Does Bayh-Dole require a patent policy?

Posted on December 24, 2010 by Gerald Barnett

Here is a bit (see paragraph 9) from a major US university policy on treatment of inventions under Bayh-Dole:

Incumbent upon members of the University community who apply for and receive federal funding to support research or who use federal monies in the conduct of their research is the requirement for written agreement that they will promptly disclose patentable inventions to the University and will execute all instruments necessary to protect the rights of the government and/or the University.

Note: the (f)(2) requirement is actually: Continue reading →

Posted in Bayh-Dole, IP, Technology Transfer | Comments Off on Does Bayh-Dole require a patent policy?

The Moment In-Between

Posted on December 19, 2010 by Gerald Barnett

Here’s a neat essay by Chris Newfield that looks at the elements of innovation that underlie the development of Google from a snatch in a dream to becoming a global information and advertising silverback.

One of the things that has fascinated me is this: in the weeks after a research event (an epiphany like an invention or discovery or nifty data set) there is an urge to chart a course toward something “commercial.” In whatever register, it’s something of a-rush-the-trough idea that loves expediency and opportunity. As soon as there is a report of epiphany, the primary effort of university “technology transfer” is to rush to the market to find “commercial value,” or at least to make an effort to poke the market, or at least make a show of making an effort (much easier). But why? Why would such haste, even haste made orderly (or, say, compulsory) have anything useful to do with an overall effort to match an epiphany with a market? Especially if the markets one really desires (transformational innovation) from university research don’t even exist. Continue reading →

Posted in IP, Social Science, Technology Transfer | Tagged , , | Comments Off on The Moment In-Between

Two Yesses

Posted on December 18, 2010 by Gerald Barnett

The idea of innovation is complicated. Benoît Godin has shown in a series of articles that innovation until the last hundred years or so has been a derogatory term.  No one wanted to be called an innovator. Then in science, there were innovations that folks just had to deal with. One after another. Then the we see consumer products labeled innovative by the 1940s. Then the policy folks got ahold of it, and the term takes on its recent spin.

When we move from innovation as something that stands outside the status quo, or creates separation from it, to how to make money on innovation (which is what most university patent administrators think of, and are rewarded for), we see that patent licensing for monopoly investment easily slips into service to the status quo. Continue reading →

Posted in Social Science, Technology Transfer | Tagged , , , , | Comments Off on Two Yesses

It's That Friggin' Simple

Posted on December 18, 2010 by Gerald Barnett

In Stanford v Roche, the CAFC said, essentially:  why don’t you manage your assignment obligations, if you care about them so much, or even follow the protocols of the law that you seek to claim the benefit of?

This, to howls of protest.  Continue reading →

Posted in Bayh-Dole, Technology Transfer | Comments Off on It's That Friggin' Simple

Compulsory Monopolicy

Posted on December 17, 2010 by Gerald Barnett

I was having some fun with that last post.   Part of the purpose is to tweak the noses of some folks who I hear had a good time trashing this blog at their recent organizational meet-up.   Well, now.  Good fun for all in this business.  When will I stop mocking organizations that take on unsupported positions that damage inventors and university research and the prospects for innovation in innovation management?

1) when they reform themselves;

2) when they hold public discussions on matters of importance;

3) when they give space to minority views because these are not merely dissenting but may be emerging, and may serve circumstances that vary from the typical;

4) when they present their ideas with good reasoning;

5) when they report their activity with intellectual honesty.

Continue reading →

Posted in Bayh-Dole, IP, Social Science, Sponsored Research, Technology Transfer | Comments Off on Compulsory Monopolicy

Just Trying to Help

Posted on December 16, 2010 by Gerald Barnett

I would like to see a solid white paper written by the leaders of the organizations that are arguing for a university compulsory system of invention management. Not some paid attorneys to do the water carrying, not some academics put up to it by proxy, but a statement from those that have substantial practice experience, that have led technology transfer offices, that work through why such an approach is the thing to have.

Since I haven’t seen anything like this, I thought I’d help by providing an outline for such a paper, and what it might cover to give it some substance and really fire home its points. It’s just a start, and I am sure there is much more that can be added to make it a really fine argument supporting compulsory ownership of university research inventions. As far as I can see, there is no such document now, and it would be a really opportune time for the folks who care about compulsory systems to trot one out.  Continue reading →

Posted in Bayh-Dole, Technology Transfer | Comments Off on Just Trying to Help

Why university research IP policies should be different

Posted on December 16, 2010 by Gerald Barnett

I have written multiple times I don’t much care who wins Stanford v. Roche. I like universities and I like companies and I can see problems and advantages in both. I know some of the people at Stanford and don’t know anyone at Roche, and that makes it tempting to just stay quiet, be part of the silent 1/3 until it’s clear who is winning and then pick sides. But no, that is not to be.

What I do care about, however, is when a university-industry collaboration goes bad, into a dispute that ends up in litigation. That is something to make note of. Bayh-Dole has as one of its express objectives the encouragement of such collaborations, so it’s sad to see one part of Bayh-Dole being used to gnaw off another part of Bayh-Dole. Continue reading →

Posted in Bayh-Dole, IP, Sponsored Research, Technology Transfer | Comments Off on Why university research IP policies should be different

Live new or die

Posted on December 16, 2010 by Gerald Barnett

There are ways of thinking about ownership that make it sound perfectly normal for universities to own inventions made in research programs and to assign administrators the task of managing these, and any patents that issue on them. The further away from the action, the more normal the reasoning sounds. Closer in, the response is bi-modal and then gets all mixed up.

There are rationalizations (explanations that satisfy why things are the way they are) and justifications (reasoning about why things this way are good) and diversifications (acknowledgment of alternatives that exist and can be used), but also there are potential innovations (the things that could be done, given where we are, but generally are not recognized). Continue reading →

Posted in IP, Social Science, Technology Transfer | Comments Off on Live new or die

The groundwork for university research innovation

Posted on December 15, 2010 by Gerald Barnett

We helped work on an op/ed piece on the problems presented if Bayh-Dole becomes a vesting statute. Today IP Watchdog published it on their website.

Fundamental university research innovation values are vision, choice, respect, and mutual agreement–not money, monoculture, compulsion, and government taking. Continue reading →

Posted in Bayh-Dole, Social Science, Technology Transfer | Comments Off on The groundwork for university research innovation

Ten Reasons Why Bayh-Dole Isn't and Shouldn't Become a Vesting Statute

Posted on December 14, 2010 by Gerald Barnett

Here are 10 reasons why Bayh-Dole is not a vesting statute, shouldn’t become one, and why that approach should not be taken in an effort to resolve Stanford v. Roche.

1. It is a broken reading of the law. Trying to read Bayh-Dole as a vesting statute conflates retaining title with having title, and makes a muddle of the rest of the law while it is at it.  The law operates by mandating a uniform approach to agency requirements on delivery of title to inventions.  The law requires a standard patent rights clause in funding agreements.  It is a law of federal contracting for inventions, not a statutory vesting of inventions with universities.  They still have work to do for anything they want to acquire.  Imagine—top university patent administrators do not understand the law that founds their practice, or worse, they don’t care to.  Either way, it appears to be more than an honest mistake or something merely worth a shot to argue for.  Continue reading →

Posted in Bayh-Dole | Comments Off on Ten Reasons Why Bayh-Dole Isn't and Shouldn't Become a Vesting Statute