Five Questions That Shape Federal Research Invention Ownership Policy

Posted on January 23, 2013 by Gerald Barnett

In the industry research laboratories of the early 20th century, the question was, which comes first, basic research leading to new scientific knowledge, followed by development efforts to create commercial products? or development efforts to create commercial products, which, when problems arise are shifted to basic research to find answers? If we look at the industrial revolution more broadly, the answer has been that science has come along behind technology changes. Both Matt Ridley and Nassim Taleb have remarked on this sequencing. Ridley in The Rational Optimist, and Taleb most recently in an Edge piece:

Textbooks tend to show technology flowing from science, when it is more often the opposite case, dubbed the “lecturing birds on how to fly” effect. In such developments as the industrial revolution (and more generally outside linear domains such as physics), there is very little historical evidence for the contribution of fundamental research compared to that of tinkering by hobbyists.

We can posit that innovation’s arrow is quirkier than a simple one way or the other, but the basic question has significant operational consequences for a company looking for new products.

1.  Which direction does innovation’s arrow point?

Where to put the primary effort? Tinkering by hobbyists doesn’t sound like serious boardroom talk (not that serious boardroom talk has been known to produce lots of innovation), nor does it sound like federal innovation policy, which strikes a grander register that does not include words such as “tinker” and “hobbyist.” Such policy prefers “innovation” and “blue-ribbon panel.” Continue reading →

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The Lens of the (faux) Bayh-Dole Act

Posted on January 18, 2013 by Gerald Barnett

I continue to be amazed at the persistence of the faux Bayh-Dole crowd. Like something out of The Road Warrior, they keep coming back to wreak havoc. Despite the text of the law, the Supreme Court ruling in Stanford v Roche, the ubiquitous university practice of obtaining written assignments from inventors, and the remarkable questions about how helpful state control of faculty scholarship has actually been for American innovation, the faux version of Bayh-Dole keeps coming back for more. Certainly there are huge amounts of money at stake in this discussion. I guess there is no reason to expect fair play, reason, or a broader perspective, let alone an admission from the faux folks that they got things a bit wrong and are sorry for that.

Two recent papers (“Best Practices for Drafting University Technology Assignment Agreements After FilmTec, Stanford v. Roche, and Patent Reform” and “Renewing the Bayh-Dole Act as a Default Rule in the Wake of Stanford v. Roche“) by Parker Miles Tresemer appear to be the latest effort to revive the faux Bayh-Dole with its vision of institutionalizing control of faculty scholarship when in the form of an invention as a really keen thing. I expect that what Tresemer has written will become the script for the next round of the effort to strip faculty of their rights and reduce them to corporate employees. If you are a faculty member who cares about academic freedom, has a deep distrust of state control of scholarship (if you work in a public university), and believe that innovation starts with individual initiative and is largely suppressed by compulsory institutional accumulation, then take notice. Now would be a good time to get at it and secure your freedom, before it is taken from you for good. Continue reading →

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A Good Worry for 2013

Posted on January 15, 2013 by Gerald Barnett

Edge has published its question and answers for 2013:  “What *should* we be worried about?”  If you are not acquainted with Edge, it is a continuing conversation started by John Brockman to get scientists and artists to compare notes, as it were, about the state of things.   Often the results are presented as a collection of brief essays, each with their own register, some short and some extended.

The responses for the 2013 question make for an interesting read.  One theme that arises across a number of responses has to do with being “too connected” as Gino Segre puts it.  The internet and mobile communications connects us all, but also appears to homogenize us.  Segre’s concern, though, is not that everyone is just a cell call or email away from the rest of the world, but rather that research is getting pulled toward what will count for professional advancement:

I believe the desire to make an unforeseen offbeat discovery is an integral part of what draws anyone to become a scientist and to persist in the quest. As is true in other walks of life, demands to conform intervene. It would be naïve to discount the struggle to obtain funds and the increasingly weighty burden that they impose as research grows more expensive. But that is yet another facet of the scientific life.

The push for fancy publications limits what faculty are willing to study, especially early in their careers.  I worked with an assistant professor in environmental toxicology who had spent his first five years on one project–how cells realize that they need more copper and iron–and had just hit on a connection that could matter for how anemia is treated in some cancer therapies.  Continue reading →

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Universities for Innovation and the Export of Defective Bayh-Dole

Posted on January 6, 2013 by Gerald Barnett

In looking at how the American university administrator’s version of Bayh-Dole has been exported to the world, I came across legislation in India that proposes creating a new class of “innovation” universities.  According to a story in the Chronicle of Higher Education, from August of 2010, the idea would be to create 14 universities aimed at addressing “pressing” social issues.  So far, so good.  The universities will do this, however, by focusing on “cutting-edge technology”.   This is less exciting, if only because it is not clear that pressing social issues are particularly remedied by technology, and if they are, whether cutting-edge technology is actually much of the solution set.  It is entirely possible that cutting-edge technology–and expenditures to create such technology–may indeed be contributing to pressing social issues.  More of the problem in search of a cure to itself, in that case.

If “cutting-edge” technology means “high tech” and that in turn means “stuff made with big, expensive, complex instrumentation that only richer countries can afford and therefore hope to have a “competitive advantage” if anything comes of it, then this is pretty old-hat kind of thinking.  Perhaps it has just reached India, but more likely it has come in anew with the export of Bayh-Dole, like ticks in fur.  The Chronicle reports that Yale is interested in “mentoring” these universities.   University World News adds MIT to the list.  No doubt a “new source of revenue” for American universities, getting foreign governments to pay for mentoring.  It would be great if the foreign governments did some diligence on just who it is that intends to do the mentoring and what stories they are going to tell about how universities in America are dealing with “pressing social issues” through the use of “cutting-edge technology.”  Utah’s field of startup company carcasses laced with cutting-edge technologies comes to mind.

Perhaps, though, “cutting-edge” is just a turn of phrase for something more like “thinking differently than the same-old-thinking by which the current political and technological elite hammer away at their self-interest without an interest to consider anything different, because almost any such difference would put them out of their money, status, and comfort zone.”  Continue reading →

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Undoing the Research Myth in the Linear Model

Posted on January 3, 2013 by Gerald Barnett

Joe Lane and Benoît Godin are out with another paper that follows up on their Science Progress discussion. In their new paper, they argue that innovation arises along three related areas of activity–scientific research, engineering development, and production. Each of these areas need to be funded. It is not the case that pouring money into research will result in a scatter of discoveries just waiting for speculative investors to turn them into products. The engineering development step–perhaps one could still call it “applied research”–is needed.

But in a way, applied research and engineering development really are not the same thing.  It may be that the rhetoric of “research” is part of the problem. Lane and Godin call it the “research myth”: the idea that basic research is the font of discovery that will transform society, and if not society, then the economic parts of it in favor of the nation or region that sponsored the research. And, sure, there are research discoveries. But that’s not the point of the myth. The point of the myth is that basic research somehow holds the prize position and has come to monopolize the discussion about government funding and where innovation comes from. Any number of studies shows that the linear model of innovation–basic research to applied research to product development–is mostly rhetoric. There are many ways that innovation arises, as Eric von Hippel and Steven Johnson, among others, have shown. The problem, as Lane and Godin point out, is that we don’t have a good narrative frame beyond the linear model, and so it is invoked.

For university tech transfer, this is pivotal stuff.  Continue reading →

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12 Responses to Compulsory Invention Policies at Public Universities

Posted on December 27, 2012 by Gerald Barnett

Here are twelve arguments that push back on public university claims to ownership of faculty-made inventions.

1. State control of scholarship.  So much for academic freedom.

2. Eminent domain.  Taking private property without just compensation for public universities.

3. Not needed for compliance with federal funding.  See Stanford v Roche.

Continue reading →

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Maybe Some University Patent Policies Are So Bad They Are Simply Void

Posted on December 20, 2012 by Gerald Barnett

The University of Washington and University of California patent policies are rather strange.  Both have been interpreted by the university administrations as requiring assignment of any and all inventions faculty make, whether in their labs, offices, showers, on sabbatical, or otherwise, with the implication that inventions made in consulting, if “in any way connected” to their work at the university, is also are belonged to us.  But the policies don’t actually say any of this.

Here is Washington’s statement:

As a condition of employment, and even if a specific patent agreement is not signed, University employees agree to assign all inventions in which the University has an interest to the University, to an invention management agency designated by the University, or to the sponsor if required under agreements governing the research.

First, this is a statement in a policy about others.  It is not evidence of agreement, but simply an assertion that employees agree to assign.  Nothing that makes an assertion of agreement an actual agreement.  Second, this agreement is made a condition of employment.  It is not a condition of, say, an arrangement regarding patents independent of employment.  Third, the requirement only concerns inventions “in which the University has an interest.”  Nowhere in the policy is there a direct statement of what inventions those might be.  Finally, the policy waffles on who the beneficiary of the agreed upon assignment should be.  That is, the obligation to assign is not to the university, but to some to-be-named entity, which would become evident in light of circumstances.  Nothing in this policy statement obligates faculty to assign up front any and all inventions to the university.  Continue reading →

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Keeping open 3d printing innovation open

Posted on December 19, 2012 by Gerald Barnett

The Electronic Frontier Foundation has announced an effort to monitor 3d printing patent applications for possible Pre-issuance Submission actions.  PIS is a new procedure in the America Invents Act patent reform that allows the public to provide patent examiners with prior art.  EFF is working with the Berkman Center for Internet and Society’s Cyberlaw Clinic to identify pending 3d printing patent applications to ensure that what does issue is informed by a solid review of prior art.

Applications that matter include ones claiming methods of 3d printing, material systems, methods of stuffing material systems behind paywalls, apparatus for 3d printing, for 3d printing design and control, 3d printing post production, mixed material systems, mixed modality printing systems, and applications of 3d printing.  Especially important are applications from the likes of Z Corp (now a unit of 3D Systems), which has been a leading patent-swaggering player.  For that matter, 3D Systems itself has had to deal with its own anti-trust issues.  Also important, however, are university-based patent applications.  These can be especially horrific because they are often filed with no purpose other than to offer up to the gods of venture capital in the hope of a big monetary hit–which would come, generally, at the expense of the practice community.

Meanwhile, Public Knowledge, a Washington DC digital rights advocacy group, has been working on the copyright and trademark side of 3d printing, as well as patents.  They have especially been keeping a watch on issues pertaining to designs and software along with sponsoring events to keep legislators and policy-makers up to speed on new developments in 3d printing.  Continue reading →

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University Innovation Bill of Rights

Posted on December 19, 2012 by Gerald Barnett

Here are 10 elements for a university innovation Bill of Rights:

1. The university shall make no ownership claims to faculty or student scholarship, including inventions and discoveries, as a condition of employment, use of resources, or participation in sponsored research.

2.  The university shall not insert university claims of ownership into sponsored research agreements, donor agreements, approval for consulting forms, or other such documents except as requested by the sponsor or by the faculty members requesting the agreement.

3.  Everyone working on a project hosted by the university shall be provided with notice of the terms and conditions pertaining to intellectual property, and shall participate in such projects on the basis of informed consent.

4.  The university shall not accept ownership of inventions and other works of scholarship, along with attendant intellectual property, even when offered, unless it has personnel sufficiently provided with resources to manage work so offered.

5.  Faculty members shall have the right to choose a management agent of their choice, whether for inventions, published works, or other scholarship, without interference from the university, and to negotiate the terms of such agency.

6.  What works for faculty also applies to students and staff, other than those staff expressly hired to invent or produce works made for hire for the beneficial use of the university.

7.  Financial claims by the university in faculty scholarship shall be limited to reimbursement for out-of-pocket costs, rental of facilities, and the like, unless those involved in the use of such resources have voluntarily agreed otherwise.

8.  The leader of a scholarly project, whether described as research, instruction, or public service, has a right to establish the conditions on which others collaborate in such a project, and the university may assist in maintaining the integrity of those conditions.

9.  The faculty governing body should be responsible for establishing and interpreting intellectual property policies pertaining to scholarship.

10.  The university has a right, and responsibility, to veto arrangements for intellectual property that would violate law, breach contractual agreements, run contrary to public policy, or represent an unacceptable risk or liability to the university community or the public.

 

Posted in Freedom, Innovation, IP, Policy, Technology Transfer | 1 Comment

State-mandated rainbow chasing

Posted on December 19, 2012 by Gerald Barnett

A Bill of Rights strategy is about limiting the claims of government and institutions in favor of personal freedoms.  By contrast, a Geneva Conventions strategy is about being decent to captives once they have become captive.  Most everything about improving the productivity of university tech transfer offices these days is so GenCon-style.  That way means office expansion and quest for efficiencies in a never-ending cycle.  We should be talking BillyRights instead, and break the cycle.

For public universities, a claim to ownership of faculty scholarship, whatever the form, amounts to state control of scholarship.  No amount of interest in “monetizing” IP that happens to be tangled up in such scholarship justifies such state intervention.  Faculty do not work for the state as employer, but as a steward.  The state does not assign or direct or approve their work.  A state claim on faculty scholarship amounts to an eminent domain taking of personal property. And institutional claims to ownership are notorious ways of suppressing, not encouraging, innovation. Continue reading →

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