Palmer's 1962 Guide to University Patent Policies

Posted on April 15, 2013 by Gerald Barnett

Archie Palmer has a helpful discussion on the treatment of invention ownership in the 147 universities with formalized patent policies, as of 1962.  Palmer’s work is important, because for thirty years, Palmer was Archie Appleseed of university patent policies.  He collected policies, summarized their properties, reprinted them in compendia, and universities then considered his advice, picked through published policies, and made their own in the image of those that seemed best suited to their purposes.  The patent policies we have at universities today owe a great deal to Palmer’s efforts to bring good sense and a mirror of practice to the discussion of how inventions made at universities might be managed.

Here I pull some text from his introductory remarks.  His observations are worth quoting in blocks, because he does a great job getting at the key elements.  There’s nothing like having seen a lot of patent policies to guide one’s descriptions.  It becomes more an exercise in natural history than theorizing or schematizing the unknown from the first principles that might pop into one’s head.

First, Palmer’s account of invention policies makes a general statement that recognizes that folks at universities do work on their own time and initiative, even while using institutional resources, and any inventions are theirs to deal with: Continue reading →

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Shop use as soulcraft

Posted on April 15, 2013 by Gerald Barnett

Here is the opening sentence to Archie Palmer’s 1962 examination of university patent policies:

Research, whether conducted in the library, the laboratory or the shop, is an essential and integral element of an effective educational program.

This sentence caught my attention for the mention of the “shop.” At one time, a number of departments had robust shop activities–physics shop, chemistry shop, and the like.  I worked in the physics shop as an undergraduate. It had metal working equipment, electronics equipment, and a handy collection of tools. At the University of Washington, a number of such shops are active, including  Chemistry, Physics, Mechanical Engineering, and Health Sciences Scientific Instruments.

The triad of venues–library, lab, and shop–are tied by Palmer to education, rather than, as might be expected today, to research.  Research is tied to education, rather than treated as a separate activity that might trickle down “new knowledge” to a curriculum at some distant date.  The curriculum that mattered could very well be in a “shop” rather than a “textbook”.

In recent years there has been a resurgence in the idea of shop out in the big wide world, even as Matthew Crawford appeals for shop class not to be phased out of high schools.  Continue reading →

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Present Assignment Shakedown

Posted on April 15, 2013 by Gerald Barnett

That’s a nice invention ya got there, Prof.  Pity if something were to happen to it.

Using a present assignment would not have saved Stanford’s position in Stanford v Roche.  There are too many other circumstances that work against Stanford.  There’s Stanford’s policy, which at the time made a point of the position that “if possible” university-based inventors owned their inventions.   That’s a good point.  No, it’s a great point.  It’s a shame Stanford hasn’t held to that policy and instead has caved in to the claims of folks who think they smell money from institutional controls on faculty work.  There is also Stanford’s approval of the nine-month visiting relationship at the company, along with its assignment obligation to the company.  Stanford was part of that bargain, no fingers crossed.  And it was a good bargain.  No, a great one.  Stanford faculty got early access to hot new technology, PCR, and used that access to win government grants, and develop, or at least validate, effectiveness measures for a pressing health-care need, the treatment of HIV.  And there is also Stanford’s own invention management practice, with allowing their company-visiting guy to join a federally funded research project without executing the (f)(2) written agreement, without working some arrangement with the company up front to clarify the situation or strike a prospective business deal, the mis-sequenced patent application (assignment, then election to retain, then file; not file, then elect to retain, then assignment).   Good people, but not the usual sequence of practice.

No present assignment could overcome those circumstances, and it comes as some relief that it cannot.   There is always a tiny risk in this business that an inventor will work against the expectations of others.  But that did not happen here.  Continue reading →

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Why is the 1995 NIH "20-20" Guide Still Up?

Posted on April 14, 2013 by Gerald Barnett

At the University of Cincinnati Intellectual Property web site we find this NIH Guide, the 20 Questions About Extramural Invention Reporting:

The Bayh-Dole Act encourages researchers to patent and market their inventions by guaranteeing patent rights.

[No, wait–we find the 20-20 Guide still up at the NIH, as well, as of May 16, 2018.] The Bayh-Dole Act does not encourage researchers to patent and market their inventions. It restricts what federal agencies can claim by way of rights to inventions made with federal support by researchers at universities. It is someone else who is “encouraging” the patenting and marketing of inventions. And that “encouragement” is generally not encouragement, but rather a demand that the researchers give over the patenting and marketing decisions and control to university administrators, who apparently are the weak link to the patent speculator marketplace. But it’s worse. The whole banal argument about “title certainty” is replaced with “by guaranteeing patent rights.” In the original argument, the problem was that an invention broker, having gotten assignment of rights, could worry that a federal agency might fuss over that assignment and claim title must be conveyed to the agency. [And, really, the way Bayh-Dole is described here by the NIH, one would have to say the law is about encouraging universities to force researchers to patent their inventions, whether they want to or not, so that the inventions can be offered to investors and speculators hoping to profit from the exploitation of patent rights.]

There was never any doubt as to who owned the invention–the inventor, and then the assignee of the inventor.  The doubt was over whether the assignee had the right to continue to hold title.  Continue reading →

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Expenses (including payments to inventors)

Posted on April 14, 2013 by Gerald Barnett

Stanford’s claim on a quarter billion dollars in royalties in Stanford v Roche turned on the little word “of” in the construction “of a contractor” as part of the definition of subject invention.  “Of” it turns out, has its ordinary meaning pertaining to ownership, not agency.  The universities desiring the force of federal law to make them owners of what others had invented argued that subject inventions were whatever was done by university employees, so the “of” meant something more like “by.”  The administrators were making a common mistake:  imagining what they want and then making the law merely an icon that represents this want, and if pressed, is picked at in parts that appear to support the want.  The law is never read for its plain meaning, but only interpreted for its secret meaning that makes it work out that the administrators should get what they want.   A similar thing happens with university patent policies.  So many of them are so badly written one can surmise they were drafted only as monuments to the incontestability of whatever administrators might want in the future.  More like heads on stakes outside the administration building, not requiring much in interpretation of the past to indicate what will happen to anyone who does not agree to agree.

In Stanford v Roche, a number of convenient misreadings came to light, beyond “of” not meaning “of”.  There was “elect to retain title” meaning “elect title” as in “take title.”  There was “retain” meaning “patent law was secretly changed to vest title so it could be retained” rather than “to be permitted to hold what one has obtained by assignment.”   Beyond these, we find that “practical application” means “commercialization” and “contractor” means only the “university.”  We find also that the (f)(2) written agreement which becomes part of a federal agreement to protect the government’s interest is transmogrified into a requirement that the university demand ownership of inventions with a written agreement, and thus a contract requirement made on behalf of a sponsor is conflated with university self-interest.

Perhaps only by having a whole cluster of gross misreadings of the law can one hope to have a reading that sounds coherent to anyone who doesn’t bother with reading the law, the implementing regulations, the federal funding agreements, the patent rights clauses of those funding agreements, and the implementations by the agencies and contractors under those patent rights clauses.  Maybe it’s all too difficult for the administrators to do this.  Continue reading →

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Restoring Bayh-Dole's Fundamental Bargain

Posted on April 13, 2013 by Gerald Barnett

Bayh-Dole asks inventors in faculty-led, government supported research to choose an invention management agent.  If the inventors don’t choose, then the government gets to choose.

Unlike practice in industry, university faculty had a range of options available to them when Bayh-Dole became law:  in many universities, they could choose their own path.  In some, they were constrained to use a contracted agent, such as Research Corporation.  In fewer yet, there was an affiliated research foundation at hand, which would act as an invention management agent.  In a very few, there was an in-house invention licensing operation.   It was understood that the university approach–this diversity of practice, of agents, of options–was in some sense successful in selecting inventions to manage and placing them for development in industry.  Certainly the effort by Stanford with the Cohen-Boyer inventions for gene splicing were smart, thoughtful, and very effective.  It was clear that federally supported inventions made by university faculty and those working with them might benefit from this same approach.  In this way, Bayh-Dole invited university inventors to use the choices available to them for subject inventions, as they did for other inventions.

Bayh-Dole amounts to a request by government for university inventors to use their broker model of invention management in furthering the impact of federally supported research. Continue reading →

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The Distribution of the SPRC and the Government's Interest in Inventions

Posted on April 13, 2013 by Gerald Barnett

The (f)(2) provision in the standard patent rights clause authorized by Bayh-Dole makes everything happen.  It is the key to understanding how agency procurement of patent rights works.  It gets at how a federal agency, through a funding agreement, by means of a patent rights clause, can reach to the individual inventors within a university or other organization, so that if necessary they can assign invention rights directly to the government, if they haven’t found an approved invention management agent to work with, or that agent screws up.  The (f)(2) provision does this by requiring universities, under the funding agreement, as a condition of accepting the money, to include their employees as parties to the funding agreement for the narrow purpose of reporting inventions, assisting in the filing of patent applications, and establishing the government’s rights by assignment or license, if it comes to that.

Since inventions are owned by inventors, it makes a lot of sense for the government, or any sponsor of university research, for that matter, to have a direct relationship with each possible inventor on a project.  The federal government has the added advantage that when university investigators invent and become for that little bit of invention management parties to the funding agreement, and therefore contractors for that little bit of management, they do so through the agency of and delegations from their employer, the university, so that there can be no possible conflict between the employer and the government as to the employee’s obligations.   (f)(2) creates the patent policy, the tech transfer office, the invention agreement, the exclusion of conflicting employer requirements, and the special performance by inventors all in one provision of the standard patent rights clause.   Everything that a university needs to comply with the standard patent rights clause, up until electing to retain title, is built right into the federal funding agreement via (f)(2).

One might ask, fine, brilliant even, but why not just decree that universities own faculty inventions, or require universities as a condition of funding to require assignment of all inventions?  It’s not there.  Continue reading →

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How (f)(2) saves Bayh-Dole, the "worst bill I've seen in my life"

Posted on April 11, 2013 by Gerald Barnett

At the end of the majority decision in Stanford v Roche, the Supreme Court pauses to chide the universities that have come whining to it for federal power to strip inventors of their rights, all for, apparently, administrative convenience:

Though unnecessary to our conclusion, it is worth noting that our construction of the Bayh-Dole Act is reflected in the common practice among parties operating under the Act.  Contractors generally institute policies to obtain assignments from their employees.  Agencies that grant funds to federal contractors typically expect those contractors to obtain assignments.

With an effective assignment, those inventions–if federally funded–become “subject inventions” under the Act, and the statute as a practical matter works pretty much the way Stanford says it should.  The only significant difference is that it does so without violence to the basic principle of patent law that inventors own their own inventions.

The Supreme Court here is addressing one prong of the ownership issue, leaving another unmentioned because it was not raised as an issue, and not considering a third, which is more important by far but not really a matter of law and therefore outside the scope of their attention.

The first prong of ownership is that of the arrangement between contractor and employee. Continue reading →

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The pernicious effect of expansive university claims on intellectual property

Posted on April 11, 2013 by Gerald Barnett

Here is a definition of “Intellectual Property” from a university tech transfer office web site:

“Intellectual property” encompasses all forms of creativity, such as, inventions, software, discoveries, creative or artistic works, know-how, processes and unique materials.

For example, intellectual property may be machines, devices, instruments, computer programs, circuits, biological materials, chemicals, books, videos, photographs, paintings, sculptures or songs.

Compare this with, say, the WIPO definition:

Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.

Here is a definition from a web law site:

Intellectual property is a property right that can be protected under federal and state law, including copyrightable works, ideas, discoveries, and inventions. The term intellectual property relates to intangible property such as patents, trademarks, copyrights, and tradesecrets.

In the university definition we have a near random list of stuff that fails to comprehend the distinction between the forms of intellectual property–patent, copyright, trademark, and in some treatments, trade secrets–and what these forms of property may be applied to.  Instead, we get “all forms of creativity” with a list and then another list.  Continue reading →

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Why not just say, "We own your inventions to try to make money"?

Posted on April 10, 2013 by Gerald Barnett

I have been out collecting stuff in the wild.  By the “wild” I mean at university technology transfer office web sites.  Bluck.  What a slog!  It’s a dirty, nasty bit of work, that is, in the mud and detrius of policy statements gone off and pictures with circles and arrows showing how a greed culture can be created from the broken will of academic work.

Here’s another policy statement to consider.

Auburn University at Montgomery is a public institution devoted to teaching, research, and outreach.

What the heck is “outreach”?  The third mission conventionally is public service.  But deeper in all this is the issue of whether “University” means some corporate thing, and this is a statement of officials on its behalf, or “University” means the people who work at the University.  One version of the statement announces a claim.  The other makes a descriptive statement about what people do at a university.

In pursuit of the research mission, faculty, students, and staff discover materials, processes, devices and methods which improve the lives and promote the welfare of the citizens of Alabama, the Nation and the World.

Here is our answer.  Continue reading →

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