Back on the A-110

Posted on December 10, 2010 by Gerald Barnett

I would like to expand on what used to be OMB Circular A-110.  Section .36 deals with intangible property.  Bayh-Dole via 37 CFR 401 is incorporated by reference at .36(b).

At (d), there is this text:

Title to intangible property and debt instruments acquired under an award or subaward vests upon acquisition in the recipient. The recipient shall use that property for the originally-authorized purpose, and the recipient shall not encumber the property without approval of the Federal awarding agency. When no longer needed for the originally authorized purpose, disposition of the intangible property shall occur in accordance with the provisions of § 215.34(g). Continue reading →

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Invention, patent, vision

Posted on December 9, 2010 by Gerald Barnett

I am working to get at the root of why anyone would think a compulsory linear model, however driven and resourced, could possibly make any sense at all, especially in light of the last 30 years of dismal failure by university tech transfer offices to improve on the outcomes from the 70 years before that, where the model was uniformly non-compulsory and almost always not university-administrated.

The bits that have to be unwound from the impulsive, sloppy, even bullshit (technical term, see Frankfurt’s On Bullshit) used by administrators are these: Continue reading →

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How to get through an open door

Posted on December 9, 2010 by Gerald Barnett

In a discussion over at the LinkedIn group SpinOut, there is a valuable discussion going on the matter of the University of Glasgow’s splash in the press about offering a free license (exclusive, apparently, even) to patented technology, if only a company will show up with a plan for its development.   The SpinOut group has consistently been one of the most productive and thoughtful forums for the development of these ideas, with a particular emphasis on the UK, where many of its participants are based.  That in itself provides a valuable counterpoint to US sensibilities regarding the role of research inventions in a broader economy. Continue reading →

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Same as it ever was

Posted on December 7, 2010 by Gerald Barnett

I’m trying to pin this down.  It is has been a long haul.  First we looked at Stanford v Roche and the AUTM arguments for vesting and found them all scary and wrong, but it took a lot of work with Bayh-Dole–and to get past its “defenders”–to see what is actually going on.  Then we had to look at how Bayh-Dole does shake out in general, in terms of how Bayh-Dole operates, how obligations are distributed, what options and obligations a contractor in a federal funding agreement may have, and how these in turn might apply in the case of Stanford v Roche.  Continue reading →

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Ruby Slippers? What Ruby Slippers?

Posted on December 7, 2010 by Gerald Barnett

In The Wizard of Oz, Dorothy is sent to get the broomstick of the Wicked Witch of the West, having first to deal with her winged monkeys, only to find out that the secret to getting home was the ruby slippers she was wearing from her past encounter with the Wicked Witch of the East.   In our situation, Dorothy is Stanford, but it’s not proper to make the analogy that AUTM is the winged monkeys.   We know AUTM doesn’t have wings. Continue reading →

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A New Template Agreement

Posted on December 3, 2010 by Gerald Barnett

This agreement came across my desk and I thought it was worth making available.  It’s not quite a social contract, and it clearly does not track anything I’ve ever seen in any official communications of university technology transfer.   So it must not have any particular substance.  But as an agreement, it offers some interesting constructions that may serve as practice tips.   See what you think.

Cutting Edge and Trendy

and Low Ball if  not Totally Free on Price

(hereinafter, the “Designated Sticking Point”)

Exclusive Agreement

in lieu of any other agreement, remedy, or rationale for making unreported past and anticipated dismal failure into a virtuous, innovative new feature of the never sub-optimal “license to your favorite future monopolist” model of research invention hoarding

(hereinafter, the “Model”)

Continue reading →

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Charter Innovation

Posted on December 2, 2010 by Gerald Barnett

I have been working for the past few months on the idea of charter innovation.   Much of this has been in connection with considering innovation in municipal technology–stuff like water systems, communications, cable, energy, and transportation.   This sort of technology is interesting because it can involve nearly everyone, is often subject to municipal codes (and therefore has force of law, and inertia of law, rather than of market choices and inertia of market choice), and there is an added layer of interest at the level of municipal government with regard to whether there should be change.  If a municipal government is making money on permitting, for instance, then it may not have much interest in considering changes that would reduce or end that stream of revenue.

The idea of charter innovation has to do with how a group of people establish the common authorities under which they will manage technology in systems.

Continue reading →

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Rising Conflation

Posted on November 30, 2010 by Gerald Barnett

It would appear that many university patent administrators conflate electing to retain title with having title.   They want to do this.  They think this is a good thing.

Bayh-Dole makes no express transfer of title from inventors to the employing university.  So they make this conflation as a necessary function of the law, so obvious no one thought to state it outright. Continue reading →

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SPRCing of Bayh-Dole

Posted on November 30, 2010 by Gerald Barnett

Bayh-Dole is implemented by federal agreements. There is no general statement in the Act that ownership of inventions previously with inventors is now with their employer hosts. Not outright, not by notice to the government. It is just not there. Folks are making that part up. One might say, it is an assumption that is necessary to make the law conform to their idea of it.  Continue reading →

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The kid who kicked the hornet's nest

Posted on November 30, 2010 by Gerald Barnett

Folks should read Bayh-Dole carefully, closely.

This would be a good time to lay out how folks think the law operates, and back up each claim with citations, and show how the claims and citations all work together. Nothing ignored, nothing contradictory, nothing grossly stupid.

It is especially important to separate out assertions of want that do not have a grounding in the text of the law. If Bayh-Dole is your reason for having a job, then you better get it right–at the level of what the law says, how that law is interpreted into useful actions, and what those actions say about you, personally, as a professional working with creative people within a national framework of research innovation.

Look at the claim that Bayh-Dole gives universities title to inventions. The law never says that.

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