Principalities of Patenting

Posted on April 2, 2016 by Gerald Barnett

I am working through the ways in which a university comes to acquire patent rights from faculty inventors. This is turning into a series of articles. This stuff isn’t easy–but then, as far as I can tell, it’s not easy by design. That is, university administrators have chosen this path, have made things complicated, have then twisted and garbled and concocted and invented arguments that have to be untangled or fought over in courtrooms or in legislatures or in the press. The end point of most of these discussions is not clarity and mutual understanding. It’s an argument, and university administrators, with access to nearly unlimited money to pay attorneys, are more than ready to take their argument to court, where “justice” is more about what specific claim of wrongness is being addressed, not about how a university ought to behave in the presence of inventions, and why.

These articles for Research Enterprise are about the “ought”–what is possible, and why these possible things should be sought. Getting at the law is not then an abstract thing–it is not about serving the law, but observing the law. At the root, law in a democracy is for the living–what is it that we mutually decide to do? Law provides a distribution of authority to the state to use force to ensure compliance with the law. Yet statutory law consists of words, and words are notoriously problematic, since they depend not only on usage, which may change, but also on interpretation, which also may vary with the purposes and experience and accidents of those doing the interpreting. Continue reading →

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A university's innovation policy depends on academic freedom

Posted on April 1, 2016 by Gerald Barnett

Build your innovation policy around academic freedom.

The distinctive advantage of a university faculty member is that she or he has access to institutional resources (and so does not have to grub for them personally) but is free from institutional controls (and so can pursue lines of study independent of managerial direction). How one manages that access and how one limits controls are the proper objects of a university patent policy.

Vannevar Bush, veteran of university research administration, recognized the value of such conditions by drawing academics, industry scientists, and gadgeteering engineers into projects established outside the usual established orders–in labs and projects where they could work without the academic concerns for status, the industry concerns for profit, and the gadgeteers problems in finding resources. Bush’s teams created amazing stuff. Skunk works operate in a similar fashion within large companies. There has to be a degree of rebel for such operations to be effective. Continue reading →

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Notes and Comments on G. Kenneth Smith’s Article on University Ownership of Inventions

Posted on April 1, 2016 by Gerald Barnett

G. Kenneth Smith’s 1997 article “Faculty And Graduate Student Generated Inventions: Is University Ownership A Legal Certainty?” on university patent policies is worth the read, even nearly 20 years after it was published. The Bayh-Dole part might be redone, now that we have Stanford v Roche, but much of the rest has stood the test of time remarkably well. Smith has gone on to a career as a top IP officer in some leading biotech companies.

The article covers key aspects of the situation at universities–common law, policy statements, and statutes. Smith ends by suggesting that common law approaches appear to be the best way to deal with ownership, but noting that when present, pre-employment agreements, laws, and policy documents “are controlling”–but with the various practice implementation limitations that Smith points out in his article.

Some points of interest in Smith’s article are worth highlighting, if for no other reason than to create curiosity that leads one to read the entire piece. Continue reading →

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The Status of University Patent Policy

Posted on March 31, 2016 by Gerald Barnett

What is the status of a university patent policy?

Or, put it another way, how does it come about that a university can force faculty and students to give up ownership of their personal property–patentable inventions–property that inventors own by federal law, following from the US Constitution?

This is a fundamental question, and one that university administrators appear to have no consistent idea about. When the explanations for a common practice vary widely, that’s a bad sign. University administrators made up five different stories about how the Bayh-Dole Act gave universities outright ownership of inventions made with federal support, or was it a first right of refusal or was it that inventors could only assign to the university or was it that inventors could not assign to anyone other than the university, or was it that Bayh-Dole required universities to demand ownership? All untrue. Bad sign. The same situation, with the same bad actors, arises in accounts of the status of university patent policies. Let’s work through the situation, recognizing that university administrators have complicated the issue. About the only thing that is clear is that university administrators insist that they can force faculty and students to give up their personal property in the form of patentable inventions.

There are a few ways to force someone to hand over their property. One can steal or rob. Use force. Threaten. Deceive or defraud. Misappropriate, convert. These are well established methods, but let’s set them aside for the moment. Continue reading →

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The University Dual Monopoly Patent Policy Goes to 11

Posted on March 25, 2016 by Gerald Barnett

The current approach to university IP management implemented throughout the United State involves

  • a broad definition of what constitutes an “invention” or “intellectual property”
  • a broad scope for who is required to comply with the policy
  • a policy demand of outright ownership, often now with a present assignment
  • a practice of filing patent applications without industry sponsors
  • a working preference for monopoly (exclusive) licenses
  • a working refusal to license non-exclusively or royalty-free
  • a blanket refusal to waive claims or re-assign claimed but unworked rights

This approach involves two monopolies–one over assets created at a university, and another in the attempt to place those assets so as to generate revenue. This is among the worst of possible university approaches to research enterprise and innovation. Why? Let’s count some of the ways. I’ve put these in a convenient and helpful list of 11 items.

  1. suppresses innovation
  2. disrupts collaboration
  3. undermines public support
  4. creates institutional conflicts of interest
  5. violates academic freedom
  6. turns policy statements to mush
  7. casts into doubt policy obligations
  8. abuses authority
  9. steals from faculty and students
  10. breaches federal funding requirements
  11. wastes, costs, and fails

I will work through these, but the basic idea is that the approach is awful. Continue reading →

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The Vampire at the Neck

Posted on March 20, 2016 by Gerald Barnett

Consider the three elements of the simple mantra I outlined in my last post.

  • Take IP
  • License IP
  • Make Money

Let’s work through these three imperatives.

Take IP

Administrators have expanded the definition of “IP” from patents and copyrights to just about anything that might have “commercial” value–know-how, biomaterials, software, data, information, “unpatentable inventions.”

Administrators have expanded their time interest from the narrow “patentable inventions that the inventors have chosen to exploit for commercial value, at the time inventors make that choice” to just about anything at the time it is “invented” (meaning, in addition, “made, created, thought, imagined, assembled, collected, identified, conceived, built”).

Administrators have expanded the scope of their claim from employees doing their “official duties” to anyone who uses university resources or facilities or who does something within the scope of their academic training, and to anyone who volunteers under the “auspices” of the university, to anyone involved in any grant or contract with the university, to “collaborators” of those anyones. Continue reading →

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Disconfirmation makes it stronger

Posted on March 20, 2016 by Gerald Barnett

Last night I dreamed I was engaged in a debate. It was for a call-in radio show. Oddly, we were on one of those huge chartered buses. The bus was filled with university technology licensing managers. Dunno where we were or where we were going. You know, in dream-land. In my dream, I heard myself saying–

Call it what you will–technology transfer, IP management, technology licensing, industry alliances, economic development, innovation–university technology management as you practice it comes down to three simple points:

  • Take IP
  • License IP
  • Make money

This is entirely alien to what makes a university a great source of ideas and innovation.

Presidents, provosts, and deans might take what they say is a “long view” and give a tech management office five years to make money, or they may threaten to fire you all if you haven’t made them wealthy in 18 months. The reality is, money is the measure of the activity–not social benefit, not happy industry interactions, not faculty believing they are being well served.

And even if you tried to do something aligned with university strengths, with public mission [–here, I rattled off a list of names and programs–], there are people who see anything but talk about making lots of money in clever schemes as weakness, as limiting, as foolishly idealistic, as giving up, as incompetence, as an excuse. They will drive you out if you don’t give in to them and at least put on a show of trying to make millions.

It’s so simple, it’s addictive. Every year or so there is a huge deal–a $750m settlement here, a $1.2b buyout of future royalties there, and the pressure to do the same at your school ramps up. It permeates your policies. It changes what you say. It changes your practices. It makes you defensive. It makes you anxious. But you cannot be rid of this simple mantra. They won’t let you.

The dream woke me up. It was 5:45 am. I took the dog downstairs and wrote this up while she crunched her morning kibble. Continue reading →

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Faculty IP and Academic Freedom, Part I

Posted on March 18, 2016 by Gerald Barnett

I am working out how to disrupt the now-pervasive use of management-speak to describe the obligations of university faculty with regard to intellectual property they produce–largely, almost entirely their personal intellectual property, by operation of federal copyright and patent law, prior to the university tech transfer office trying to get ahold of it through one clever scheme or another.

First, let’s lay out the conditions of faculty involvement with university administrations. Then we will look at how management-speak aims to undermine academic freedom. I will argue that undermining academic freedom also undermines the impacts that faculty research might have in the broader community, hurts the working relationship between faculty and tech transfer offices, and works against the success of the tech transfer office as an administrative function of the university. That is, academic freedom, far from being some idealist fancy, lies at the heart of any program to encourage innovation from university research. Finally, we will consider the reasoning–or lack thereof–behind the persistence of management-speak, despite the damage it does.

So, Part I.

Let’s be broad-brushed. We will come back to gather up the objections and dispose of them.

1. Faculty have academic freedom. 

This is a fundamental in university policies. Continue reading →

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Banging Our Hearts Against the Wall

Posted on March 9, 2016 by Gerald Barnett

Now that an arguably effective national infrastructure for dealing with inventions made by university faculty has been systematically dismantled over three decades in favor of institutionally self-serving patent administration, it is difficult to see a road back to pre-Bayh-Dole management.

Remember, it was that pre-Bayh-Dole approach that produced the favorable statistics cited by the advocates for Bayh-Dole. Monopoly government ownership of research inventions was bad. What the advocates didn’t come out and say, however, was that they thought non-exclusive licensing was also a bad thing–they intended that universities would license exclusively, even as big biotech inventions from universities, such as Cohen-Boyer, were being licensed non-exclusively.

The new regime would be provincial rather than national, would be operated by universities and their foundations, not by external invention management agents, and would not be accountable to the federal government or the public. For this to work, academic freedom had to be restricted, policies had to change, and a new “culture” that valorized money-making speculation had to be created to supplant a vocabulary of public service and avoidance of direct commercial exploitation of research findings. Continue reading →

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University Invention Management Policy Drift

Posted on March 9, 2016 by Gerald Barnett

In the olden days, when at least this part of the university world had not become captivated by a misrepresented Bayh-Dole Act, faculty were often expected to negotiate the IP provisions of sponsored research agreements, which often took on the character of institutionally approved consulting. The University of Wisconsin maintained this policy long after most other institutions had suppressed it. However, a faculty member still has the freedom to refuse to participate in an award if he or she objects to the sponsor’s IP requirements, or to the IP requirements inserted into the award by the university’s administration.

Insertion of IP terms by a university administration in sponsored research contracts to take rights from faculty has been a primary scheme to circumvent otherwise liberal policies on faculty ownership of inventions. The university, not the sponsor, uses the university’s policy that contracts take precedence over policy defaults to in effect impose a new policy–if work is sponsored, then the university must own. Faculty generally accept this imposition because they have no alternative but to reject the contract. Negotiation with the administration is–generally–futile and requires litigation and thus requires $200,000 and a couple of years. The university administration understands this–and thus, believes it can do what it wants, take what it wants, so long as it operates over the financial and time thresholds that would trigger faculty opposition.

In federal funding agreements, there is no requirement that the university own rights in patent or copyright to anything produced in the funded project. Continue reading →

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