University Patent Claim Gridlock

Robert Cook-Deegan drew my attention to an essay by Josh Weitz at The Tree of Life blog.  Weitz discusses his adventures with colliding claims for ownership of future inventions between two universities.  It is well worth the read.  Weitz makes a series of excellent points with regard to the problems of demanding assignment of all inventions as a condition of visiting faculty use of facilities.  The University of Arizona is not the only institution with this problem.  Weitz also reveals a way to resolve such matters, one that ought to be a starting point rather than something that happens after overreaching and arbitrary form agreements are put in front of folks.

More than that, if universities did not make overreaching and arbitrary claims to inventions anyway, then much of this bureaucracy would simply vaporize, things would get a lot more reasonable, and folks could focus their energy on things other than useless, grasping paperwork.  Wouldn’t that be something.

As universities make expansive, future demands on inventions–and define inventions broadly to be most anything that an administrator thinks might be worth something sitting behind an institutional paywall–then even collaborations among faculty at different institutions are threatened with all manner of bureaucratic controls.  It really does become a form of gridlock, a stagnation, not directly of research–that’s a different problem–but the kind of stagnation that comes about because to do anything really fun, first you have to drink a lot of sour administrative milk.   It is odd to have administrators insisting that they are doing all this souring of milk for the benefit of the faculty.   If every university demands that all future inventions are automatically assigned to the university–and some even demand that for a period following separation–then what?  This is one place where universities should most definitely not run “more like a business” and should run a lot “more like a university”:  freedom is a very good thing, you know.

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Unpacking the Code of Silence

Inside Higher Education has run a story on the AAUP Freedom to Innovate initiative, quoting a number of people who think it’s a good idea.  And it is!  But there is one person who thinks compulsory university ownership of faculty scholarship is a really keen thing:

Ada Meloy, general counsel for the American Council on Education, said she saw no evidence of an escalation in university claims to ownership over faculty intellectual property, and that what discussions have emerged following Stanford v. Roche are necessary.

“Many institutions are making these changes based on their reading of the Supreme Court decision,” she said. “It’s all intended to ensure that both the faculty member and institution can benefit from any successful commercialization of the research results,” and to avoid the uncertainties of that case.

I have added the highlighting.  Let’s work through this shillware.   Continue reading

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AAUP Supports Freedom to Innovate

The AAUP has just published a draft report that lays out the case for the importance of academic freedom with regard to patents.  Just because faculty scholarship may include inventive work does not trigger a mandate for absolute university control over that work, suspending academic freedom and compromising the independence of faculty investigation, instruction, and publication.  For public universities, owning inventions–especially with the trendy broad definition of “invention” to include “non-patentable inventions”–means, essentially, state control of scholarship.

Crucially, this is not about faculty privilege.  It is not about whether faculty might or should make money from their inventions.  It is not about whether a faculty inventor has less skill at invention management than a university bureaucrat.  This is not about treating all faculty inventors the same by forcing them all into a single bureaucratic process, no matter what the stated aspirations of the process are.  And this is certainly not about ruining university licensing offices, dismantling technology transfer, leaving inventions on the shelf or artwork in the attic, or consigning America to be a backwater of competitiveness.    In fact, it is about just the opposite of these things–undoing what a compulsory system of institutional ownership aiming to serve speculative interests has, in a creeping way, created over the course of three decades. Continue reading

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Worthless Patents

In my internet travels, I came across a useful article by Kimberly A. Moore titled “Worthless Patents.” At the time she wrote the article, she was a law professor at George Mason. Presently she is a judge with the Court of Appeals for the Federal Circuit, and served as one of the three judges to hear the Stanford v Roche case as it made its way through the appeal process. By way of background, Kimberly Moore has sterling tech credentials, including a multiple degrees from MIT.

For the “Worthless Patents” article Moore pulled all the US patents issued in 1991 and asked how many of them were allowed to expire at one of the three maintenance fee renewal terms. The number is crazy wild–53% (51,949 of 96,713) were allowed to expire before full term. Moore then points out some interesting properties of the expired patents relative to unexpired ones. The expired patents have fewer inventors, fewer claims, shorter prosecution times, fewer related applications. It’s not clear what the variability might be, or whether these relationships would hold if one examined multiple years, but the observations themselves are intriguing.  Continue reading

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Not Again!

In The Hitchhiker’s Guide to the Galaxy, at one strange point a whale and a bowl of petunias come into existence and have only a few moments to come to grips with their situation. In about five minutes, a connection between this bizarre account and invention management will be revealed.

University research changed substantially after the second world war. During the war, it was clear that a combination of academic science, industry engineering, and a kind of gadgeteering dexterity had led to some dramatic innovations useful to the military–among them radar, sonar, computation equipment, penicillin production, um, really nasty bombs.  Vannevar Bush describes a number of these in a book that is not read much these days, Modern Arms and Free Men. The book is important, however, for in it Bush develops a view of how teamwork among various groups separate from an establishment, in this case the military, can review problems or challenges, break down the issues, and build something new, drawing on all sorts of practice areas for information, design ideas, and capabilities. In MAAFM, collaboration is not merely government throwing money at “research” and not the government specifying products to be built by contractors, but rather the collaboration is mediated by someone outside the target establishment but knowledgeable regarding its purposes and needs, working at the top. In Bush’s case, he reported to the president, worked with generals, and assembled teams to use science and engineering to innovate where innovation could make a difference.   Continue reading

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That’s What I Want

Princeton sues Princeton (h/t to Glenn):

Bruce Afran, an attorney who lives in the town, is suing the school in the Tax Court of New Jersey on behalf of four other residents and the estate of a fifth, arguing that the country’s fifth-richest university—with a $17 billion endowment—doesn’t have the right to collect and distribute profits while claiming tax exemptions on most of its property. “Some faculty are becoming fabulously wealthy, while taxpayers are paying more than they should,” says Afran. “That is fundamentally unfair.”

The profits in question come from a “big hit” patented technology. The article gets Bayh-Dole wrong, of course. No, Bayh-Dole does not split royalty income with the federal government; no Bayh-Dole does not require inventors to assign to the university. It’s not even clear that the Princeton invention is a subject invention under Bayh-Dole. Have a look at the 29 patents in Princeton’s issued portfolio–things appear to start with the ‘653 patent, filed in 1986 and issuing in 1987. There’s no government interest statement.  According to one source, the work was funded by Lilly. This does not appear to have much at all to do with Bayh-Dole. Princeton’s attorney gets the royalty sharing bit all wrong– Continue reading

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Proposed section 285(b) points out a weakness in the death star

Chris Gallagher has been working tirelessly to make universities aware of proposed rule-making and legislation that might adversely affect their efforts to transfer technology for private development.  He points to a discussion draft in the House Judiciary Committee that proposes to amend the America Invents Act to make it more difficult for patent trolls to go after possible infringers.  Section 285(b) of the draft amendment might wake university licensing folks up (my emphasis):

§ 285. Fees and other expenses

(a) AWARD.—The court shall award, to a prevailing party, reasonable fees and other expenses incurred by that party in connection with a civil action in which any party asserts a claim for relief arising under any Act of Congress relating to patents, unless the court finds that the position of the nonprevailing party or parties was substantially justified or that special circumstances make an award unjust.

(b) RECOVERY.—If a nonprevailing party is unable to pay reasonable costs and other expenses awarded by the court pursuant to subsection (a), the court may make the reasonable costs and other expenses recoverable against any interested party joined pursuant to section 299(d).

The discussion draft then proposes this new section, 299(d): Continue reading

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Five Things to Save Bayh-Dole, Encourage Innovation, and Revive Tech Transfer Credibility

The Bayh-Dole Act has gone from being a golden goose to a weapon of mass destruction. The basic idea, to make more federally supported inventions available for management through university-affiliated agents, is fine.  More to the point:  as the federal government has expanded its funding of university-hosted research, the federal government has come to dominate the topics and directions that research takes.  In essence, the federal government has bought out many of the best and brightest in university research.  Some commentators, such as Michael Crow, president of Arizona State University, are concerned that federal funding has diverted university faculty from their independent pursuit of inquiry (really, watch the video–it’s under 4 minutes).  President Eisenhower worried just this sort of thing fifty years ago.

Thus, something like Bayh-Dole is essential to make it clear that just because the government provides support for research proposed by faculty, the government is not as well buying out and controlling the inventions and discoveries made in that research.  The idea is to get the discovery work done, not to procure for only the cost of supporting the research, everything that faculty (and others) might discover or invent.   In the same manner, Bayh-Dole is also not about putting the state government (in the case of public universities) or private universities in charge of this same buy-out of faculty inventiveness.  Something like Bayh-Dole is essential for this point as well.  Stanford v Roche is a great start.  But we need a something like a bill of rights that restricts the power of government (whether state or federal) with regard to research inventions.

However, Bayh-Dole goes too far.   Continue reading

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University Patent Policies, Past and Present, Part II

The first part of this essay showed some of the diversity of mid-century university patent policies. There were a number of approaches, from discouraging patenting to embracing it, from university direct control to the use of external agents. Almost all universities used some sort of faculty-led committee to advise on patent decisions.  The general sense was that inventions came to the university rather than the university used its position as employer or trustee for sponsored research fund accounts to also claim inventive work.

Much has changed. Especially since the Bayh-Dole Act was passed in 1980, university patent policies have converged on “require assignment of inventions.” External agents are restricted to affiliated research foundations, and many of the foundations that flourished prior to Bayh-Dole have been replaced by internal administratively run offices on the model of the University of California, Stanford, and MIT. National invention management agents such as Research Corporation have not nearly the position they once had. Their fall appears to have been an intended outcome of some of the advocates for the Bayh-Dole Act and coincides with the idea that a university that hosts inventions, no matter how little it may have contributed to the work leading to an invention, or its subsequent development, should own the invention and seek to gain the lion’s share of any proceeds from patents taken on the invention.

The transformation has taken other forms as well. Where in mid-century practice, inventions were referred to the university and/or invention management agents for review—of various sorts, technical, social, equity, contractual, and future business–in present practice a university asserts ownership of inventions, making a comprehensive claim that includes employment, use of materials, participation in research, or even simply association with the university. The expansion has other properties as well.  Continue reading

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The Rhetoric of Technology Transfer and Student Debt

From Thomas Frank’s article in The Baffler (h/t Chris) on college tuition prices and administrative excess:

The coming of academic capitalism has been anticipated and praised for years; today it is here. Colleges and universities clamor greedily these days for pharmaceutical patents and ownership chunks of high-tech startups; they boast of being entrepreneurial; they have rationalized and outsourced countless aspects of their operations in the search for cash; they fight their workers nearly as ferociously as a nineteenth-century railroad baron; and the richest among them have turned their endowments into in-house hedge funds.

Note the skepticism, the disdain directed at the technology transfer complex as it has been defined by various university administrators, especially ones promoting their tech transfer and economic development chops. It’s not that research doesn’t result in new technology. It’s about how university administrators are going about it.  Next paragraph:

Now, consider the seventeen-year-old customer against whom this predatory institution squares off. He comes loping to the bargaining table armed with about the same amount of guile that, a few years earlier, he brought to Santa’s lap in the happy holiday shopping center. You can be sure that he knows all about the imperative of achieving his dreams, and the status that will surely flow from the beloved institution. Either he goes to college like the rest of his friends, or he goes to work.

Student debt is a big problem. Folks accept the university rhetoric that the high cost of instruction is the problem. But university administrators don’t actually blame instruction. They report the “cost of higher education per student.” That is, what they bill against students, not what they spend on students. Huge difference.  They bill a lot of things against instruction that simply isn’t, except in some screwed up accounting rationale.

In my time in tech transfer, I have yet to see significant royalty income directed to the support of undergraduate instruction. Continue reading

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