The Entrepreunial Research University

Posted on June 13, 2013 by Gerald Barnett

Three narratives have come together to support the transformation of American university innovation policy from one of diversity and institutional support to one of monopoly institutional control of research inventions, heralded as the best thing for the country. All the technical details aside, it still amazes me that anyone would jump at the idea that requiring a university bureaucrat’s thumb in every creative work is the critical catalyst for an innovation economy. It’s not like you wake up one morning and go, “That’s it, I have got it, we should just have more bureaucrats involved! Have the bureaucrats pick the winners! Have the bureaucrats choose which of their crony business friends to chum with!  Yes! Brilliant!” I have yet to see a policy article just come out with the argument: “what is missing in American university research impact is . . . insufficient monopoly control of faculty work by bureaucrats aiming to be better speculative investors than professional speculative investors.”

However, here is an article that illustrates the application of the three-corded narrative approach to university innovation management. “Science and the Entrepreneurial University” by Richard C. Atkinson and Patricia C. Pelfrey was published in 2010 in Issues in Science and Technology and was created for a conference presentation by Dr. Atkinson.  Dr. Atkinson has been a director of the National Science Foundation and served as president of the University of California. This is not the work of a peripheral player in matters of research.  Continue reading →

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Breaking Three Cords

Posted on June 9, 2013 by Gerald Barnett

The architecture for university IP management is deeply entrenched. It is held in place by a set of three narratives, each of which is readily challenged, but together have such a satisfying outcome that it is difficult for administrators not to like them.   In a sense, administrators have been served a big bowl of mind candy for the past thirty years, and they have found themselves unable to defer their taking of as much as they can reach. It has indeed been a very clever scheme, a great practical–but serious, and actually impractical–joke perpetuated on university administrators, by which they have come to give up the values that characterize university inquiry and instruction and adopt in their place values of corporate control and investment.

The Linear Model. One of the key narratives in the set is the linear model of innovation, which starts from basic research at universities, moves to applied research at government and industry, and then to product development, led by investors, from which all future economic public good arises.  The linear model narrative is great for university folks.  It feels good to tell a narrative in which everything depends on university research.  That’s great for funding, of course, but also it’s great just to tell a story in which one’s work is important.  It’s like imagining hitting the winning home run, night after night.  It’s a good feeling and it probably contributes mental health benefits as well.  Especially if one really does hit winning home runs night after night. However, if one doesn’t hit homers, or much of anything at all, the next best thing is to fix one’s belief that one is hitting homers all the time, or just about to do so.  As Peirce argued, belief is more enjoyable than doubt, and there is something satisfying in latching onto those things that appeal to one’s already fixed beliefs. Continue reading →

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A vaccine for university invention borreliosis

Posted on June 7, 2013 by Gerald Barnett

Equity in an invention arises in a number of ways under the university patent policies of the pre-Bayh-Dole misconstruction.   Generally, the premise of equity has to do with support beyond the normal activities and salary of the work, unless someone is expressly hired to invent.  If a university, or others associated with a university, helps someone to invent, or develop an invention, it is by means of the concept of “equity” that those supporters see something in return–reimbursement, a share of proceeds, permission to use, a shop right, acknowledgement, or even ownership if that was part of the bargain for support.

There are some key concepts associated with how equity protocols work that are worth noting.

  • Equity arises when there is a patent application, not simply an invention
  • It is up to the inventors to decide whether to pursue a patent
  • Equity is established by a review of the circumstances
  • Equity allows for generous use of resources with accounting later
  • The sharing under equity may be in the patent, or income from the patent, or both
  • University equity is established by a committee of peers
  • If one wants certainty, then get an agreement in place up front
  • If an inventor uses an agent the university has designated, then equity is satisfied

A number of university policies disclaimed the provision of the “normal academic environment” as giving rise to a finding of equity.   Continue reading →

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Well Tempered IP Policy

Posted on June 2, 2013 by Gerald Barnett

In music one finds the concept of “temperament” in tuning. Jim Loy has a nice discussion of the physics. The basic problem is that the steps represented by the ratios of various notes, such as fifths (3/2), don’t exactly match octaves. Moving through 12 fifths from C to C gives a second C that vibrates (3/2)^12 or 129.75 times faster than the first C, instead of the desired 128 times (2)^7. The problem means that making the fifths follow a rule means that octaves will be off, and there will be some note combinations that don’t sound good at all.

There are various ways to deal with the problem, but it is inherent–there is a conflict between multiple systems of rules, so that things don’t come out perfectly by allowing any one rule to control, and it is impossible to require all rules to be followed simultaneously.  Instead, one has to temper the tuning in some way to impose compromises–for instance, that allow some scales to sound “pure” according to expected ratios between notes, while other scales don’t sound so nice. Or, one can anchor the tuning on octave divisions and mess with the notes within a target interval, such as the major third or fifth or octave so that they are off a bit from the ratio rule, but still sound nice, or interesting, just not necessarily “pure.” As one moves away from a privileged key, such as C, one moves toward intervals that aren’t as nicely proportioned, or put another way, are proportioned in ways that add interest, not quite what the pure ratios governing intervals would predict, but to our ears, not so off as to be dissonant.

I have been considering such “well temperament” in another context, that of dealing with medieval English manuscripts.  Continue reading →

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Well, if you don’t like these five things, I’ve got others.

Posted on May 31, 2013 by Gerald Barnett

Innovation Daily has just published “Five Things Technology Transfer Offices Wish Their Start-ups Knew.” This appears to be based on a presentation the author made at the last AUTM meeting. Perhaps that’s why the piece argues that university IP offices are smart places and implies that university entrepreneurs by contrast are near idiots who can’t focus, don’t know the first thing about patents, underestimate the costs, and make too many comments on patent applications.

The architecture of the university invention policy situation starts with the founding assumptions and expectations. The Five Things piece reads a bit like “how to play docile with the happy but grasping university.” It’s rather self-promoting, as one would expect from a law firm that works for university administrators, not university entrepreneurs–and foreign university administrators, at that, as 90% of the patent work showing up at the USPTO for the firm appears in the form of patents taken out in the US by universities from Taiwan, Korea, Japan, Singapore, Australia, Ireland, and the UK.

So let’s have at it.  Continue reading →

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Equity Policies and Ownership Policies, Part III

Posted on May 30, 2013 by Gerald Barnett

Part I is here.  Part II is here.  Part III follows below.

The policies of the form of 1962–dealing in equities, diverse, open, advocating the use of external invention management agents, if a university had a policy at all–supported the apparent success of university invention management leading to the passage of the Bayh-Dole Act.   Something happened after that to change everything.  It wasn’t Bayh-Dole, but it was because of Bayh-Dole.  Multiple misrepresentations of Bayh-Dole created an environment that allowed administrators and attorneys working for them, and contracting with them, to transform the university approach to inventions, creating the grasping, overloaded, process-heavy, expensive, ineffectual, monoculture of university technology transfer that we now endure.

  • It was claimed that Bayh-Dole applied to universities.  It does not.  It applies to federal agencies, and establishes protocols for the use and tailoring of a standard patent rights clause.  Anyone can see this who traces the flow of control from 35 USC 200-212 to 37 CFR 401 to 37 CFR 401.14(a) to 2 CFR 215.36(b).   University obligations are a matter of federal contract, not statute.
  • It was claimed that Bayh-Dole vested title of federally supported inventions with the university (or gave a first right to claim title, or a right of first refusal, or prevented assignment to anyone other than the university… or whatever, so long as the university gained ownership without negotiation).  Not so.  The Supreme Court confirmed in Stanford v Roche that Bayh-Dole did not secretly or implicitly change federal patent law to vest inventions with universities.
  • It was claimed that to comply with Bayh-Dole, a university had to have a patent agreement that required employees to assign to the university.  Not so.  Any agreement between a university and its research personnel is entirely distinct from the provisions of the standard patent rights clause, under which universities (and other contractors) agree to require that their research personnel make a written agreement (the (f)(2) agreement) to protect the *government’s interest* in inventions they make.  That agreement is joined to the patent rights clause, and thus to the funding agreement.  It is a federal agreement, made on behalf of the government, not the university-as-employer.
  • It was claimed that Bayh-Dole mandated (or intended, or was to encourage) commercialization.  Thus universities had to take title in order to seek companies and investors willing to make and sell products.  Bayh-Dole does not make such a mandate.  It seeks to use the patent system to promote the use of inventions.  Commercialization is only one of any number of means to that end.   It is “practical application” that gets a definition in the Act.
  • It was claimed that Bayh-Dole provided special benefits to universities.  It does not.  The provisions pertaining to universities and other non-profits are more restrictive than for small businesses or for inventors acting on their own with agency approval.   These restrictions (paragraph (k) of the standard patent rights clause) indicate a distrust of university management, not a special favor.

The misrepresentations were multiple, repeated, insistent, and given as authoritative.  Continue reading →

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Equity Policies and Ownership Policies, Part II

Posted on May 30, 2013 by Gerald Barnett

Part I is here.

The shift from equity to ownership in university patent polices reflects a substantial change in the approach to innovation.   An equity based policy does not require a claim of ownership.  It is based on the circumstances established after an inventor decides to seek a patent.  If the inventor does not seek a patent, then there is no further interest by the university:  its equity is in the proceeds from the invention accruing to the inventor.  An ownership policy, by contrast, is based in conditions–employment, use of facilities–that might give rise to a claim of ownership.   Such an ownership policy need not consider whether an inventor wants to file an application or not (though some policies, such as Stanford’s, does), and further does not need to concern itself with whether the inventor might receive income from the exploitation of the patent.  The ownership claim is established independently of local circumstances or prospective value, with as general claim as can be made–and in some cases, a claim that goes beyond what can be made.

Ownership policies are based in administrative and legal power moves, in making enforceable claims to ownership, seeking a contractual basis for such claims, or at least threatening future employment if a policy claim to ownership is not honored.  Ownership shows up as a legal question, a question of how to compel an inventor to assign title to an invention to the institution.  Ownership policies are make-work opportunities for attorneys. Continue reading →

Posted in Metrics, Policy, Technology Transfer | 2 Comments

Equity Policies and Ownership Policies, Part I

Posted on May 28, 2013 by Gerald Barnett

In 1962, the dominant concept addressed in university patent policies was that of “equity” in inventions.  By 2012, fifty years later, equity has largely vanished from these policies, replaced by “ownership.”  In 1962 most universities did not have a patent policy, and by 2012, many have created such policies.  Here are typical statements from policies in effect in 1962 that illustrate the use of the concept of “equity” in inventions:

The University shall have an equity in any patent obtained by any person if the development of the patent involved the substantial use of University facilities or funds.  (University of Southern California, 1961)

An alternative procedure may be used by any inventor who prefers to prosecute the patent action himself instead of utilizing the Foundation.  In such case, however, the equity owning to contributions of the University and others must be considered…. (Delaware, 1958) Continue reading →

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The Hairball Theory of Ownership

Posted on May 26, 2013 by Gerald Barnett

Buried in a University of Washington web site on information technology, one encounters this statement:

Except as noted by an agreement, a law, or a University policy (such as copyright policy), the UW owns all data and records, and all associated copyrights created by UW employees within the course of employment.

This statement is evilflawed on many different fronts. Let’s work through it. First, we can ask why such a policy statement is buried here, in IT policy, rather than in the university’s patent, invention, and copyright policy. In fact, there in EO 36, the copyright policy provides just the opposite:

University faculty, staff, and students retain all rights in copyrightable materials they create, including scholarly works, subject to the following exceptions and conditions…

The list of conditions is contract requirements, work for hire, commissioned by the university (where that does not include “normal duties” of faculty). Continue reading →

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Hope of Better Things

Posted on May 22, 2013 by Gerald Barnett

Vannevar Bush (1949) [emphasis added]:

The real reason we made such great progress was not bright inventors or clever gadgets.  It was the fact that we had thousands of men who understood the underlying science in the field, who skillfully practiced the necessary techniques, who were good gadgeteers.  They were in our universities, throughout industry, and in all sorts of queer places in the general population.  Enough of them were gathered together and saved from senseless expenditure in tasks far removed from their skills to do the job, all the way from the research laboratory through pilot manufacture and engineering design to mass manufacture and skillful use in the field.  We made great progress because we had the background for it. (244)

Bush describes the importance of the “rise of the automotive and radio industries” in preparing the way for the scientific and technological changes that were made in the second world war: Continue reading →

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