Institutional IP Baksheesh

Here is perhaps the worst conceived and written paragraph in University of Washington policy history.   Seven sentences without the hope of connecting their subject and verbs into a coherent expression.  Read, enjoy.  I’ll work through the finer points in a bit, but this is something to be savored.  This is best read aloud to someone, slowly, clearly, so the full import of each attempt at an idea can be fully appreciated.

Involvement with commercial enterprise also offers the potential for conflicts of interest and commitment, for inhibition of free exchange of information, and for interference with the employee’s primary allegiance to the University and its teaching, research, and public service missions. However, such involvement may also enhance both the individual employee’s and the institution’s commitment to their shared missions. This commitment on the part of an employee is an essential element of the institutional ethos of the modern research university and is complemented by a recognition on the part of the University that any rewards that may accrue to the University as a result of an employee’s research efforts should be shared with the employee. Complementary essential elements of the University’s commitment to encouraging appropriate technology transfer are the protection of the University’s integrity and primary goals of education and open inquiry, and the management of potential conflicts of interest. Careful attention to avoiding such conflicts ultimately serves the interests of both the employee and the University. Toward this end, this section prescribes a disclosure and approval process for involvements with commercial enterprise deeper than usual professional affiliations or outside consulting. The policy recognizes the need for flexibility and the difficulty of anticipating all situations that may arise by leaving discretion to an employee’s supervisor to interpret the policy and evaluate the activity proposed in the context of the unit in question. Continue reading

Posted in Bozonet, IP, Policy, Technology Transfer | 2 Comments

Time to Reboot the Franchise

I have been working through University of Washington policy on inventions.   One of the interesting–and dismaying–aspects of the Washington policy is its use of conflict of interest policies to route intellectual property ownership to the control of administrators.   I know, there are folks who think that if you work for a university, it should be like a company, and everything you do should be the company’s.  It’s just “fair” and “reasonable”.   I don’t agree, not even for companies, especially if we are talking invention.  All the more so for universities, and in particular, public universities.  There, claiming IP is equivalent to demanding state control over creativity.  I don’t know why folks would think that state control would be really keen, but let’s start by saying it’s not the sort of thing that promotes academic freedom, and it is also not what promotes innovation.  We can have it out on survey data proxies for productivity and the like, but why not just stay with the idea of argument for a bit before flying to statistics, damned lies, and the like? Continue reading

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How the Disease Spread

A theme of this blog recently has been the transformation of faculty work from that of independent scholars working collectively to form a university to that of indentured labor working for management that controls the university.  This is particularly true of technology transfer and intellectual property.   Inventing was a private matter.  It wasn’t within scope of duties, it could happen in research or otherwise, it could “make use” of facilities like preparing curriculum or developing materials for a lab exercise, and the private claims on such inventions were none of the university’s business, any more than it would claim copyrights in scholarly articles, books, plays, sculpture, or architectural drawings.  Continue reading

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Washington’s little "it’s not a policy change"

Here’s more evidence in the wild about how administrators are warping the Stanford v. Roche decision.  Here it is the University of Washington, sending out a note to faculty about little technical changes in approval forms for consulting, claiming it’s not a change in policy:

The changes do not reflect a change in policy, or any increase in intellectual property rights to the University.  Rather they are to provide guidance and to ensure the rights of the University are not lost due to us not using current standard assignment language that other Universities and our industry partners have adopted.

The new language to follow is the “current standard language”.   More than that, “industry partners” have adopted it.  This is a strange opening, even without the spurious capitalization of “Universities”.  Why would company present assignment language have any bearing on university patent practice?  The cover note goes on:

Continue reading

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The Sea Change

The Chronicle of Higher Education published a note about Stanford v. Roche in June.  It repeats the mantra given out by law firms regarding the decision: “The ruling was also a warning to universities to carefully check the language and grammar of the contracts they sign with researchers.”

The mantra is mistaken and damaging.  Stanford v Roche is not about paperwork details.  How does anyone get to that?  A paperwork change wouldn’t have made a lick of difference in the Cetus situation.  It does make a world of difference, however, in the effect university bureaucracy has on research activity.  There, it is a sea change, and not one for the better.  Continue reading

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Innovation Fiction

Bewilderment, in its ancient and literal sense of being cast away in a trackless wild, was the lot of the explorer….”  Neal Stephenson, Quicksilver (p. 47 in the paperback edition).

If you happen to be looking for a framework in which to consider innovation, then the 3,000 pages of the Baroque Cycle may be just the thing.   The series provides a foundation for looking at the rise of natural philosophy from alchemy, the development of a new system of commerce and trade, and a transformation in government, all taking place in a 60 year span, 1655 to 1715.

The great challenge we have in looking back is that we look with our own eyes.  Obvious, yes, but that is the problem.  Continue reading

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Transmogrifying Bayh-Dole into University Self-Interest, Wisconsin-style

The University of Wisconsin system provides a template agreement that is meant to satisfy the (f)(2) requirement.  Let’s work through it to see what parts are required by the standard patent rights clause in Bayh-Dole, what parts are inserted by the University for its own purposes, and what’s been left out.  We will work through this line by line, with points of comment marked in red. Continue reading

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Wisconsin offers a little choice

The University of Wisconsin had a strong tradition of faculty ownership of IP and control over research activities.  Faculty negotiated their own sponsored research agreements, for instance, with regard to IP.  Wisconsin wasn’t alone in this.  Until recently, Stanford had an IP policy that said that faculty should own their IP “whenever possible”.  This was one of the educational moments for them in their case against Roche.  They apparently didn’t realize that it was indeed possible for individuals to own invention rights with federal funding, as the Supreme Court made perfectly clear.  Rather than learning from this, however, they have gone the other way and aimed to make ownership by the university not only compulsory but outright in advance.

Interlude. It’s really bad advice being handed out by law firms with regard to the use of present assignments as part of university IP policy.  Continue reading

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Universities went wrong early on Bayh-Dole

Here’s 37 CFR 401.14(a)(f) under the heading “Contractor Action to Protect the Government’s Interest”: (2) The contractor agrees to require, by written agreement, its employees, other than clerical and nontechnical employees, to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the contractor each subject invention made under contract in order that the contractor can comply with the disclosure provisions of paragraph (c), above, and to execute all papers necessary to file patent applications on subject inventions and to establish the government’s rights in the subject inventions. This disclosure format should require, as a minimum, the information required by (c)(1), above. The contractor shall instruct such employees through employee agreements or other suitable educational programs on the importance of reporting inventions in sufficient time to permit the filing of patent applications prior to U.S. or foreign statutory bars.

Here’s the 1984 University of Wisconsin policy write up of it:

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My university, the chapman

You may ask yourself, where does that highway lead to?
You may ask yourself, am I right, am I wrong?
You may say to yourself, my god, what I have done?

“Once in a Lifetime” — Talking Heads

Sometimes, the thing that is happening takes years to happen, and we weedle and ease and backpedal into it. That’s the case at present with intellectual property and universities.  Helped by the Bayh-Dole Act, and especially by rampant misinterpretation and abuse of the Bayh-Dole Act by university administrators, we have gone from a relatively open approach to intellectual property to one of management autocracy. Previously, inventors owned their rights as provided by law, and university administrations had the task of making sure that exploitation of those rights by individuals advanced and did not interfere with or compromise the activities of the university, especially those of instruction and public service. Now we see the finishing touches of a conversion to a compulsory, process-bound approach in which the university claims ownership and primary financial interest in all inventions, precluding individual initiative, undermining collaboration with industry, creating uncertainty for investors and community adopters alike, and raising the overhead by which research results can come to be used by others. Continue reading

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