I have added a new page to the blog, Cottrell on Patents. There you can find Cottrell’s 1912 essay explaining why he started Research Corporation. Also, I’ve added a link to a historical account of Cottrell’s work and Research Corporation. Cottrell’s essay, 100 years later, is still relevant as we discuss how to develop academic invention management for the next 100 years.
Here is the University of Arizona invention policy statement from 1939. Simple voluntary approach with a breakout for expressly set out positions, with inventors owing 10% of their proceeds to the University if they are not using Research Corporation and the terms under which that agent operates.
Here is the University of Texas policy from 1945:
Texas adds a tiering system so that the University’s interest in becomes 20% when royalty income exceeds $5K. At a doubling every 24 years, say, the $1K limit would be $12K, and the $5K limit would translate into about $60K in present dollars.
MIT and Stanford at the time both had compulsory policies. Continue reading
Twitter has announced an Innovator’s Patent Agreement (thanks for the link, Steve) that gives inventors some rights that run with any assignment of patents on their inventions. Inventors retain a right license with right to sublicense in the event that a patent owner litigates the patents other than for defensive purposes. Essentially, a no-troll clause.
The arrangement is important for another reason. It demonstrates how a patent owner, in this case a company, can provide inventors with a degree of control over their inventions. Inventors do not get extra money for approving litigation, but they do have the opportunity, in the event of breach of the no-troll clause, to grant sublicenses and thereby disable non-defensive litigation.
One would think this would also be something that universities could offer their inventors. It would be particularly appropriate in the case of inventions licensed to startup companies that then fail and decide they need to sue someone to recover investors’ money. A university might find itself institutionally interested in such an action, despite protestations that it only does such things in the public interest.
As Archie Palmer’s work makes clear, an early interest in university ownership of patents in research inventions was for a similar defensive purpose–to prevent any one company from rushing to research results, making improvements, and monopolizing those improvements even against the directions of further research, but also preventing others from practicing an invention as described in the published literature. Continue reading
Karen White over at Almost White Pages has good thoughts about the challenges of providing university inventors with choices about who manages their inventions. It’s clear this is not an easy issue, and I agree with Karen that it is worth exploring, and for that it is worth having the discussion.
Unfortunately, most university tech transfer employees simply cannot speak out on the matter, other than to recite the talking points established by AUTM, Stanford, WARF, and MIT. I’m not quite sure why these organizations should have so much desire to suppress public discussion, especially after their unfortunate–and ultimately losing–role in Stanford v Roche. Haven’t we had enough of the AUTM-Stanford-WARF-MIT way of doing things? Can’t we even have the conversation without being shouted down by these folks?
I would think so. I am of course up for the discussion, as I have been for years. Continue reading
In the Bayh-Allen view of things, university technology transfer offices do not have the capacity or resources to handle inventions other than those made by their own faculty. This is at the heart of “this compulsory assignment business is really a service” argument. This argument is repeated in this article from Inside Higher Ed.
It is clear that many university administrators do not want to get up what they have got in the habit of taking, and what they have been taking is private property under what amounts to false pretenses, whether it is a claim that federal law requires or mandates it, or whether it is a claim that faculty are hired to invent (when they are not). They defend their actions in the name of administrative efficiency, sometimes with a veiled argument that faculty investigators and inventors are selfish doofs, and that regional economic development depends on compulsory institutional ownership, not on the availability of capital markets and industry ready to locate or expand operations near to research expertise.
It certainly is true that many technology transfer offices lack capability and resources–that isn’t in dispute. Continue reading
Here is an insightful piece of work on new approaches to patent licensing for universities.
Jonathan Hillel, “Legal Trubulence after Leegin: New Possibilities for Patent Licensing at Research Institutions.”
Hillel looks at anti-trust issues related to price setting and argues that after the Leegin Creative Leather Products, Inc. v. PSKS, Inc. case, there are reasons to believe a research institution could without violating the Sherman Act dictate price, for a period of time early in the life of a new technology. Doing so would allow non-exclusive licensing while preserving for the licensees advantages arising from holding a license to fundamental patents. Hillel suggests that by setting a price, a research institution gives incentives for early adopters to reinvest in the development of the technology, and that these re-investments will create new, licensee-held IP that can be monetized as new companies enter the emerging area of technology practice.
Hillel argues that “the economic incentives of a research patentee align with those of consumers, and the licensor benefits from lower prices at retail.” This is worth evaluating. The broader idea, that an early phase non-exclusive with price setting followed by an open phase without price setting is also worth considering.
Jon Brodkin at Ars Technica reports on a patent dispute between Yahoo and Facebook. Yahoo filed a patent infringement case against Facebook in March, and now Facebook has acquired 10 patents from patent accumulators–otherwise called trolls or non-operating entities–to assert against Yahoo. PC World follows up with Yahoo’s effort to get the patents thrown out.
What’s interesting is that three of the patents Facebook acquired are from New York University. These are related and have one inventor in common, Alexander Tuzhilin, a professor of Information Sciences.
6236978 (referenced by 190 other patents!)
7603331
8103611
The transaction by which Facebook acquired an interest in the patents has been described as a “purchase”. Maybe it was, or maybe it was a license. In any case, Yahoo’s response has been to challenge the validity of these three patents. I don’t know if that will get anywhere, but I would expect that NYU got its money upfront, so it might not matter much from that perspective.
The thing that would be more worrying is if NYU is providing patents to feed lawsuits for infringement. Continue reading
What hath Bayh-Dole wrought? Or, more pointedly, what have university invention administrators done with the opportunity presented by Bayh-Dole?
Over the past 30 years, university administrators have successfully:
These are just a few of the administrative “successes” in implementing Bayh-Dole. Continue reading
I have a special regard for the Bayh-Dole Act from spending so much time working with it. I am impressed with the way that it balances uniform agency policy regarding federally supported inventions with the diversity of practices potentially available to promote the use of inventions in the private sector. I am fascinated by the way in which the Act advances an agent model to deal with the competition between personal and institutional interests in ownership of inventions.
Especially interesting is the way in which the Act mandates a patent rights clause that in turn, when incorporated into funding agreements, requires university administrations to release their inventors from institutional claims based on employment or use of facilities and in their place require university investigators to make an agreement with the government to protect the government’s interest, however the inventors decide to go with choice of agent. I like the way this arrangement–if it were ever practiced–would permit faculty investigators (and inventors) to establish contractual relationships with invention management agents that made the agents accountable to the inventors for the approach taken to licensing, the money made, and the outcomes. Bayh-Dole proposes a new kind of patent agreement for any invention management agent, led by faculty inventors rather than by their employers, that is to be used in the context of federally supported research.
These gestures are important ones. Continue reading
The Atlantic has published yet another retrenchment piece by Allen and Bayh. At least there is no question where they stand on the matter: comprehensive, compulsory stripping of faculty rights to inventions is the way to prosperity and should be adopted by any self-respecting administrator, not because it will make the institution a lot of money, but because, well, it’s just the right thing to do for America. Some university administrators are passing around these articles by Allen and Bayh, going, see–if Allen and Bayh make an argument lacking substance and ignoring Stanford v Roche, then they must be right about present assignments, too. How very reassuring.
There will be time to discuss issues in concisely in other forums. Here I work through their Atlantic piece paragraph by paragraph. Take this as a map of possible responses. I expect to update this piece from time to time, and add more links to document my points.
Summary: A&B’s arguments repeatedly don’t hold up. They mischaracterize Bayh-Dole in defiance of the Stanford v Roche decision, they get the technical details of Bayh-Dole wrong, they show a decided lack of knowledge of IP practice, and they appeal to a bent for administrative order over personal initiative. They appear to be advocating for Stanford, MIT, and WARF to continue to dominate public discussion of ways to innovate, when it is these very institutions that raised these same A&B arguments in Stanford v Roche and lost at both the CAFC and the Supreme Court. Continue reading
