"Present licensing" under Bayh-Dole

Posted on February 13, 2012 by Gerald Barnett

One of the benefits of reading carefully is discovering how a well constructed text makes sense of complex situations.  The implementing regulations for Bayh-Dole are one such text.  It is really something to take the mish-mash that is 35 USC 200-204 and make that into something that can be implemented.   There are things that could be improved, but all in all, it’s actually an astute job of drafting.   It’s a shame that so many readers of the text are content with superficial stuff, like misreading “elect to retain title” to mean “take title with impunity”.

Let’s look at a rather obscure, quiet part of 37 CFR 401.14(a), the standard patent rights clause for universities, the SPRC, for short.  Again, this clause goes in each federal funding agreement and can be modified only in exceptional circumstances, with the agency following a protocol to do so.  So it’s a pretty stable clause.  I’ve written about this clause before, but there’s more to it, now, in light of Stanford v Roche.

In SPRC (e), we encounter a section titled “Minimum Rights to Contractor and Protection of the Contractor Right to File”.  It is an odd title, since the section concerns license rights residual with the contractor should the government take title to a subject invention, and the subsequent status of those rights.   It is as if there was another section in the original draft, which was deleted but the heading not changed.   What’s left, however, makes for some interesting reading–really, not as good, as say, Cryptonomicon, but still worth the read.  Here’s (e)(1),  Continue reading →

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The Agent Choice Genius of Bayh-Dole

Posted on February 11, 2012 by Gerald Barnett

In the past I’ve tried to outline how Bayh-Dole works.  What this means is how the standard patent rights clause in federal funding agreements works.  This in turn requires us to get at why the (f)(2) agreement is so essential.

Recall that the (f)(2) agreement is required by 37 CFR 401.14(a)(f)(2).  Contractors are required to require it.  It makes potential inventors party to the federal funding agreement and obligates them personally to protect the government’s interests in subject inventions, which are inventions “of the contractor” because until they assign rights to someone else, they are also contractors for the purposes of the patent rights clause.

Here I would like to lay out how the (f)(2) agreement sets up agent decisions.  The inventors are not “free agents” under federal funding agreements, but they do have choices, until they agree otherwise.   In the book of innovation support, choice is good.  I rather like it that way.

In essence, the standard patent rights clause, or SPRC, sets up three trees of invention support that an inventor may pursue. Continue reading →

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The Double-Cross

Posted on February 11, 2012 by Gerald Barnett

The question has come up:  doesn’t a present assignment approach protect faculty from the conniving tricks of companies that will cheat them out of their rightful royalties to inventions?

The answer is no.  It won’t–not as a condition of employment or a condition of consulting.  It will have the opposite effect.  It is the institution that cheats the faculty member out of the opportunities to collaborate, take the initiative, and benefit from his or her inquiry, scholarship, instruction, and invention.  Furthermore, present assignment as a condition of employment actually creates additional liability for the university, increases the administrative burden, and hammers a linear model licensing office with way more noise to signal in trying to do its job.  But that’s not the worst of the institutional double-cross.

There is a big problem in how the Stanford v Roche case is being presented. Continue reading →

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Faculty employees

Posted on February 10, 2012 by Gerald Barnett

Employers own their employees’ work

Faculty are employees

Therefore universities own the work of faculty

Is it that simple?   Let’s look at it two ways.  First, from the perspective that this reasoning is actually how someone comes to the conclusion that, despite anything else, it is only reasonable that universities should own.  Then from the perspective of asking why anyone would *want* faculty work to be owned by the state (in the case of public universities).

In a previous essay, I challenged the notion that universities are employers for all of a faculty member’s activities.  I argued that they are employers for only a portion–a small portion, actually–of a faculty member’s work.  For the rest, the faculty member is something more of an appointee.  It is in this role as an appointee that the faculty member provides the greatest service to the public.  To make the faculty member more “efficient” about the “official duties” would be to greatly reduce the range of possible action that we expect of faculty, but cannot require because we cannot plan in advance. Continue reading →

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Are university faculty employees wrt research IP?

Posted on February 9, 2012 by Gerald Barnett

Are faculty “employees” for the purpose of intellectual property in research?  I argue they are not.  Here’s a sketch of my reasoning.

Consider:

Faculty choose their research topics.  They choose where they will do their work (university or not).  They choose their collaborators.  They choose their funding.  They choose their methods, identify results, and choose where and when they will publish.  They even have to request approval to obtain extramural funding–in essence they ask to be released from their “official duties” to do extramural work.  The university does not commission the work, direct the work, review the work, or approve or accept the work.  It does not even know about the work, but for a record of the funding.

With their research there is no way that faculty are working for the financial benefit of the institution with regard to work product. Continue reading →

Posted in Agreements, Policy, Present Assignment | 1 Comment

And all your student ideas are belong to us, too!

Posted on February 8, 2012 by Gerald Barnett

Students who are also employees, students working on a sponsored project, and students who have used University resources (other than for lecture-based coursework) shall also report all inventions and discoveries to the University’s Office of Intellectual Property and Technology Transfer and shall assign all such inventions and discoveries in the same manner as University employees.

From the University of Washington’s “Patent, Invention, and Copyright Policy.” See I.C, the middle of the paragraph. (My emphasis.)

Is this even legal? How does this policy statement come to have the force of a contract to compel assignment of inventions merely because an individual has “used University resources”? Continue reading →

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All your non-general expertise and ideas are belong to us

Posted on February 8, 2012 by Gerald Barnett

Universities may not own ideas yet, as I quipped in a recent post, but take a look at this bit of policy from the University of Washington, one of the country’s leaders in messed up IP policy:

“Deeper Involvement Review” C.4.

Where an employee, whether full-time or less than full-time, desires to utilize the expertise and/or technology he or she has developed and to assist a business venture (i.e., corporation, partnership, or other commercial enterprise) in the commercialization of an idea, the employee and his or her supervisor should first seek the early assistance and counsel of UW TechTransfer to aid the employee in distinguishing those things which may be freely shared (e.g., “general expertise”) from those the sharing of which may be restricted (e.g., “technology” or other “intellectual property”).

The University here implies that it has the power to restrict faculty ideas, expertise, and “technology” and to prevent faculty from assisting companies.   There is no mention of the faculty doing the assistance for compensation or as part of “deeper involvement” (such as taking a management position).    Where does the state, let alone a public university, get such powers?   There is no trade secret or non-compete covenants, and last I heard universities encouraged publication.  It appears “conflict of interest” now means “suppression of public service” and “all your ideas are belong to us”. Continue reading →

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More Bad Science = Tech Transfer Changes

Posted on February 8, 2012 by Gerald Barnett

Another summary  of “bad science”, this time in bright graphics with emphasis on biomedical and clinical psychology.  If 1 in 3 scientists are cooking their results a little longer than they should, should technology transfer offices be a lot more skeptical of claims made in disclosures of “inventions” and a lot more reserved in presenting “technology” available for license?

It’s an unmanaged organizational conflict of interest.  One cannot insist on research integrity if you are trying to make money or claim program successes because the technology you own is just a bit truer or sooner than the other person’s technology, and that’s your competitive advantage.

And one cannot use the excuse of money-making from patent positions (enhancing the “value” of the technology) to withhold data and IP rights from arm’s length use by industry, where the peer review has enough riding on it that industry cannot afford to cook the books on itself.

Commercialization and research access have to be separated. Continue reading →

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Simple, Clear Model University IP and Consulting Policies

Posted on February 7, 2012 by Gerald Barnett

That last post was no fun at all.  I hope you skipped it.  It just documents how bad stuff is so no one can feign that it looks pretty good, really.  No matter.  Perhaps long IP policies are doomed.  If they are long and consistent, they are too complicated and there are too many ways to mess up.  If they are long and a mess, then they are already messed up.

If we want to keep it simple, here are model policies that any university may adopt.  I’m pretty sure these really work!  Continue reading →

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A compulsory policy so messed up, it must be voluntary!

Posted on February 7, 2012 by Gerald Barnett

11.  The present assignment is so incompetently constructed it boggles the mind.

In a prior post, I included the above in a list of problems with UW’s implementation of present assignments. I added this one because, well, UW’s “goes to 11“.

The post is a longish one, and not for the weak of heart.

It’s here not for fun reading but to document just how defective the UW present assignment implementation is, and how defective the UW policy statements are behind it. At least things are consistent. If it’s going to be a turkey of a movie, it should have turkey acting in every scene. I didn’t enjoy writing this, and I’m rather pissed that I had to spend so much time documenting how bad things are. And this is just the tip of this big, cold thing.

The short of it is, the present assignment text in the outside work approval form is fatally flawed and inappropriate to the policy requirements for consulting.  Continue reading →

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