW claimed for FY14. I added the discussion there, but thought it was worth putting the discussion here as well, where it was more visible. The technology that apparently went to Ennaid illustrates the fragmentation of ownership in research technology that has resulted from the Bayh-Dole Act’s interventions as well as how when multiple institutions each claim a share of tech transfer activity, AUTM metrics easily and conveniently get bloatified. The result is Fragmented Ownership Institutionally Licensed technology–FOIL technology.  Continue reading →

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Effects, uncontested, are a policy's objectives

Posted on May 21, 2016 by Gerald Barnett

After 35 years, no reliable data on federally supported technology transfer

Here is Sylvia Kraemer, writing in Science and Technology Policy in the United States (2006), on a fundamental problem in federal research policy identified by a Department of Commerce report:

In its most recent report, the department recommends that the federal government “develop the measures needed to monitor the technology transfer process” and institute “a system . . . to collect and disseminate such information.”
This last recommendation begs the question of why such a system was not required by the various statutes that comprise federal technology transfer legislation in the first place. Perhaps the conviction of the policies’ rightness was so strongly and widely held that no one thought any verification was required. Nonetheless, until the federal government systematically collects and reports comprehensive information about the technological content and industry (by firm) allocations of waived patent rights as well as technology transfer activities, we will be left pretty much where we were in 1965, when President Lyndon Johnson’s attorney general Nicholas Katzenbach advised the Senate Small Business Committee that he knew of no “data, studies, or facts of any kind at all which could possibly support” the notion that giving patent rights to contractors would “foster the prompt working of inventions.” (88)

Law provides no means to gather the information necessary to evaluate whether contractor ownership of patents covering federally supported inventions speeds the use of these inventions. Setting aside the question–a real one–of whether there is any such thing as an effective “technology transfer process,” the odd question is why the federal government has not built at least observational accountability into its disbursement of research funding. Even if the government did not intend to enforce compliance with invention management regulations, at least everyone could see the effect of those regulations. Instead, we are stuck with statements of intent, misplaced to represent outcomes.

Kraemer speculates that folks were so sure of themselves they didn’t need to worry about accountability. Kraemer is too generous by a mile. Continue reading →

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Science at the Frontier and the Effect of the Linear Model

Posted on May 17, 2016 by Gerald Barnett

In Science the Endless Frontier, Vannevar Bush proposed federal funding to universities to expand the frontiers of science. Folks these days focus on the science part of Bush’s proposal and his advocacy for funding research at universities. They skip over the idea of “frontiers”–old hat Star Trek sounding stuff, now. They also don’t appear to consider the structure of Bush’s proposal. It’s enough that universities get money–and that a mandate for such funding is baked into the federal funding pie.

Whole careers–administrative careers perhaps more than scientific ones–depend on such federal funding. After all, one third of the federal total research allocation never gets to researchers, but instead goes to administrators and contractors to administrators. What would happen if the federal government stopped paying more than 15% in indirect costs for grants (which are in their way gifts of public money to support individuals proposing interesting scientific work) and asked researchers to write direct budgets for what they needed. You know, like the Gates Foundation does. Then we’d see the actual administrative costs required to manage a project. If the project required IP management, then the project would have to contract for it somehow, and show the cost in its accounting. If the project required an administrator to worry risk management or fight over whether federal or state mileage rates would apply, then the project writes a budget for the angst. If the project needs a new lab space, then the remodel goes in the budget, too.

But let’s consider the structure of Bush’s insight, rather than muse about how things could be different if the federal government was not supporting a bubble of administrators. Focus for a moment on the idea of “frontier”–a place at the edge, where the borders get iffy and the rules of conduct become a matter of internal governance, since the frontier is beyond the reach of regular government with its police and lawyers and courts, its threat of discipline and dismay in the presence of taboos. Continue reading →

Posted in 3D Printing, History, Innovation, Policy, Social Science, Technology Transfer | Comments Off on Science at the Frontier and the Effect of the Linear Model

Vannevar Bush and the Unexpected Model of Innovation

Posted on May 16, 2016 by Gerald Barnett

In Science and Technology Policy in the United States: Open Systems in Action, Sylvia Kraemer spends a section of a chapter discussing Vannevar Bush and Science the Endless Frontier. Kraemer agrees that Science the Endless Frontier is an important document in the development of federal research policy but points out that Bush was frustrated in almost all of his goals in proposing a national research foundation to support basic scientific research. All he got was “the dedication of a single federal agency to the support of ‘basic’ research” (46). And even that wasn’t what Bush wanted–he wanted the organization to stand outside the federal government, operating more like the Smithsonian Institution, but supported by federal funds. Kraemer points out that Truman did not share Roosevelt’s (and Bush’s) views on the role of the government in supporting research and insisted that any new research organization be run by a presidential appointee, and be responsive to the will of government. Thus, the National Science Foundation rather than a national research foundation. The “Foundation” part got retained, as a gesture to the original idea, now much lost.

Kraemer takes up Bush’s treatment of “basic” research and attributes his interest in “curiosity for the exploration of the unknown” to New England Transcendentalism–Emerson and Thoreau meet research policy. Kraemer can then connect Bush’s ideas with a version of Platonic philosophical realism, in which science is the search for truth for truth’s sake, and contrast such an endeavor with a vision of productive pragmatism catalyzed by central government policies. Perhaps. But it appears that Kraemer chooses the pattern of analysis to fit the frame of her overall narrative rather than to get at what it is that Bush recognized and sought to implement as governmental practice. In the clash of titans that are “open” and “closed” systems of research, it is easy to miss what Bush was proposing–and it wasn’t to use Walden as a guide to research policy.

I can’t say Kraemer gets the overall argument wrong. She might well be right. But let’s look at Bush’s work in more detail, and consider a different line of development. Kraemer notes that Science the Endless Frontier–the “Bush report”

has been memorialized in countless science policy discussions for its linear argument for the public support of scientific research. This is the view that science, uniquely and necessarily, generates the knowledge which engineers, in turn, draw upon to invent new technological devices and processes. Upon these new devices and processes depend economic growth and human betterment. This is the “Bush paradigm.” (34)

Continue reading →

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Abstraction as an Obfuscating Drafting Technique in University Patent Policies

Posted on May 11, 2016 by Gerald Barnett

The Arizona Board of Regents intellectual property policy fails to state, simply, that the Board expects to own patentable inventions made by employees who have agreed to assign their inventions to the Board. Instead, the Board policy fusses around with definitions that don’t define (such as using the term to be defined in the definition; some definitions in the Board’s policy even state obligations rather than sticking to defining) and abstractions that obfuscate rather than clarify.

Consider abstractions. If someone says, “I intend to acquire your car,” you might not have much concern, unless you realize that “acquisition”–an abstraction–includes both “purchase” and “robbery.” This is a problem with abstraction, but university administrators often think it is a feature and call it “wordsmithing.” If one abstracts sufficiently, one can hide the true intent of the policy; readers will interpret the policy’s “acquisition” to mean “purchase” when the administrator intends “robbery.”

A similar thing gets done using lists along with abstraction. If a policy states that its objectives are to encourage innovation, benefit the public, and generate revenue, then one can expect that one of these things–making money–operates and the other two objectives are there for fluff, to get the policy approved in the first place. Of course, “making money” is too crass, and even “generate revenue” is there only for the sake of illustrating the technique. Administrators prefer abstraction:

It is the policy of the University to maximize the benefits to the individual who makes such patentable inventions, to the University and to the general public, and thus, to stimulate initiative in the faculty, staff and employees of the University. (BU)

“Maximizing the benefits” means, especially, “to make as much money as possible.” The point of the statement is to claim the university should get a cut of whatever money is to be made by inventors or the general public.  Continue reading →

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When to disclose inventions? Part I. Arizona State

Posted on May 9, 2016 by Gerald Barnett

Here is a basic question: When should university-based inventors disclose their inventions to the university administration? This is a remarkably difficult question. Is it when the invention is “made”? If so, what does it mean to “make” an invention? What is, in particular, an “invention” and how does an invention differ from other things one might make? Does university policy define invention in a specific way? Does that definition displace other, even conventional, definitions of invention? Does the invention have to be within the policy’s definition? Should the inventor disclose the invention when the inventor thinks an invention is patentable? When the inventor wants to pursue a patent? When a patent application has been prepared, but before it has been filed? Or after it has been filed? When the inventor thinks the invention has “commercial value”?

And what, exactly does it mean to “disclose” an invention? Is “disclosure” the same as “reporting” an invention? That is, is it sufficient to report that an invention has been made and the general nature of the invention–“I have invented a way to remove soot from smoke using electrical charge”–or does one have to also reveal how the invention works? Or, does one have to disclose as well all the ideas one has for how the invention might be used, alternative designs, investment or commercial opportunities, competing products, and the like?

And if we replace “should” with “must,” is there a big difference? That is, “should” suggests answers along the lines of “if you disclose at this point, you have the best chance of doing the right thing” while “must” suggests answers of the sort “disclose now or face discipline.” Does one have to disclose, then, whenever an administrator demands it, but not otherwise?

Answers to such questions depend on concerns such as:

  • (i) status of the patent policy as contract, statute, guideline, threat, or wish-lust
  • (ii) the language used in the patent policy regarding disclosure
  • (iii) when something is an invention under policy
  • (iv) when an invention is within scope of a policy requirement to disclose
  • (v) what happens when a university administration requires more than disclosure of an invention in order to comply with the policy on disclosure (such as signing over ownership of what is to be disclosed)

University patent policy statements are remarkably unhelpful on the matter. Continue reading →

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The Purpose of the Patent System for University Research

Posted on May 4, 2016 by Gerald Barnett

There is a general argument that the patent is a pretty useful cultural tool to stimulate and reward technological innovation. The owner of a patent has the right to exclude others from practicing (making, having made, using, selling, offering for sale, importing) the invention claimed in the patent. The idea is that an inventor ought to have some control over his or her invention, and by anticipating having that control, people will put in the effort to invent. The patent in its present form also has a further purpose–to make public how the invention works, so that others can practice the invention (under license, or after the patent lapses or expires), improve on the invention (one can do that without practicing it), and design around it (find another way to do the same thing). In this way, a patent is a publication, a specialized writing that describes something useful that’s new in the world, teaches how to use it, and sets out one or more claims that define the boundaries of the invention–what one cannot do without the permission of the owner of the patent.

In the United States, the patent has had an uneasy ride. Thomas Jefferson didn’t particularly like the idea of the patent:

Society may give an exclusive right to the profits arising from them, as an encouragement to men to pursue ideas which may produce utility, but this may or may not be done, according to the will and convenience of the society, without claim or complaint from anybody. Accordingly, it is a fact, as far as I am informed, that England was, until we copied her, the only country on earth which ever, by a general law, gave a legal right to the exclusive use of an idea. In some other countries it is sometimes done, in a great case, and by a special and personal act, but, generally speaking, other nations have thought that these monopolies produce more embarrassment than advantage to society; and it may be observed that the nations which refuse monopolies of invention, are as fruitful as England in new and useful devices.

This, from a letter dated 1813, a decade and a half after the first US patent law.

Ben Franklin, the big-name inventor among the “founding fathers,” didn’t seek any patents. Here is Franklin, describing how he published the design of a stove in a pamphlet: Continue reading →

Posted in Bayh-Dole, Commons, Freedom, History, Policy, Social Science, Technology Transfer | Comments Off on The Purpose of the Patent System for University Research

Dual selectivity or dual monopoly? What’ll it be?

Posted on May 1, 2016 by Gerald Barnett

Archie Palmer’s surveys of university patent policies make clear that most universities for a long time did not have a patent policy, and when they did write a policy, often it recorded ad hoc practices–for the vast majority of universities, assignment of patents to the university was voluntary, if allowed at all. With the rise of university-affiliated “research foundations” in the 1930s through the 1950s, university patent policy preferences, where assignment of ownership of patent rights was required, was assignment to a research foundation or to a national invention management organization such as Research Corporation. Here is Palmer’s description of the situation in 1948:

Palmer 1948-compulsory

Palmer repeats this paragraph, verbatim, in his 1952 and 1962 surveys of university patent policies. Even as universities developed formal patent policies, they retained the voluntary assignment conditions. A patent policy might be written to encourage university inventors to make use of university resources–for that, a royalty-sharing schedule might be published that was intended to be seen as attractive to campus inventors for a majority of inventions. For the others–it was okay to let them make their own way, at their own cost. Thus, in a thoughtful way, voluntary policies on assignment avoided the egotistic and micromanaging inventors, the pig-headed ones and the ones who thought they could do everything better than anyone. These voluntary policies also stayed clear of the inventors who really were capable and connected and wanted to manage their own work.

Even when research is involved, universities preferred voluntary assignment for faculty. Here’s Palmer from his 1962 survey: Continue reading →

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Patent policy as norming myth, with antidotes

Posted on April 30, 2016 by Gerald Barnett

Among those developing university patent policies, Archie Palmer was the Johnny Appleseed, publishing surveys and discussions of university patent policies for over three decades, from the 1930s to the 1960s. Palmer argued that it was important that universities have patent policies. Let’s look at his discussion of the matter. In 1948, Palmer writes that developing policy is “a healthy sign” that will lead to “agreement”:

Palmer 1948-efforts toward policy

It is not clear here whether Palmer means that internal debates regarding research and patent matters might be resolved with formal policies, or whether the “great variation of practice” among the various universities ought to be resolved by adoption of uniform policies across all universities. It would appear that Palmer’s emphasis was on the internal issues raised by not having a policy–letting faculty and administrators and company sponsors make up what they want to do as they go, rather than being guided by norming statements already in place to anticipate such situations as they arise.  Continue reading →

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