7 Points on the *UW* Present Assignment Requirement

Posted on February 7, 2012 by Gerald Barnett

There has been some discussion going on about the recent UC UW requirement that everyone sign a new patent acknowledgement outside work request form, this one with a present assignment in it, with the claim that this change is needed to respond to the Stanford v Roche decision and that it is not a change in policy.   Here are seven points about all this.  I can elaborate, but why?

  1. The UC UW requirement is clearly a policy change
  2. The change does not appear to have gone through proper processes for changing policy
  3. The change does not apply to folks still under the pre-1997 previously granted approvals UC policy anyway
  4. The change does not address the Stanford v Roche situation though it claims to
  5. The change does not address title uncertainty because scope is still totally open
  6. The change positions the present assignment in the wrong place–at employment a request for outside work–not even within scope of employment–instead of at the point of joining a controled-IP project
  7. The change damages the review and release portions of UC UW policy by taking ownership prior to review
  8. UC’s UW’s prior practice was entirely consistent with Stanford v Roche
  9. UC UW like many other schools has failed to implement (f)(2)
  10. Implementing (f)(2) for each funding agreement would address Stanford v Roche
  11. The present assignment is so incompetently constructed it boggles the mind.

It would look like this:

You have chosen to join a project supported by the Federal government.  As required by the patent rights clause in the funding agreement, the University requires you to make the following agreement to protect the government’s interest in subject inventions, that is, inventions that you may make within the planned and committed activities of the government-funded work:

I agree to disclose promptly in writing to my campus technology transfer office using the provided disclosure form each subject invention made under this contract in order that the University can comply with the disclosure provisions of the patent rights clause of the funding agreement, and I agree to execute all papers necessary to file patent applications on subject inventions and to establish the government’s rights in the subject inventions.

Signed: __________________

 

Posted in Present Assignment | 1 Comment

Research Veering in the Public Interest

Posted on February 7, 2012 by Gerald Barnett

Did you see this story in the New York Times yesterday?  “Sloan-Kettering Chief Is Accused of Taking Research.” Craig Thompson, who worked at a research institute affiliated with University of Pennsylvania, starts a company, Agios, and now is being sued for “taking research.” Apparently there are no specific claims–not patent infringement or removal of materials. It looks like Thompson did a lot of research, realized where new work could go in the area of cancer metabolism–what the company calls “metabolic rewiring,” and started a company to go after his ideas.

Universities do not own ideas–at least not yet, thank goodness. They do not have trade secret claims on faculty. They do not have non-compete claims for research (except sometimes limitations on being a PI for another organization on grants that could come through the university). They do not “own” “research.”   Continue reading →

Posted in Innovation, Sponsored Research | Tagged , , , , , | Comments Off on Research Veering in the Public Interest

Practical Lessons for University Counsel

Posted on February 6, 2012 by Gerald Barnett

Here’s a typical slide deck (it opens in PowerPoint–sorry non-‘Softies) [now deleted–but here is a similar slide deck, posted at the University of Tennessee at about the same time, by Lakita Cavin, a staff attorney, and displaying similar problems] talking about Stanford v Roche and offering lessons learned. It looks like it was prepared by the University of Rochester’s Office of General Counsel. It does a nice job on the chronology, ignores Stanford’s policies and practices, and constructs a strange hypothetical that leads to a wonderful set of “lessons” that may be useful to keep in mind but have next to nothing to do with Stanford’s practice. I would go so far as to say it is talks like this that do more to obscure the lessons that should be learned than they help anyone understand practice.  And this is a thoroughly typical, serviceable talk.

Here are some things the talk leaves out. Maybe the first lesson is to avoid abstracting a situation to a set of facts that mislead folks to a simplistic lesson about being careful about signing documents when they should be taking a hard look at their attitudes about collaboration, money, and innovation.

1) Stanford’s policy allowed inventors to own “whenever possible.” Continue reading →

Posted in Bayh-Dole, Stanford v Roche, Technology Transfer | Tagged , , | Comments Off on Practical Lessons for University Counsel

SB 6542 in Star Trek

Posted on February 6, 2012 by Gerald Barnett

SB 6542 will force universities to a voluntary IP program, and is being opposed by administrators who believe it is a virtue to place institutional self-interest ahead of individual liberty….  Translated into Star Trek (TOS), it’s something like this: Continue reading →

Posted in Policy, Present Assignment | Comments Off on SB 6542 in Star Trek

On the Central Control of Research Innovation

Posted on February 6, 2012 by Gerald Barnett

Global University Venturing has published an essay that explores yet another aspect of the present assignment situation, exploring the effect of institutional claims on the dynamics of innovation.  In the essay I try to put in the context the arguments for central control that allow folks to justify public universities’  introduction of present assignments as a condition of employment.

For an example of how this new policy at Washington is affecting a lab, take a look at this post from the now not-so-Open 3d Printing site.  The problem is, if you the outsider teach UW folks how to do something, and if the UW folks have signed the outside work approval form, then UW insists that they own your “know how” automatically, by present assignment.  Of course, if the UW folks don’t sign, then they are apparently committing an ethics violation by not being complicit in baiting you to turn your ideas over, at least jointly, to the University for possible “commercialization”.

Is the approval form enforceable?  Dunno.   Continue reading →

Posted in 3D Printing, Policy, Present Assignment, Technology Transfer | Comments Off on On the Central Control of Research Innovation

When public mission = money

Posted on February 6, 2012 by Gerald Barnett

I have been emphasizing organizational conflict of interest.  Most universities have no policy on such things, and therefore technology transfer has been allowed to make a transition from a broadly faculty-led activity with a diversity of practices reflecting the range of inquiry and personal insights that characterize a university to an institutionally narrow endeavor focused first on championing patent licensing, then bringing it in-house, then requiring it for some inventions, then requiring it for all inventions, and then seeking to force all inventions to happen in-house by requiring ownership for everything, and calling anything done outside a personal conflict of interest.

In essence, technology transfer operations got fixated on the money, and then because there was no check on organizational conflict of interest, made the equation public mission = money.

That, of course, is the same thing as saying, “run more like a business”.  Put another way, it says, “to heck with the public mission, this is about institutional self interest.  Because the institution is “public” then anything it does by definition must be in the “public interest”.  Therefore making money is in the public interest.  On with it! Continue reading →

Posted in Innovation, Policy, Present Assignment, Technology Transfer | Comments Off on When public mission = money

Senate Bill 6542: Innovation Bill of Rights

Posted on February 4, 2012 by Gerald Barnett

Senator Maralyn Chase has introduced a bill in the Washington State senate that would prohibit public universities from making compulsory claims of ownership of intellectual property based on employment or use of facilities unless required by a sponsor of research.

The text of the law is available here.

The University of Washington and Washington State University are, in a reflex action, opposing the bill, though it is in their best interests.   The bill is motivated by a recognition that it is time to free up the creative capabilities of faculty, staff, and students to get out into the community and develop their ideas.   They cannot do this if they have to wait for bureaucrats (however specialized, however well-meaning) to decide what to do with their ideas.  Nor can the community–industry included–wait for a patent attorney to muscle up 35 pages of technical text that pushes all the risk and financial obligation onto a poor “licensee” just so that someone can read a scholarly publication and expect to be able to practice what they learn there.  Continue reading →

Posted in Policy, Stanford v Roche, Technology Transfer | Comments Off on Senate Bill 6542: Innovation Bill of Rights

Ownership vs Stewardship, Fictionally Speaking

Posted on February 2, 2012 by Gerald Barnett

I have a perspective piece on ownership, stewardship, and Bayh-Dole after Stanford v Roche that has been published in Genetic Engineering & Biotechnology News.  I thought I would put a link here if folks wanted to see it.

Everyone talks about IP ownership. Ownership is a big word on campus. Ownership is the first thing you have to have if you are going to be in the patent arbitrage game. Ownership is a strong rhetoric, for leaders and lawyers. Unlike ownership talk, talk about stewardship is a weak rhetoric. No university has an IP stewardship policy. Yet that is what they desperately need. When a university implements a present assignment policy–self-executing, compulsory assignment lacking specificity–and commits IP first to a unit dedicated to making money from IP for institutional self-interest and calls that a virtue, you have the makings for organizational conflict of interest.  Not the personal stuff, but the stuff where the institution itself has compromised its impartial attention to the public interest and governing its affairs so it can dip in and take a little–or a lot–for itself. No university I know dedicates a share of its licensing income to the poor, or to other nonprofits, or to industry. Imagine, setting aside a million dollars a year for small companies to use for scientific research. “Just ask, folks–that’s why we worked so hard to close deals.” Imagine the attention such a fund would half among entrepreneurs and second stage companies looking to grow through innovation. But no. It won’t happen because of institutional self-interest. The stewards would be kings.

And in that, there is a moral failing. Continue reading →

Posted in Bozonet, Policy, Technology Transfer | Tagged , , , , | Comments Off on Ownership vs Stewardship, Fictionally Speaking

The Star Trek Version of Ohio Revised Code 3345.14, Again

Posted on January 27, 2012 by Gerald Barnett

Sometimes it helps to transform a problem to see how it stacks up in a familiar notation.  This is done frequently in physics, for instance, where one might find a particle development advantageous over a wave-based notation for some calculations. Douglas Hofstadter in Goedel, Escher, Bach looks at these sorts of transformations as they apply to logic systems.

Given how technical all the innovation stuff gets, perhaps reposting a translation of the Ohio Revised Code (ORC) into Star Trek makes it all simpler. The ORC disrupts opportunities, and then creates a liability for folks who would consider doing something it forbids, even if it would otherwise seem reasonable–the authority of the law is as important as the import of the law, and even if unreasonable, it still demands respect.

It is this respect card that administrators play to rationalize their mistakes and push back on those faculty folks, who of all the people in the world are hired to be the outspoken evaluators of what is reasonable and substantive and holds up to scrutiny–except, apparently, when it comes to university invention policies, where they are supposed to be docile, dutiful workers delighting in the superior capability and vision of management.  WTF, with that?  Continue reading →

Posted in Policy, Present Assignment | Tagged , , , , | Comments Off on The Star Trek Version of Ohio Revised Code 3345.14, Again

Where’d you go, Ohio?

Posted on January 27, 2012 by Gerald Barnett

I have written previously about the State of Ohio’s effort to frustrate federal invention policy by asserting that public universities in the state own all inventions made in research done in state facilities or by university employees in the scope of their employment, using “funding, equipment, or infrastructure” provided “by or through” any public university.

Here’s the text from ORC 3345.14:

(B) All rights to and interests in discoveries, inventions, or patents which result from research or investigation conducted in any experiment station, bureau, laboratory, research facility, or other facility of any state college or university, or by employees of any state college or university acting within the scope of their employment or with funding, equipment, or infrastructure provided by or through any state college or university, shall be the sole property of that college or university. No person, firm, association, corporation, or governmental agency which uses the facilities of such college or university in connection with such research or investigation and no faculty member, employee, or student of such college or university participating in or making such discoveries or inventions, shall have any rights to or interests in such discoveries or inventions, including income therefrom, except as may, by determination of the board of trustees of such college or university, be assigned, licensed, transferred, or paid to such persons or entities in accordance with division (C) of this section or in accordance with rules adopted under division (D) of this section.

The law as I have it says “Effective Date:  09-07-2000”.

The State claims not only the work of employees acting within scope of employment (which does not address the question of what the scope of faculty employment actually is), but also using facilities (buildings), funds, equipment, and “infrastructure” (whatever that might mean).  Furthermore, it claims ownership of inventions made in research facilities even when made by non-employees.  Fancy that.  Continue reading →

Posted in Bayh-Dole, Bozonet, Policy, Present Assignment, Stanford v Roche, Technology Transfer | Comments Off on Where’d you go, Ohio?