Summary Re-writing Bayh-Dole

Posted on September 15, 2012 by Gerald Barnett

[Updated with new examples to replace ones since removed from the web–whack-a-mole time]

I have pointed out how AUTM’s summary of Bayh-Dole puts its own misleading spin on the law.  Here is how this bad advice works in the wild.  Again, AUTM’s widely distributed and repeated summary (with my emphasis):

Major provisions of the Act include:

  • Non-profits, including universities, and small businesses may elect to retain title to innovations developed under federally-funded research programs
  • Universities are encouraged to collaborate with commercial concerns to promote the utilization of inventions arising from federal funding
  • Universities are expected to file patents on inventions they elect to own
  • Universities are expected to give licensing preference to small businesses
  • The government retains a non-exclusive license to practice the patent throughout the world
  • The government retains march-in rights.

Now here is a summary of remarkable similarity from the University of Alaska, Fairbanks:

Some of the key points of the act are:

  • Non-profits and universities can elect to retain the titles to inventions made under federal sponsorship;
  • Universities are expected to file patents on inventions they elect to own;
  • Universities are encouraged to commercialize the inventions;
  • Inventors are obligated to disclose and assign inventions to the university;
  • The government retains non-exclusive license to practice the patent; and
  • The royalties must be shared with the inventors.

This is pretty much the same AUTM list, with bits of re-writing and no source citation.   We leave aside bits like “the titles” for “title”, as if the names given to the inventions are the subject of the law.  Notice how AUTM’s problematical restatment regarding collaboration to promote utilization of inventions is transformed into the equally but differently problematical “encouraged to commercialize the inventions.”  Continue reading →

Posted in Bayh-Dole, Policy, Stanford v Roche | Comments Off on Summary Re-writing Bayh-Dole

Five Defects in Persistent Readings of Bayh-Dole

Posted on September 15, 2012 by Gerald Barnett

I read a couple of recent papers that involved Bayh-Dole, oh boy.  One was a new law review article on Stanford v Roche.  In what has come to be expected fashion, the authors mishandle Bayh-Dole.  Rather than spending time pointing out their problems in detail, I made this list of serious defects in characterizations of Bayh-Dole in the academic and popular press.  Why do these persist?  It must be that there are folks who really want to promote defective readings of the law.  Maybe it is the spirit of the age, one that desires institutional control to take care of all our needs.  Dunno.  Anyway, here is the list:

1) Bayh-Dole gives ownership of federally supported inventions to universities.

This is repeated so often that it has become gospel, but it’s not true.  Never was.  Stanford v Roche makes clear.  Bayh-Dole does not vest ownership with universities, does not require universities to take ownership to comply with the law, does not encourage university ownership, and does not even actually apply to universities directly.  Read the Bayh-Dole Act.  Read the CFR.   It’s simply not there.  Continue reading →

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Neophilia

Posted on September 14, 2012 by Gerald Barnett

Alok Jha, writing in The Guardian, has an extended article on the growing problem of bad science, with particular attention to psychology and medicine. One bit of worrisome news:

There are indications that bad practice – particularly at the less serious end of the scale – is rife. In 2009, Daniele Fanelli of the University of Edinburgh carried out a meta-analysis that pooled the results of 21 surveys of researchers who were asked whether they or their colleagues had fabricated or falsified research.

Publishing his results in the journal PLoS One, he found that an average of 1.97% of scientists admitted to having “fabricated, falsified or modified data or results at least once – a serious form of misconduct by any standard – and up to 33.7% admitted other questionable research practices. In surveys asking about the behaviour of colleagues, admission rates were 14.12% for falsification, and up to 72% for other questionable research practices.”

A 2006 analysis of the images published in the Journal of Cell Biology found that about 1% had been deliberately falsified. Continue reading →

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Bayh-Dole, the Invention Management Free-Agency Law

Posted on September 10, 2012 by Gerald Barnett

I came across an email from November 2009 that rather lays out the heart of the public debate around free agency.  It’s from Joe Allen to Robert Hardy (at COGR) and Howard Bremer (long time at WARF).   Robert Hardy has sent Joe an email that’s concerned about a “potentially dangerous” “line of thinking” as set out in a post I made on Techno-L (a discussion service since acquired by AUTM) and posted here in slightly revised form (and now extended).  Hardy appears to agree with my assessment that the (f)(2) agreement runs to disclosure not assignment, and asks Allen for legislative support for the idea of vesting.

Allen’s response is about how to make sure that Bayh-Dole gets interpreted to support university claims to ownership of inventions, following Stanford’s and AUTM’s arguments in Stanford v. Roche.  The email is from 2009, well before the Supreme Court decision made clear that my “convoluted” “theory” “quoting various statues [sic] and regs” actually is what the Bayh-Dole Act requires.

Allen worries that reading Bayh-Dole and its implementing regulations the way they are written is an “alternative universe” that has to be stamped out: Continue reading →

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AUTM Summarizes Bayh-Dole

Posted on September 5, 2012 by Gerald Barnett

Here is an AUTM summary of Bayh-Dole:

Major provisions of the Act include:

  • Non-profits, including universities, and small businesses may elect to retain title to innovations developed under federally-funded research programs
  • Universities are encouraged to collaborate with commercial concerns to promote the utilization of inventions arising from federal funding
  • Universities are expected to file patents on inventions they elect to own
  • Universities are expected to give licensing preference to small businesses
  • The government retains a non-exclusive license to practice the patent throughout the world
  • The government retains march-in rights.

I have bolded a few passages that could be improved.  Then we can look at what’s been left out.

Bayh-Dole applies only to an invention “which is or may be patentable” (or otherwise protectable under US patent law) *and* is 1) owned by a contractor to the government and 2) was “conceived or first actually reduced to practice” 3) in the “performance of work under a funding agreement.”   Each of these elements matter.  None is there for fluff.  The phrase “of the contractor” in the definition of “subject invention” in Bayh-Dole means ownership, not agency.  This was made clear by the Supreme Court, following the carefully reasoned AIPLA amicus brief (and perhaps, in some way, raised by the discussion here).

“Innovations” are something almost but not entirely different.   Continue reading →

Posted in Bayh-Dole, Technology Transfer | 1 Comment

Competing Primitive Narratives of Technology Transfer

Posted on September 3, 2012 by Gerald Barnett

I have noticed recently how merely having a reasonable account for something doesn’t mean that one has got the one and only reasonable account. Todorov, that critical theorist that folks in tech transfer have never heard of, says that there’s no “primitive narrative” in history. By this, he means that there is no single narrative that when all facts are assembles arises as the necessary single “true” account of an event. There is no “true history” that becomes apparent when “all the facts” are assembled. A primitive narrative is a kind of fiction. In a substantive way, it is a metonymic device.

A metonym is a figure of thought in which a part stands for a whole, or a property or attribute for a thing. The “White House” is an attribute of the Presidency, but when the “White House announces a new program” we understand this to mean that someone from the President’s office made the announcement. A part, often, can also be an instance standing for a set of things. Thus, when a star baseball player visits a school, he stands for the set of successes, for baseball, and for the team he plays for. Metonyms are everyday figures, more common than metaphors–but with a name hardly anyone knows.

A primitive narrative is an instance of a set of all such narratives.   Continue reading →

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There are three paths you can go on…

Posted on August 12, 2012 by Gerald Barnett

Here’s a discussion in the wild, c. 2008, from some folks who generally have legitimate concerns about Bayh-Dole (my emphasis):

One of BD’s intended virtues involved transferring default patent ownership from government to parties with stronger incentives to license inventions. BD assigned ownership to institutions, such as universities, nonprofits, and small businesses, although it could just as easily have opted for individual grant and contract recipients.

Now we know from Stanford v Roche (June 2011) that this account is simply not true.  And this paper is from critics of how Bayh-Dole has been implemented in the United States, and what this means for countries trying to do something similar.  The paper concedes the secret we-wish version of Bayh-Dole, the version that university administrators created to serve their institutional self-interest.  But Bayh-Dole never did “assign ownership to institutions”.  It’s not in the law, and the U.S. Supreme Court sent the universities packing.

Here is the unfortunate thing:  how can anyone trying to do a decent job of getting background on Bayh-Dole and on US university practice ever find an accurate account of Bayh-Dole, if even the elite critics of the Act have gotten it wrong?  Continue reading →

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Thinking like App.net

Posted on August 12, 2012 by Gerald Barnett

The App.net folks are thinking about how to develop an approach to open systems that rewards 3rd party contributions.  Dalton Caldwell has a nice discussion of one approach in a recent blog post.  Imagine that there’s a set cut of an income stream, and each app developer gets a share based on the use that a given user makes of apps.  So if there’s $2/mo in play for all app developers, and a user uses only app A, then the developers of app A get the $2 from that user.  But if a user uses 10 apps equally, then each of those developers get 20 cents each for that month.  That is, one scales down the royalty stack.  As Caldwell points, out, however, “the definition of use is very complicated, and there will be insanely complicated corner cases to work out…”  [Dalton Caldwell’s emphasis].

But there are ways to do this–even down to the point of giving each app developer 1 share for the user downloading the app, 1 share for the app getting used at least once in the month, and +1 share or -1 share because the user votes a share.  That way, a user can deal with a use experience that was really great or that wasn’t all that rewarding.  Pretty coarse, but then sometimes too much precision merely invites lots of convoluted gaming of the system and costs to figure out how to reward everyone.  Where the cost to figure everything out exceeds the value expected, then the activity is dead, even if it would otherwise be perfectly viable.

I’ve always thought that this is the approach of the future–fix the user investment, and sort out on the backend how to divvy up the payment.  Continue reading →

Posted in Agreements, Commons, Technology Transfer | Comments Off on Thinking like App.net

Dealing with TLO Food Bowl Aggression

Posted on August 9, 2012 by Gerald Barnett

I came across a paper in PLoS that discusses Global Access Licensing.  The point of the paper is to lay out GAL Framework principles and appeal to university licensing offices to implement them.  The authors point out that Bayh-Dole allows universities to license exclusively patent rights to medicines, and that as Bayh-Dole is copied throughout the world it often lacks safeguards that provide “public access to publicly supported medicines.” In other words, the monopoly default hammers public access.

It is worth pointing out that what is being copied around the world is not Bayh-Dole but rather the secret we-wish Bayh-Dole that some US university patent administrators would like Bayh-Dole to be.  That’s the version that 70 universities went to the Supreme Court with and which got tossed by the court.  Bayh-Dole is not a vesting statute, but a uniform pre-approved invention agent choice statute.  To make Bayh-Dole live up to its promise, we have to be smart about how invention agents are chosen.  In the simplistic we-wish version of Bayh-Dole, there is no agent choice–just university TLOs trying to make a buck offering exclusive rights to speculative investors in exchange for a share of the action. Sort of rushing the food bowl, if you will.  Yes, I know that there are also non-exclusive licenses–but the non-exclusive licenses are not the default; they are not the desired direction.

Thus, to their great disadvantage, Denmark revised its laws in 2000, Germany in 2002, and Norway in 2003 to strip faculty of their ownership rights in inventions, apparently to harmonize with the secret we-wish version of Bayh-Dole.  Continue reading →

Posted in Bayh-Dole, Commons, Freedom, Metrics, Policy, Technology Transfer | Comments Off on Dealing with TLO Food Bowl Aggression

Freedom to Innovate

Posted on August 6, 2012 by Gerald Barnett

When the discussion of “free agency” comes up in technology transfer, it is easy to get diverted into rather narrow formulations.   In previous essays, I’ve pointed out that inventor ownership is the default in US patent law, and it takes substantial effort for an employer to change this outcome.  One would think the standard–and effort to obtain assignment–would have to be even *greater* where the employer is a university and those involved are faculty, who for their research generally are not working for the benefit of their employer in assigned tasks–in essence, for their scholarship they are *not employees*.   And this is by design.  For public universities, the design is even more critical, as institutional control of scholarship means also government control of scholarship.   What’s the point of academic freedom and an independent faculty if the state is going to step in and take control of what it considers the critical pieces of scholarship whenever it wants?  Institutional control of scholarship is adverse enough for creativity and innovation; state control opens up prospects for abuse of authority and disruption of personal initiative that are even greater than in situations involving a private institutional claim.

I’ve also pointed out that ownership and control are only two of five key elements that figure in any intellectual property relationship.  The others are money, attribution, and risk.  Discussions that focus solely on ownership often distort the full relationship and end up in strange, murky territory that sounds good but that’s about the end of it.

Because US law starts invention ownership with inventors, universities have to address the question of how it comes about (1) that a faculty inventor might transfer invention ownership or rights to others, and (2)  in particular why that ownership or control should pass to university administrators, and (3) why that transaction should be compulsory for faculty–(4) with particular reference to *innovation*–that is, for the use by others of inventions made in university research.   Continue reading →

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