University Invention Fascism

Back in the day, “totalitarian” had a meaning more akin to “holistic”–the state should take care of each of its citizens.  But nice gestures are often vectors for dangerous pathogens.  Universities have adopted a similar set of claims with their revised intellectual property policies, claiming more than even for-profit companies are able to claim, and with less in the way of contracts to back up their assertions.  Without contracts, university administrators resort to threats, disciplinary actions, litigation–where they have nearly unlimited resources available, and faculty do not.

One class of university patent policies is just plain wrong about the Bayh-Dole Act. Another class is deliberately ambiguous, reciting language closer to the actual text of the Act, but leaving the reader to come to the intended, but unfounded, conclusion that the Bayh-Dole Act somehow gives university administrators total control over title to patent rights.  This class of policies use “retain” as in “retain title” to appear to mean “take” or “have the right to obtain” rather than “keep” or “resist a federal agency’s requirement that the inventors assign title to the government once the inventors have chosen to assign to the university.”

Consider, for instance, the University of Delaware’s treatment.  Here’s the primary paragraph in their patent policy:

Government-funded research

Inventions or discoveries that result from efforts financed wholly or in part by Federal funds will be treated in accordance with the provisions of Public Law 96-517, “The Patent and Trademark Amendments of 1980” known as the Bayh-Dole Act. This act provides that a contractor (University of Delaware) may retain full title, right, and interest in inventions made under contract with the government, with certain exceptions for unusual circumstances. Except as specifically superseded by provisions of a specific funding agreement, inventions and discoveries covered by this section will be treated as outlined in section B, above.

A proper statement of the Bayh-Dole Act would be something like “This act provides that, other than in exceptional circumstances, if a contractor (such as the University of Delaware) obtains title to an invention made with federal support, the contractor may retain title, provided that the contractor complies with various provisions of the patent rights clause in the federal funding agreement under which the invention was made.”  Or, more simply, “This act provides that if a contractor obtains title to an invention made with federal support, the contractor may choose to retain title, subject to certain requirements.”

The policy statement grows absurd with inclusion of the bolded text.   Continue reading

Posted in Policy, Present Assignment | Comments Off on University Invention Fascism

"Effectuating" a change in university policy statements about Bayh-Dole

Here’s a passage from Rutgers’ patent policy:

D. Reservation of Rights in Sponsored Research. Ownership of patents arising from work sponsored by Federal agencies shall be subject to the provisions of Public Law 96-517, the Bayh-Dole Act as amended, other applicable law, and the provisions of this patent policy. The Bayh-Dole Act clearly sets forth as the objective of Congress the utilization of the patent system to “effectuate the transfer of government-funded inventions to the public,” and gives nonprofit institutions a right of first refusal to title in inventions resulting from research performed with the support of Federal contracts and grants.

Let’s see how many ways this bit of policy is wrong.

(1) “shall be subject to the provisions of Public Law 96-517, the Bayh-Dole Act as amended.” Bayh-Dole does not apply to university work.  Bayh-Dole applies to federal agencies.  Bayh-Dole requires federal agencies to use a standard patent rights clause prepared by the Department of Commerce, and establishes how this standard patent rights clause may be modified.  It is the patent rights clause in any given federal funding agreement that controls the disposition of inventions made with federal support, and there it is because each university agrees to the terms and conditions of the federal funding agreement.  See 2 CFR 215 for the typical funding agreement.   Continue reading

Posted in Bayh-Dole, Policy, Stanford v Roche | Comments Off on "Effectuating" a change in university policy statements about Bayh-Dole

Feynman on his patents

Richard Feynman was awarded patents. Here is a recording of an interview that describes how it all came about. You can also read about the episode in Surely You’re Joking, Mr. Feynman? Could be academic inventions are a dime a dozen, or a dollar a pop. But how does anything of that translate into social benefit? The patent license would appear to be a tiny part of the arrangement.

More important, for Halloween, is the bit about chocolate cookies. Feynman used his dollar in consideration for assignment to buy candy for the office. What is the patent worth to Feynman? Should he have been more motivated by money? Or perhaps, another, more clever way, should being motivated by money, once there are patents involved, be seen as a good thing for academic scientists? If that’s the case, then somehow the money interest and the “value of the patents” have to be connected, that somehow academic scientists should have a keen interest in getting “top dollar” for the value of their inventions. Just saying.

If it is a good thing for academic scientists to be motivated by money, then what is it, exactly, that universities pay to their inventors as consideration for taking title to their work? That is, why should academic scientists be motivated by money from patents yet not be expected to want that money from their universities, at the time the universities demand assignment of their inventive work, when the university should be paying them fair market value, then and there? And how much candy would that purchase? Keep in mind that most universities set up their patent policy so that the royalty sharing is not part of that consideration, but rather an administrative gesture. Those policies don’t even obligate the university to get any royalties. Some universities policies even disclaim such an obligation.

So what is the “good consideration” that is on offer by the universities, and expressly agreed to, and accepted in exchange for that assignment of title by these academics who should be motivated by money, as “entrepreneurs,” or at least who should be filled with gratitude that university officials, at least, are motivated by money?

Posted in Innovation, IP, Policy | Tagged , , , , | Comments Off on Feynman on his patents

Predators in the Patent System

Stuff is happening in Washington DC, despite the loggerheads on budget and Obamacare. Chris Gallagher sends notice that Sen Hatch has introduced a new bill, SB 1612, “to combat patent trolls” as the press release describes it:

WASHINGTON – U.S. Senator Orrin Hatch (R-Utah), current member and former Chairman of the Senate Judiciary Committee, today introduced legislation to address the growing threat of so-called “patent trolls.” Patent trolls purchase existing broad patents and then threaten businesses of infringing on those patents, in search of a financial settlement or litigation. Hatch’s legislation, the Patent Litigation Integrity Act (S. 1612), gives judges more opportunity to shift the costs and expenses of litigation, and gives defendants the opportunity to request a bond up front to prove the party seeking a claim on the patent has the adequate resources to turn over to the prevailing party if that party is successful in defending its claim.

“Patent trolls are a drain on the innovation in our country and their practices need to end,” Hatch said. “Many small businesses in Utah and throughout the country simply don’t have the resources to fight back against the predators in our patent system, and my bill gives them adequate resources to fight back. Fee shifting without the option to seek a bond is like writing a check on an empty account, and that’s why it’s important to include both in any legislation dealing with patent trolls. It’s my hope the Senate will act soon to put a stop to the patent trolls draining the innovation in our country and weakening our economy.”

A one-page summary of S.1612 can be found HERE.

Various comments are available, such as here and (by EFF) here.   Continue reading

Posted in Policy, Technology Transfer | Tagged , , | Comments Off on Predators in the Patent System

Moose Turd Pie, and No Good

The Economist ran a cover story last week on “how science goes wrong”:

Economistbadsci

An argument of the piece is that journals like splashy claims but don’t have room for studies that announce validation of prior reports. The article goes on to consider problems with the use of statistics to claim a 95% “confidence” in findings–leaving, potentially, 5% of findings wrong, but worse, because of how false positives and false negatives accumulate, more than half of published findings are erroneous. And that’s just within the confines of statistical models, not to mention sloppy work, cherry-picked results, fabricated data, and the like. It’s not that all academic science is bad, or that scientists are fine with this sort of outcome, but it also is not the case that we are dealing with only a tiny sliver of badness. Many of the studies in question are in the elite journals. One can say that peer review has failed, or there needs to be greater deposit of data and access to tools–all true–but there are deeper problems than these, especially, for how academic science is conducted, promoted, and documented. Continue reading

Posted in Bad Science, Freedom, Innovation, Policy, Technology Transfer | Tagged , , , , | Comments Off on Moose Turd Pie, and No Good

Where have you gone, Curt Flood?

It should be clear by now:  universities have no basis to compel assignment of faculty intellectual property.  The basis for faculty assignment of IP is voluntary agreement–either at employment because a faculty member is expressly hired to invent something, or later, because the university offers significant support in exchange for ownership and management privileges, or because a sponsor of research (not the university administration, slipping in its own self-interest) requires university ownership and the faculty investigators agree, or simply because faculty inventors choose the university, and the university agrees to manage the invention, seek licensees, share any royalties, and the like.

The situation is muddied because university attorneys have made assertions about IP that they cannot back up.  They have claimed that federal laws were changed to vest IP with the university not the authors and inventors.  That was thrown out.  They have claimed that faculty assignment is a condition of employment, but that is not true for either invention or authored works.  It is factually untrue, as faculty are not offered positions with such a demand–and would not accept positions if such a demand were in the offer letter. Even making assignment a condition of employment fails if there is no valid patent agreement, and a policy that permits the university to change its policy at will or decide later what it will claim is merely an agreement to agree forced on employees–against public policy and not enforceable as a contract:  no meeting of minds, no consideration for the changes, just bombast in legal-sounding language.

The main reason why the university compulsory claim to own faculty inventions and other stuff persists is because it costs $100,000 or so to challenge it in court.   Continue reading

Posted in Bad Science, History, Policy, Present Assignment | Comments Off on Where have you gone, Curt Flood?

Forms of ownership failure in compulsory university IP policies

Let’s look at intellectual property ownership in the context of faculty work. For scholarship, we can identify six forms of ownership:  ownership of inventions (patent), original works of authorship (copyright), marks used in commerce (trademark), information (trade secret), tangible stuff (chattels), and “other stuff” (pseudo ownership). If a university is going to “own” intellectual property, there has to be a theory of ownership.  Otherwise, it’s not ownership, but something else. Control maybe, or a shakedown, or an abuse of position.   Continue reading

Posted in IP, Policy | Comments Off on Forms of ownership failure in compulsory university IP policies

Invention is injury

I have been mulling over “scope of employment” and “course of employment” and “official duties” and related constructions that show up repeatedly in university patent policies. A strange thing about these matters is that there are two very different bodies of law that pertain to such expressions. The one you might expect in a patent policy is that of intellectual property. The other is employer liability, such as for workers compensation or tort claims for the actions of employees. Given the woeful, horrid, words-can’t-describe-how-awful most university patent policies are, I’m coming around to the idea that those doing the drafting really have no understanding of intellectual property law and in fact are drafting using concepts based on employment liability.

Consider some definitions: Continue reading

Posted in History, Policy | Tagged , , , , | Comments Off on Invention is injury

Getting Closer to the Heart

What is the purpose of university intellectual property policy?  This question is not idle.  For decades, Archie Palmer worked to get universities to adopt formal patent and research policies, publishing accounts of various university policy statements, together with commentary on the nature of the various approaches universities took to such things as invention ownership and patent management.  When Palmer started his efforts, few universities had policies.  When he retired, most had some policy statement, even if it was to confirm an institutional disinterest in patents.  Why then policy statements, and not, for instance, patent agreements or employment contracts?  After all, in companies, a policy is not the means by which a company asserts an interest in inventions—rather, companies use employment agreements, patent agreements, non-disclosure agreements, and non-competition agreements with personnel to establish, in an enforceable contract, what it is, exactly, that the company will obtain from anyone participating in the company business.  That is, companies use contracts, not policies. Continue reading

Posted in Bad Science, Policy | Comments Off on Getting Closer to the Heart

The loneliness of the tail gunner

A while back I wrote about Vannever Bush’s distinction between institutions based on confidence and ones based on fear and related this distinction to institutional patent policies. In a rather different context, Richard Lindzen of MIT takes up other problems that come about when research is predicated on fear, rather than, as he puts it, “gratitude.”  The latter part of the paper concerns the problems in the debasement of climate science by political interests.  The first part of the paper is what I am more interested in–the account of the incentives for research funding that arise from these two modes of public discourse about science. Lindzen describes the post-World War 2 science funding as based on the gratitude of a nation that recognized what science had done to aid the war effort–not just with bombs, but with medical breakthroughs as well. But in the 1960s, he argues, something changed (my emphasis): Continue reading

Posted in Policy, Sponsored Research, Technology Transfer | Comments Off on The loneliness of the tail gunner