Present Assignment Agreements, the Coming Nightmare for University IP Practice

Posted on February 19, 2012 by Gerald Barnett

This turned out to be a longish essay for a blog environment. It’s not for everyone. It puts together arguments against the idea that present assignments somehow address the Stanford v Roche situation, or situations like it, or are otherwise a really good thing for university IP practice. I explain once again the history of university approaches to inventions, and show how a new policy architecture is being built, badly, on the remains of an older, modestly productive one. I point out the problems in the logic of present assignments and show that there are better alternatives. A key point the essay develops is that present assignments of undocumented assets are a nightmare for any licensing practice in an open research environment that uses any kind of exclusive license or a first right or exclusive right to negotiate.

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Over the past few weeks, I have been working on present assignment issues. I have picked apart the present assignments at University of California and University of Washington, as well as the policy-based attempts at the University of Colorado and the University of Texas. The attorneys publishing legal commentary appear uniformly to be on the side of helping universities implement present assignments. The argument being made is that doing so will address the Stanford v Roche situation, improve “title certainty,” and will be generally a good thing for universities to do. I don’t agree. It’s not a superficial not agreeing, but rather one that comes from twenty years of practice, time running technology transfer programs at major universities, a lot of consulting with folks at universities foreign and domestic, and a lot of time spent reading policies, agreements, law cases, and annual reports wherever I have been able to find them.   Continue reading →

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Stevenson-Wydler Technology Transfer Reporting

Posted on February 19, 2012 by Gerald Barnett

I have written before about technology transfer standards (here and here, for instance), and how the AUTM licensing survey in particular fails to provide useful management information, and in some ways is quite misleading with regard to what is going on in university transfer practice. One of the biggest challenges with the licensing survey is that it presents only aggregate counts, without providing structure. A university can file four provisional patent applications, convert these to one US utility application, file a PCT application, and file a continuation-in-part, all in the same year and count 7 patent applications drawn from one invention report with an improvement. It is a lot of activity and expense to file those 7 applications, but it also might lead people to believe that the 7 applications represent support for a wider range of inventions than the practice is actually supporting. It isn’t a problem that the reader should have to work out with surmises about the likely practice behind the numbers. The reader has no chance to see the structure of the data.  It is a problem for the reporters of the data. It would be like baseball teams reporting only hits and errors, not runs or wins.

Bayh-Dole does provide for some reporting on inventions and activities.   Continue reading →

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Why an Innovation Bill of Rights, and not Better Bureaukleptic University Policy?

Posted on February 19, 2012 by Gerald Barnett

I’m looking at a new article on Stanford v Roche that ends with the assurance that universities can use present assignments and doing so will “fix” their ownership problem.  Before getting into the article, I want to emphasize that this discussion is not about ownership in the abstract, and certainly not how to find an argument that will make inventors go away and acquiesce in administrative control of their work.  The discussion is about how research improves community, how research results get used by others, and how the patent system may be used to promote such use.

Ownership itself is thus in play.  Why should an ownership position be taken?  When should that position be taken by an institution?  How does this affect individuals who otherwise have ownership, but for the institutional requirement?  What should be done with an ownership position when an institution demands one, or receives one, with regard to research results, or faculty expertise, or scholarship?   If the absence of an ownership position, or of an institutional ownership position, would advance the use of research results, and introducing ownership would not, then would folks be so adamant about finding a winning ownership strategy?   The obvious answer is that refraining from institutional ownership positions is not an option–look what doing so did for poor Stanford.

Some ownership folks have lost their way. Continue reading →

Posted in Innovation, IP, Policy, Present Assignment, Technology Transfer | Comments Off on Why an Innovation Bill of Rights, and not Better Bureaukleptic University Policy?

Texas wants you anyway

Posted on February 18, 2012 by Gerald Barnett

The University of Texas has a fine statement of ownership in its policy (Rule 90101, Section 2).

The Board of Regents automatically owns the intellectual property created by individuals subject to this Rule that is described in Sections 3, 5, and 6 below and in Rule 90102, Sections 2 and 3. Accordingly, all individuals subject to this Rule must assign and do hereby assign their rights in such intellectual property to the Board of Regents. Moreover, individuals subject to this Rule who create such intellectual property (creators) shall promptly execute and deliver all documents and other instruments as are reasonably necessary to reflect the Board of Regents’ ownership of such intellectual property. A creator of intellectual property owned by the Board of Regents has no independent right or authority to convey, assign, encumber, or license such intellectual property to any entity other than the Board of Regents.

Well, now, where shall we start?  We might point out the logical failure of asserting ownership of IP and then asserting that “creators” of the IP don’t have any right to it other than to convey it to the Regents.  If the Regents own “automatically”, then of course there’s nothing even for the creators to convey, assign, encumber, or license!  (And who comes up with these lists?  How about alienate, sell, offer, provide, release, loan, lease, and disclose?  And what happened to “including but not restricted to” at the beginning and “any thing else we can think of but have gotten tired of listing out” at the end?) Continue reading →

Posted in Policy, Present Assignment | 1 Comment

Stevenson-Wydler and Public Domain

Posted on February 18, 2012 by Gerald Barnett

In working through the agent model anticipated by Bayh-Dole, I was chasing down the citations for each of the possible outcomes.  The one that caught me up, however, was how a subject invention gets to the public domain.  I thought it was obvious–if the contractor elects not to retain title, and the funding agency doesn’t request title, then the invention goes to the public domain, because the contractor isn’t filing and the agency isn’t filing.  (That’s how I put it here).  That would be fine if the contractor doesn’t have a policy that commits it to commercialization.   It’s often the case, however, with universities that the premise of taking ownership is in fact commercialization, and that means, generally, filing patent applications.

I’ll come back around to the university side of it.  The agency side also seemed obvious.  An agency could take title to an invention for which an application hadn’t been filed, or was pending, and simply let the invention go to the pubic domain.   But then as I was doing some idle reading in Stevenson-Wydler, I came upon the following: Continue reading →

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Thanks

Posted on February 16, 2012 by Gerald Barnett

Just a word of thanks to those of you visiting the site.  I hope you find the perspective here helpful in developing ideas about university research enterprise. For those of you dropping me notes by email, I appreciate the feedback, ideas, and questions.   In terms of visits to the Research Enterprise blog, there are about 1,000 a month, 800 or so unique visitors, and about a quarter, or 200 of you a month, are returning readers.   Page views have about doubled in the past month.   For an essay writer and part-time consultant looking for the next project, I am happy to have the company.  Thanks again for taking the time to check out my work.

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Just how many Termans do ya got there?

Posted on February 16, 2012 by Gerald Barnett

I was looking at some accounts of collaboration and found this wonderful symposium paper by AnnaLee Saxenian. It’s from 1995, but as it talks about the history of Silicon Valley, it is ever much insightful and relevant as ever to regions trying to develop their technology economies.

One point the paper makes is how much Silicon Valley owes to the conditions set by Fred Terman, who Saxenian calls a “brilliant teacher.”  That recalls the statements made about Karl Paul Link, the leader of the team that developed warfarin. No doubt there are plenty of cool things made by academics who are not brilliant teachers, and some brilliant teachers who don’t even try to make cool things.   Continue reading →

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Perhaps Arena Rock is the Answer

Posted on February 16, 2012 by Gerald Barnett

I have been presenting the issues from a variety of perspectives and lines of reasoning. I’ve argued from history, that faculty-led, voluntary, agent-based invention management has been highly successful.  I’ve shown how the voluntary approach formed the basis for a number of the elements that now frame university technology transfer, including the Bayh-Dole Act.   Continue reading →

Posted in Literature, Policy, Technology Transfer | 1 Comment

Is the UC present assignment even legal?

Posted on February 16, 2012 by Gerald Barnett

The move by the University of California to present assignments of future inventions plays havoc to existing policy and creates rather than limits “title uncertainty”.   Among the bits of havoc is the elimination of the review step prior to assignment as set out in University policy.   In Stanford v Roche, UC joined an amicus brief that argued that present assignments might not hold up in state court.

Here’s one reason why, in this case, UC folks were spot on.  Under California Labor Code 2871, an employer may require disclosure of all of an employee’s inventions, but only on the condition that (among other things) there is “a review process by the employer to determine such issues as may arise….”  A present assignment scheme that eliminates the review process, such as UC is imposing, but still requires disclosure of all employee inventions, not just those that are within scope of a permissible employer claim, would appear to be illegal and unenforceable.  That alone should add wonderfully to “title uncertainty”, as it throws UC’s entire patent policy into doubt, not merely the once in 30 years episodes where UC loses the chance to double-cross a collaborating company. Continue reading →

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Bayh-Dole Agent Options and IP Archeology

Posted on February 15, 2012 by Gerald Barnett

Here is a brief summary of the flow of control for choice of invention management agent in Bayh-Dole.

First Choice:

Inventors can choose university
Inventors can choose another qualified agent w/university agreement
Inventors can choose any agent w/university and w/federal agency agreement

Universities w/requirement to assign can choose themselves
Universities w/assignment can choose another qualified agent
Universities w/assignment can choose any agent w/federal agency agreement

If no first choice agent is chosen, then:

The agency can choose itself
The agency can choose public domain [perhaps!–more on this soon]
The agency can choose the inventors w/consultation of university

One can see from this list that there is no requirement in Bayh-Dole or the standard patent rights clause that the university must have an agreement in place requiring assignment. Continue reading →

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