A Fine Overview of Corporate Sponsored Research

Posted on January 24, 2012 by Gerald Barnett

In 2008 Roger L. Geiger  prepared this report on corporate-sponsored research for Penn State.  It’s the best discussion of the subject I’ve come across.  I have been involved in or closely followed a number of the programs–the Intel lablets (some now closed), the HP effort to create a continuum (now apparently abandoned), Open Innovation, the problems with IP in industry research agreements, UARCs (I worked for six years on the NASA Ames UARC), and consortia (ERCs in particular)–that he discusses, and in those areas, he is spot on.

Really, this should be required first reading for folks looking to understand the general character of industry-university collaboration. Continue reading →

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It’s not a change in policy, it’s not a change in policy…

Posted on January 17, 2012 by Gerald Barnett

Well, I guess the UC present assignment doesn’t have to be, technically,  a change in policy.  It could be simply a violation of policy.  Note that in the UC Patent Policy, we have this:

An agreement to assign inventions and patents to the University, except those resulting from permissible consulting activities without use of University facilities, shall be mandatory for all employees, for persons not employed by the University but who use University research facilities, and for those who receive gift, grant, or contract funds through the University. Such an agreement may be in the form of an acknowledgment of obligation to assign.

Policy provides for an agreement to assign. It does not provide for a present assignment, as Arizona’s policy does, nor does it authorize an acknowledgment of present assignment, but rather of an obligation to assign, which at the point of employment, where the patent acknowledgment is presently positioned in UC practice, has to be regarding inventions in the future–that is, a promise to assign.

It could be, then, that I am wrong when I say that the move to present assignments is a change in policy.  Clearly, no *policy* document has been changed!  Only the *acknowledgement* document, which is not *policy* but the implementation of *policy*.  If the requirement to make a present assignment of all unspecified future inventions prior to any review is not a change in policy, then it would appear to be a willful move to ignore the policy, or if one wanted to be extraordinary graceful about it, to interpret the policy in an unexpected way that could be construed as overstepping the agreement that the present patent acknowledgment records.  The agreement is not the thing on paper, it is what the parties to the agreement reasonably believe the paper memorializes.

Thus, it may well be that the UC move to present assignment is not a change in policy, but rather a disregarding of policy.  In that way, UC folks perhaps are correct, though not particularly candid, in stating that the change is not a change in policy.

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7 Points on the UC Present Assignment Requirement

Posted on January 17, 2012 by Gerald Barnett

There has been some discussion going on about the recent UC requirement that everyone sign a new patent acknowledgement, 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 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 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 instead of at the point of joining a controlled-IP project
  7. The change damages the review and release portions of UC policy by taking ownership prior to review
  8. UC’s prior practice was entirely consistent with Stanford v Roche
  9. UC like many other schools has failed to implement (f)(2)
  10. Implementing (f)(2) for each funding agreement would address Stanford v Roche

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: __________________

Continue reading →

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Oh, to be the happy dog again

Posted on January 15, 2012 by Gerald Barnett

There has been a lot of bad advice for universities out there in the wake of Stanford v Roche.   It almost appears to be orchestrated talking points on the need for universities to implement present assignments to prevent another outcome like Stanford v Roche.  I don’t agree.   Implementing present assignments–especially as a condition of employment–makes matters worse, much worse for universities.  Not only does it not address Stanford v Roche, but it also creates new liabilities, disrupts existing policy, and worst of all, obscures the real exposures a university has in licensing.

The problem that arose in Stanford v Roche has to do with incoming IP.  That is, nothing matters in the case until a person with obligations outside the university with regard to IP joins a university research project, uses university facilities, and benefits from university-administered funds in a sponsored project.  These are the things that typically trigger claims to ownership under a university IP policy–employment, use of resources, and extramural support.  Continue reading →

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What "of the contractor" teaches us about "subject inventions"

Posted on January 10, 2012 by Gerald Barnett

[In a previous essay, I worked through problems with “of the contractor” and argued that the interpretation had to include employees who invent even if they had not assigned to the contractor.  Here, I explain in more detail how this comes about.  It is not by stretching the “of” but by recognizing who has the standing of “contractor”. ]

In Stanford v Roche, the Supreme Court reasoned that “of the contractor” meant ownership not agency.  Thus, for an invention to be “retained” by the contractor, it first had to be owned by the contractor.  University administrators argued that this meant that Bayh-Dole must be a vesting statute, handing inventor’s rights to university employers as a matter of federal law.  The Supreme Court rejected this argument, ruling that patent law governs the assignment of title to inventions.

What then do we do with 35 USC 202(d):

(d) If a contractor does not elect to retain title to a subject invention in cases subject to this section, the Federal agency may consider and after consultation with the contractor grant requests for retention of rights by the inventor subject to the provisions of this Act and regulations promulgated hereunder.

In 37 CFR 401.9, we find a restatement:

Agencies which allow an employee/inventor of the contractor to retain rights to a subject invention made under a funding agreement with a small business firm or nonprofit organization contractor, as authorized by 35 U.S.C. 202(d), will impose upon the inventor at least those conditions that would apply to a small business firm contractor under paragraphs (d)(1) and (3); (f)(4); (h); (i); and (j) of the clause at Sec. 401.14(a).

Now, here’s the definition of subject invention:

(e) The term “subject invention” means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement: Provided, That in the case of a variety of plant, the date of determination (as defined in section 41(d) of the Plant Variety Protection Act (7 U.S.C. 2401(d)) must also occur during the period of contract performance.

If “of the contractor” means “owned by the contractor” then in 202(d), we have something like, “if the contractor does not desire to retain title to what it already owns, then the agency can discuss with the inventors whether they can retain title to what they don’t own.”  That is, the inventors can’t “retain” rights to something they gave up rights to so that the contractor owns it.  Continue reading →

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Theory Failure in Technology Transfer

Posted on January 6, 2012 by Gerald Barnett

Chris Newfield underscores some of the points I make about the linear model from a different direction in an essay he wrote recently for the Remaking the University blog.

If the US can’t get over the hump and start spending real money through public institutions on social needs, our distorted, inefficient private sector is going to keep suffocating public universities, not to mention the public and the economy overall.

Down in the muddy heart of university research leading to public good lies thinking about the linear model, and that fictional “continuum of innovation” which argues, coarsely, that dabs of public money “taking early risk” will lead to dollops of private investment “taking over” when there’s money to be made.  Newfield argues there has been “theory failure”:  “The government’s role is to give early-stage money to the private sector, and go away.”  That is, fund “basic research” and hand off the results, through “licensing” to capitalist speculators, who then will create from these seeds the companies that will provide the jobs and products for society. It is the theory that proposes this that Newfield sees as failed.   Continue reading →

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Explaining an Emblem of the Linear Model

Posted on January 4, 2012 by Gerald Barnett

Gene Quinn at IP Watchdog posted last October a nice essay (h/t to François Stofft at the Linkedin International Technology Transfer Professionals group) on the problems of accelerating technology transfer by federal fiat. The new programs that have been announced by the White House are good as far as they go–helping small companies with a web site stocked with information, providing IP assistance, making it easier for agencies to partner with private concerns, asking agencies to count the number of patents as a measure of their research productivity. Well, maybe that last one is screwball.

However, the thing that caught my eye was a powerpoint slide that he attributed to Linda Katehi, the Chancellor of UC Davis:

This is a wonderful emblem that aims to rationalize technology transfer. I have always found this sort of thing troubling.  Continue reading →

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Limits of Causation Models in Technology Transfer

Posted on December 31, 2011 by Gerald Barnett

There is an article by Jonah Lehrer in the latest Wired magazine that is worth the read. It’s called “Trials and Errors” with the subtitle “Dead-end experiments, useless drugs, unnecessary surgery. Why Science is Failing Us.” Lehrer discusses the growing awareness that the reported science in the archival literature is proving way more unreliable than one would be led to expect.

One of the problems stems from our ideas of causation:

The truth is, our stories about causation are shadowed by all sorts of mental shortcuts.  Most of the time, these shortcuts work well enough… However, when it comes to reasoning about complex systems–say, the human body–these shortcuts go from being slickly efficient to outright misleading. Continue reading →

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Compulsory IP Taking and Public Universities

Posted on December 30, 2011 by Gerald Barnett

Personal ownership of inventions is a matter of federal common law and a personal right to a patent on that invention is established in the US Constitution. The Bill of Rights also provides that the government cannot take property without due process and just compensation. State laws in various states place limits on what an employer may require of employees by way of assignment of inventions, as a condition of employment.

Now let’s ask the question–if a public university, that is, an instrument of government–requires assignment of inventions as a condition of employment, but the employment does not involve duties that would pertain to the invention, is that a taking of private property without just compensation? I think so.  Continue reading →

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The Effect of University Monopoly Licensing in 3d Printing

Posted on December 29, 2011 by Gerald Barnett

Inkjet powder 3d printers provide a useful case study for the effects of university exclusive patent licensing.  In the early 90s, MIT researchers developed inkjet 3d printers. They built off much of the technology platform used for selective laser sintering powder-bed printers, which had been developed at the University of Texas in the mid 1980s, with a series of patents issuing. Here’s a brief overview.

The feed and build tables, the counter-rotating roller used for spreading the powder, and the idea of storing a control file in computer memory to control the build were all out there, available to be used. The idea of building things out of powders in layers goes back yet earlier–to at least the work of Ross Housholder, who patented in 1981 an approach using heat to selectively bind powder deposited in layers. Charles Hull, in the mid 1980s, developed a method (“stereolithography”) for creating objects by shining uv light on the surface of a liquid polymer, under computer control. That ended up as patent 4575330 and Hull founded 3D Systems (which has just recently acquired Z Corporation). Continue reading →

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