I wish I had a neurolyzer.

Posted on September 4, 2013 by Gerald Barnett

There is a continuing effort to misconstrue the Supreme Court decision in Stanford v Roche.  Here is an excerpt from a newspaper article on the reasons why the University of Utah changed their policy to make even more claims to ownership of faculty scholarship:

The changes, approved by the school’s Academic Senate earlier this month, came about after a 2011 U.S. Supreme Court decision that “dramatically changed the landscape of patent ownership,” according to a U. memo. The case centered on a professor who created a test to measure the amount of HIV in a patient’s blood while conducting research at a drug company, according to a New York Times report. His idea was used to create a testing kit now widely used in hospitals and clinics. Stanford sued, saying the professor’s ideas belonged to the school by contract, but the Supreme Court sided with the drug company because its contract was more precise.

How wrong can folks get this?  And why?  First off, the case at the Supreme Court was about whether the Bayh-Dole law voided otherwise valid assignments of inventions.  The Supreme Court said it didn’t.  Second, Stanford had a patent policy that was perfectly clear:  inventors owned their inventions “if possible.” That is, Stanford’s policy only made a claim to ownership when a contract or law required Stanford to own.  It was a great policy, one that supported a creative faculty with a string of big hit licenses.  A present assignment might have changed how Stanford obtained title to inventions, but it would not have changed Stanford’s scope of claim. Continue reading →

Posted in Bayh-Dole, Policy, Stanford v Roche | Comments Off on I wish I had a neurolyzer.

UC Berkeley to make $160m per year on its patents

Posted on August 24, 2013 by Gerald Barnett

University patent policies are, these days, entirely about money, and specifically about the university making money by exploiting patent positions taken from faculty, students, staff, and others. But as money-making policies, they are generally incompetent, foolish, and wasteful. It is not that there is not money to be made in exploiting patent positions. Indeed, there is good money there, and done well, with a good feel for litigation strategies, one can see a consistent 3x return over costs. So if Berkeley wants $40m a year, then it should be budgeting at least $15m per year in litigation expenses on top of its other costs to operate a patent profit office, and it should do just fine.

I have come up with a simple plan for getting to $40m per year in royalties. No, check that, $160m per year in royalties. It’s easy to do this. You just have to hire the right person from business, from some big company in industry, with wealthy and powerful friends, with a track record of kicking ass. I have highlighted the key words for folks less familiar with the technical vocabulary we use here at Research Enterprise.

Here’s the plan. Continue reading →

Posted in Bozonet, Technology Transfer | Comments Off on UC Berkeley to make $160m per year on its patents

The Alt Narrative that Refreshes

Posted on August 23, 2013 by Gerald Barnett

In Ash:  A Secret History, we get a slant narrative of a history that is almost our received view, but not quite.  The narrative takes place on lands we recognize, with place names that are almost the ones we expect, but with social mores and core histories that are just enough off to be unsettling, or interesting.   Todorov, too, reminds us that there are no primitive narratives in history.  There’s no one set of facts that all defective narratives converge to as the final truth.  Any claim to such truth is a work of fiction.  Useful in its way, but not the single true history.  Lyotard argues for the weak rhetorics that may carry important value but are swamped out and displaced by socially dominating rhetorics.  Thus, a demand for the “bottom line” can overwhelm a line of reasoning focused on intangible value even if it cannot disprove the argument. So it is that narratives compete, and challenge.  So it is also with narratives of innovation, of technology transfer, of economic vitality.

I have been working to construct narratives that make present how we have changed patent management practice at universities over time.  There is a tendency to make the past look archaic and select out those few things that lead to the things becoming the way people are taught to see them now.  In the conventional treatment, universities were doing nothing much and the federal government was doing terrible until the Bayh-Dole Act sparked the universities into a buzz of activity, resulting in a huge uptick in the number of patents, and all sorts of public benefits.  Continue reading →

Posted in Bad Science, Bayh-Dole, History, Policy, Technology Transfer | Comments Off on The Alt Narrative that Refreshes

Newco and its discontents

Posted on August 23, 2013 by Gerald Barnett

Technology Transfer Tactics has an article out on UCLA’s Newco, but they don’t seem to have reviewed the Newco documents.  I don’t have a subscription, so I won’t try to link to it.  I expect the purpose of the story is to spin up some controversy for readers.  I get quoted as the token “critic” of the effort.  Perhaps it would help if folks actually read the documents backing Newco.   They might also take a look at the apparent insider conflicts of interest at play, as the East Bay Express has documented.  Newco is not like any sort of conventional “research foundation.”  It is utterly unlike WARF.  Or, more accurately, it is almost but not quite entirely unlike WARF.

Newco is a non-profit company set up to operate outside UCLA, but with UCLA oversight.  Unlike a research foundation like WARF, Newco does not take ownership of inventions and is not responsible, or liable, for invention licensing or management.  What then is the purpose of Newco?  Continue reading →

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Innovation Wants Freedom

Posted on August 23, 2013 by Gerald Barnett

The university invention equity approach was so much the better than the present compulsory ownership approach.

The equity discussion is flexible and allows for a broader set of responses.  It can consider acknowledgement, repayment, shop rights, a license to the university, a license for all non-profits or for all practitioners or for all medical applications, a share of income from licensing, the use of an independent agent who has a deal to share income with the university whatever the deal is with the inventor, or even ownership, if the invention was made expressly for the university or with the shared intent that the university would own it.  The equity approach is consistent with academic norms and especially academic freedom.  The equity approach is simple and clear.  The equity approach is about support and success not domination and ownership.

The equity approach is aligned with innovation.  Continue reading →

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University of Utah’s New Patent Policy, Part II

Posted on August 23, 2013 by Gerald Barnett

The University of Utah has updated its patent policy.  We have been through it recently.  I had such hopes that Utah would come to its senses and stop mending bad fences.  Sadly, instead they head into the void, with a goofball present assignment, leaving scope undefined, and ignoring both academic freedom and innovation, and taking advantage of the mess to leave it all in the hands of two administrators, to whom inventors and others are welcome to fuss all they want.  I guess when lemmings are this close to the cliff, open air smells like . . . victory.   Follow along to the edge of the cliff, if you want to see how they have screwed themselves up.

First, let’s be clear.  If a faculty wants their university to own all their work for the purpose of profit-seeking from monopoly positions, then fine.  They can sell their souls and their scholarship and work for a borg of a place.  And as far as I’m concerned, when they do that, the public has a right to defund them any way the public pleases to do so. If they are no more than a fussy body of monopoly rent-seekers, then they should be treated like companies, not public assets.   They may well survive, “run like a company”–it’s their choice, their cliff. Continue reading →

Posted in Bayh-Dole, Bozonet, Policy, Stanford v Roche | Comments Off on University of Utah’s New Patent Policy, Part II

An Open Letter to Dr. Peter Salovey, President of Yale University

Posted on August 17, 2013 by Gerald Barnett

August 17, 2013

Dr. Peter Salovey
President, Yale University

Dear President Salovey,

I am writing to ask you to review the situation with regard to late Professor John Fenn in light of new developments in the matter of federal laws pertaining to research. As I am sure you are aware, Professor Fenn invented electrospray ionization mass spectrometry, was awarded the Nobel Prize, and had a six-decade affiliation with Yale. He was also involved in a series of lawsuits with Yale over ownership of his invention. As the matter stands, Yale prevailed in these disputes, persuading the court that Professor Fenn breached his contract and fiduciary duty to Yale and committed fraud. As a result, Yale obtained ownership of Professor Fenn’s patents and made Professor Fenn pay over one million dollars in damages and legal fees. From an institutional perspective, no doubt there is a wish to consider the matter closed and move on. It should not be so easy.  Continue reading →

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Five Law Cases for University IP Management

Posted on August 15, 2013 by Gerald Barnett

Here are some law cases involving intellectual property that faculty considering IP policies and scholarship should be aware of. I give a date for a primary decision (there are all sorts of proceedings for these cases), a brief summary, and a note why the case is important. For each case, of course, there are those who think the case is wrongly decided, and there is all manner of nuance to entertain attorneys not working for paying clients. University administrators may form their own views. Faculty should too. This is my take. Read the cases for yourself. Consider the implications.

1.  Stanford v Roche, 2011.  Supreme Court and CAFC decisions.

The situation. Stanford sues Roche for patent infringement after Roche refuses to take a license to an invention Stanford claims. Turns out Roche has a co-ownership position in the invention based on a long-term Stanford-approved consulting relationship with one of the inventors. The CAFC decision turns on which assignment takes priority. Look at 35 USC 261. The assignment to the company is valid, so the later attempt to obtain assignment by Stanford fails for lack of anything to assign. The Supreme Court decision turns on the interpretation of the Bayh-Dole Act. Many university administrators and their front organizations line up claiming that Bayh-Dole vests ownership of inventions with the universities that host the research. The Supreme Court rejects this view.  Continue reading →

Posted in Agreements, Bayh-Dole, IP, Policy, Stanford v Roche | Tagged , , , , | 1 Comment

Sharing, accounting, audit, joint accounting, and joint sharing

Posted on August 8, 2013 by Gerald Barnett

The Bayh-Dole Act at 35 USC 202(c)(7) requires sharing of royalties earned on subject inventions with inventors.  That sharing is part of the “expenses incidental to the administration of subject inventions”:

(B) a requirement that the contractor share royalties with the inventor;

(C) except with respect to a funding agreement for the operation of a Government-owned-contractor-operated facility, a requirement that the balance of any royalties or income earned by the contractor with respect to subject inventions, after payment of expenses (including payments to inventors) incidental to the administration of subject inventions, be utilized for the support of scientific research or education;

This requirement gets baked into the standard patent rights clause at 37 CFR 401.14(a)(k)(3), which is is in turn baked into 2 CFR 215, which is how the requirement shows up in grant funding agreements at universities: Continue reading →

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University Patent Policies, Past and Present, Part I

Posted on August 7, 2013 by Gerald Barnett

How should a university (faculty, students, staff, administrators, alumni, sponsors and donors, regents, governments) manage inventions made by those hosted by the university? It is a big question, and it may be a misleading one. There are all sorts of ways to go at it, from what might make the most money for the university, to what might be best for society (if that even makes any sense), to what makes for innovation, or at least what makes for happy-if-lucky speculators buying interests in patents in the chase for windfall profits. To get at it, we might start by looking at some of the approaches that have been taken. In the past 100 years, universities (that is, faculty…) have taken the following approaches: Continue reading →

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