Research Enterprise

There is yet another angle. Why must the prior present assignment and Bayh-Dole be mutually exclusive? Bayh-Dole sets out to provide a uniform policy to protect the government’s interest. That interest is satisfied per the written agreement requirement, for inventors, when they disclose in a timely and sufficient manner, they execute instruments that allow patent applications to be filed and for the government to establish its rights in inventions. Under Bayh-Dole, the government has already ceded that it does not require exclusive title to inventions–and it does not even require title at all, so long as it gets a royalty-free non-exclusive license for government purposes.

Everything else in Bayh-Dole arises not from the actions of individual inventors but from the university’s action to claim title. If a university elects to retain title, then a bunch of things kick in specific to that election. Note that if the university does not elect to retain title, and the agency does not require conveyance of title, then a whole lot fewer things kick in with regard to the inventors retaining title themselves.

Why not shape the rescoping argument so that while the present assignment is still binding as to title, when federal funding is involved, assignment of title becomes joint—that is, to the company and as directed in the chain of titlation that Bayh-Dole triggers. If the university waives its claim, and the government waives its claim, then the inventors could deal directly with the company on the value of the undivided interest they would yet have in the invention. If by title we mean the right to have a patent issue in your name as owner, then it would appear that by dividing the title between personal and federal interests, one arrives at an outcome in which the company is not denied its reasonable, bargained for rights, while the government protocols may still be followed by the university, and the university is not culpable for organizational conflict of interest, unfair competition in seeking federal awards, and restraint of trade.

Again, exclusive title is not a requirement of Bayh-Dole, not as part of the written agreements made with inventors to be, not with regard to conveyance of title to the government, and not on behalf of universities seeking to elect to retain the title. There is no requirement to exclude all others who might co-invent, and no penalties if such a circumstance arises. The law restricts obligations to university employees other than clerical and non-technical employees. There is no guidance with regard to others. There is not even clear guidance with regard to whether the only employees implicated are those working with the funding of a particular grant, or whether, if a university has but one federal grant, all qualified employees must agree in writing to the conditions of Bayh-Dole.

This brings us back to the written agreement with qualified employees required by Bayh-Dole. Neither AUTM/WARF nor the Solicitor General deal with the written agreement. It is clear that in federal awards to universities, and in many federal contracts as well, it is the special performance of faculty investigators that forms the basis for the award. The experience and capability of these investigators is in play, not the university as an administrative entity (only if the university has a history of incapacity or not being responsible does the administrative side enter).

When a research employee is permitted to consult and sign an IP agreement with a company, that action pokes a big hole in the university’s own IP policy. When that employee is permitted to then participate in a federally funded agreement, there is a potential collision between the written agreement to protect the government’s interest and the prior commitment of future patent rights. It is not simply that these are mutually exclusive, as the various friends of the court assume. If the inventor to be timely discloses, and signs whatever is needed to allow patent applications to be filed (the law does not specify who must file), and sign whatever is needed to establish the government’s rights in the invention (which does not stipulate the university’s rights, outside of those rights that serve the government’s interest), then the inventor is not in breach of the Bayh-Dole written agreement. If the prior present assignment, for instance, includes a requirement not to disclose any such invention to anyone else, then there would be a problem.

This approach puts the focus on what the university is able to do if it elects to retain title. The Fear the Reaper argument says, when the university elects to retain title, regardless of the circumstances on the ground and its own involvement in creating those circumstances, the university can void, rescope, and otherwise avoid commitments it has made, or allowed its employees to make, even if it could comply with Bayh-Dole by not electing to retain title, or if electing to retain title, taking action that complies with both the prior personal commitment and the university’s obligations under Bayh-Dole.

The AUTM/WARF folks are worried: what if the invention had been made solely by the inventor who pre-committed rights to a company? That isn’t this case, of course. So it’s asking the Supreme Court to jump from justice in a particular case to a worry by administrators about something else, to re-writing federal law by judicial action to make universities happy, at some disaster for private contracting of patent rights.

So what if the invention had been made solely by the inventor who pre-committed rights to a company? First, can the prospective inventor subsequently agree to the written agreement required by Bayh-Dole? If so, then if the university wants to take title, it has to follow the pathway that allows both the prior commitment and the written agreement to be honored. If not, is it the company’s fault and loss? Or is it the university’s? Or the government’s? It is, after all, the university that is required by the Act to obtain the written agreement of its qualified employees. It would appear that it is the university’s actions that should be subject to review if the employee is unable to act to protect the government’s interest and is permitted to be involved in the federally funded research.

The government’s interest might be threatened any number of ways. The company holding title could sue the government for infringement after a patent issues. The company holding title could refuse to file a patent application. The company could refuse to develop the invention, withholding the invention and its benefits from the public. The company could require unreasonable conditions on the benefits of the invention, again preventing the public from reasonable access. Absent the university’s election of title, the dispute, should it arise, would be between the company and the government. The university, in failing to obtain a written agreement from its employee to protect the government’s interest, would be in breach of its obligation. The employee in knowingly participating in federally funded research with a prior obligation would also be in breach.

One may therefore look at this dispute as one in which a university coalition does not want to be liable in a specific way for their compliance with a federal law. They seek a radical and supportable interpretation of the law to make it impossible for the university to be liable for compliance. No matter what the prior circumstances, getting a federal award erases any non-compliant agreements. Wonderment. Talk about risk mitigation. They envision a law so favorable that there is no possibility of violating it. For this interpretation to succeed, the law has to pre-empt even a university’s own actions and set them right, even if this means huge exposure to losses by others.

It is reasonable to look at scoping of invention commitments. It is reasonable to look at competing assignment obligations. It is reasonable to look at scoping of statements of work as between federal awards and closely related company work. It is reasonable to look at the operation of written agreements made to ensure personal compliance with federal contracting requirements.

It is unreasonable, however, to argue that a law must be read so that the university and its employees can never violate it. It appears some folks want whatever they do to be the law, rather than that they are also subject to the law, not merely its beneficiaries.

Okay, so this is longer than I’d like. It isn’t a simple situation. The neat thing is, if it’s longer than you’d like, you can always pull out. I offer here some alternatives to the approaches of reading Bayh-Dole as a great Act to unilaterally terminate previously valid personal commitments of invention rights.

The Solicitor General takes a bit different approach than that of AUTM/WARF in its brief on Stanford v. Roche. This in itself is something of a relief. The SG instead follows the scoping of the competing claims. This is much better than the AUTM/WARF approach, but also has its problems.

According to the SG argument, Bayh-Dole does not automatically vest all title in the university-contractor (though the SG points at that) but rather rescopes retroactively what an individual could have committed personally. The SG argues, the co-inventor did not have standing to commit future personal invention rights where those rights might someday become encumbered by Bayh-Dole. That is, the company in seeking future personal invention rights arising from the permitted access to company research could only bargain for those rights the future co-inventor had to commit, and these could not include any rights that might in the future–even the near future–come under a federal funding agreement, even if no such agreement exists at the time of the commitment. Whenever there’s a federal funding agreement, then Bayh-Dole goes back in time and resets the scope of all contracts that would conflict with a university assertion of rights under Bayh-Dole.

Working with scope makes sense. The company cannot require the future inventor to break the law, so the future inventor’s personal rights available to be obligated reasonably ought to stop at the point federal funding is involved. But such an argument makes the most sense if the inventor-to-be is already committed to the federal funding or that such funding is clearly anticipated by both parties. If the parties don’t anticipate the federal funding, and the future inventor obtains consideration for the present commitment of personal rights, then it’s a pretty big chop to say, surprise, the scope of those rights has just changed by operation of federal law. There has got to be a better way than to rewrite the present by jiggling the past, which is good for movies like Inception, or Galaxy Quest, but isn’t so great for the operation of law.

One could argue that a present assignment of future inventions acts as a perpetual non-compete clause and that may also may be against public policy, as it may deny an individual the future possibility of practicing one’s trade or of future employment in a potentially broad area of activity. One might say that a present assignment may be unacceptably vague or overly broad in requiring assignment of anything arising from access to research information and expertise. To start with, only those inventions that are related to the company’s present and foreseeable future business should be in that scope, and only those inventions that arise directly from access to company research and personnel, such as would have to recite company confidential information or rely on other proprietary work of the company in order to draft a patent application. If the present assignment scope is collapsed as a result of a perpetual non-compete requirement, one might greatly limit the personal rights in inventions that the co-inventor has committed without ever getting to Bayh-Dole. One would then argue that the appeals court erred, not in its interpretation of Bayh-Dole, but in having to rely at all on Bayh-Dole. The primary issue is the scope of perpetual commitments of future inventions.

In the case at hand (Stanford v. Roche), however, it appears that the co-inventor-to-be went back to the university, accepted federal funding, and went to work using what he had learned in just the same area that the company was working in. I don’t know the details. Maybe it was different than this. Maybe the company moved in the same direction as a result of the future co-inventor being around and talking about possible research directions. In any event, it appears that what was invented at the university can be argued directly arose from the prior months of research interaction covered by the present assignment. So maybe whatever the general arguments about the scoping perpetual future assignments, they don’t pertain until the facts are straight.

There is a problem with rescoping that is similar to the automagicality argument. It’s one thing to say Bayh-Dole rescopes. It is another thing to say it does so even when an individual, having made a commitment of future invention rights, then turns around and with his university seeks federal funding so as to force a limitation on what had been contractually agreed. One might argue, the university and perhaps the inventor intentionally use Bayh-Dole to defeat prior binding commitments. If this is the case, then one is asking whether it is federal policy to allow contractors to void or rescope prior valid contracts in order to secure federal funding.

Here we dive into the FARs for a bit, to illustrate. FAR Subpart 9.5 provides guidance. 9.502(a) says it applies to non-profit contractors. 9.505(b) says that an underlying principle in organizational conflict of interest is preventing unfair competitive advantage. 9.505-4(a) and (b) address a contractor who obtains proprietary information from others to perform a government contract. “A contractor…must agree with the other companies to protect their information for as long as it remains proprietary and refrain from using the information for any purpose other than that for which it was furnished.”

This stuff is implemented with rather more general language in Circular A-110 at __.42 and __.43. One might argue that the university in seeking the federal funding has an organizational conflict of interest with regard to the commitment it has made through one of its employees to the company, as reflected in the present assignment. Essentially, the present assignment exists as the consideration for access to company proprietary information, without which, the university would be at a disadvantage in competing for a federal award. The use of that information without accepting the commitment–and indeed using the federal award to void or rescope unilaterally the commitment–represents an unfair competitive advantage and restraint of trade.

Let’s look now at the effects of unilateral federal rescoping of private agreements to protect a university’s administration’s interest in exclusive rights to invention title. If Bayh-Dole forces a rescoping of prior commitments, it has all but canceled many a consulting contract’s invention commitments—and employment agreements—and expectation of personal rights (in the case of volunteers and non-employee students). This should be be taken into account.

In copyright law, employment differs from its general meaning and pertains to those specific things an employer controls that give rise to a work being made for hire within the scope of employment. If the employer fails to substantially control the conditions under which a work is made (and there is a multi-point test for agency), the fact that for taxes and benefits purposes an individual is an employee is not the deciding thing. One might wonder if this kind of thing also goes on in the case of patent title under Bayh-Dole, that employee in 38 CFR 401.14(a)(f) means in addition to the taxes and benefits, an employee is someone assigned to work within the planned and committed activities of the grant. The guidance in 37 CFR 401.1 is clear: if a federal funding agreement aims to discover new knowledge, and a closely related but industry funded effort aims to apply that knowledge, then the latter work does not result in a finding of subject inventions. The scope of the federally funded research therefore is as important as the scope of individual’s commitments under Bayh-Dole. In this, can a university overclaim inventions? That is, can a university without regard for scope of work claim an invention as if it were a subject invention under Bayh-Dole? Is “just in case” sufficient? One would think not, and that one cannot make an invention a subject invention simply by pretending it is, or being confused that it is, or being negligent about it, or assuming it is for convenience.

This leads to asking whether employees of a university who are not working on a given federal funding agreement, but who discuss the work with those that are, and there is an invention, are subject to Bayh-Dole. We might observe that volunteers who are not employees are not, though the university may permit them (or even recruit them) to participate. The same can be said for students who are not paid. What about students paid as teaching assistants, who happen into a discussion of research? Is their status as employees for teaching purposes enough to make them employees for research purposes, even though their scope of work and duties has nothing to do with research and in fact the university is not at liberty to assign them to do research work as employees? And if not students, then what about faculty? They also are not assignable to research. They choose research and the university permits their research when it involves extramural funding or when it involves a conflict of interest or commitment. But talking among themselves about scientific issues is not something the university as an employer regulates. That’s part of academic freedom. The university may impose requirements when someone accepts the conditions of a particular extramural award, and therefore works as an employee within the planned and committed activities of that award. That’s not the same thing as conferring with colleagues.

Imagine if you will faculty member A who consults for a company in a given area, let’s say, the function of bluebird hearts under migratory stress, which let us offers a model for human relocation stress. A faculty colleague B at the university obtains a federal grant to study heart function under stress of travel for the Army. Bayh-Dole applies. The two meet at a university football game and have a chat and invent something of mutual importance. The SG argument is that A’s consulting obligation to assign is rescoped the moment A talks to B and they invent. That is, the company loses the benefit of that work A is doing for the company, even though A has not accepted any conditions of the federal award B has, and may not even be aware that B is working with federal funding. Is A an employee with regard to the usage in Bayh-Dole? Is A obligated to protect the government’s interest in any invention rights simply as a result of B obtaining a federal award?

In a company, this analysis is somewhat different, because a company does generally direct the work of its employees. In a university, this is not usually the case, except for staff scientists, post-docs employed in research jobs, and students under research assistantships. Does Bayh-Dole require each university lab to run as a closed shop for fear of volunteers, students, or faculty at other institutions contributing inventive subject matter that would then be lost to the host institution as exclusive rights to title? It does not appear that way in the Act. Thus, it is something of a surprise to find the argument that the law has to take all such rights as a matter of federal pre-emption of private commitments. Whether that is by automagical title or by rescoping retroactively past commitments, one has to view Bayh-Dole in this light as a rather grim reaper, antagonistic to personal rights in inventions, consuming everything so that these rights may vest exclusively in universities at their sole discretion.

It is one thing to say, if you contract with the government, then you accept government conditions. That is a matter of personal invention rights, freely obligated.

It is another to say, when I contract with the government, I can force your contributions into that contract simply by engaging you in conversation, even if you have no such contract with the government, and even if you have other contracts obligating your work. Those contracts are simply voided or rescoped so that rights go to the university. Who would ever consider working with university faculty again?

The company requirements for consulting faculty then would be: “you will not accept federal funds during the term of your commitments to the company, and you will not communicate with anyone accepting federal funds, and you will not advise students who may conduct research or communicate with anyone accepting federal funds.” That’s because in the SG reading, Bayh-Dole is not a law of contracts, but a law of rescoping private contracts to clear the way for universities to claim ownership of whatever they want.

One has a personal right in future inventions to commit. But the mere existence of Bayh-Dole says (in the SG’s reading): that personal right, whatever you intend in the act of committing the right, is subject to revision anytime you choose to participate in federally funded research. Further, it is subject to revision anytime anyone else participating in federally funded research happens to engage you in a discussion substantive enough for an invention to be conceived, whether you know about their funding or not. Bayh-Dole, the great harvester. The SG position might be called the Don’t Fear the Reaper argument. We might say, then, in response: don’t Don’t Fear the Reaper.

The present legal debate is headed in the wrong direction. I’ve made this clear with regard to AUTM/WARF, which argues an automagicality of vesting title against 30 years of assignment practice, against good public policy relating to university faculty and research, and against much better ways of reading the law including the usage of “retained”, the purpose of written agreements, and the placement of the Bayh-Dole provisions in contract and award conditions. The AUTM/WARF position is inventor-loathing, process-loving, and monoculture-advocating. The SG argument goes toward the right direction, but still under the sway that the problem is the court’s handling of Bayh-Dole. Scoping is a good topic, but first look at the scoping of the various statements of work to determine whether the claimed inventions are indeed subject inventions with regard to the research. Just because a university reports an invention as a subject invention doesn’t mean it is one. If the invention isn’t a subject invention, then Bayh-Dole cannot have rescoped any prior personal invention rights.

Following that, the issue that stands out is whether a present assignment of future inventions, if it lacks any specificity with regard to subject matter and time, can stand as a perpetual claim, essentially a perpetual non-compete clause or a non-disclosure/non-use obligation that functions as a non-compete. One might say, absent a clear intent with regard to the subject matter on which to be bound, such an assignment is against public policy. A number of states have laws to this effect, directed at invention obligations in employment agreements—that such obligations are void if they exceed the scope permitted by the law, and some go so far as to say the obligations are void if the employer fails to recite the law to the employee at the time that the obligation is imposed. One might expect a similar argument when the individual is not an employee but is being treated as one for the purposes of inventions.

One might also expect that a present assignment contract (or even a promise to assign) to be interpreted against the drafting party. Absent any documentary evidence of the scope of intention, it would be up to the prospective inventor to identify what he or she has committed to, and not for the company to see any invention and argue that whatever it is, it is within the intended scope of claims. A commitment to assign still has scope, and that scope is subject to interpretation, and where there are differences of interpretation, the party at a disadvantage and not doing the drafting may be given the broader room to make a case. If an individual later undertakes research funded by sponsor, carrying obligations to that sponsor, then one might argue that the individual did not breach obligations to either the company or the sponsor, but rather evidences that the scope of the obligation to the company was not so broad as the scope claimed by the company. This argument does not depend at all on Bayh-Dole doing any pre-empting of anything. Instead, it argues that until evidence for the specific intent arises in a promise to assign (or present assignment) of invention rights, it is not possible to pre-state what the scope of such a commitment entails.

There is still the question whether sufficient evidence exists to establish the intent of the parties with regard to the scope of commitment of inventions under dispute. That would be a good question to worry, rather than trying to transform Bayh-Dole into the Reaper.

“Finding 6. …. In fact, successful
commercialization often depends on active inventor engagement, and,
in some cases, their playing a lead role.”

In fact? Or, “by way of a lazy assertion”? The AUTM-spawned confusion over the nature of agency and inventor role persists in the report. Bayh-Dole is a law of patent agency. First, the university is allowed to act as an agent on behalf of the public, if it chooses to take on this role. Circular A-110 makes clear federal policy–the university acts in trust with regard to intangible assets on behalf of the beneficiaries of the grant.

Second, Bayh-Dole permits the university to designate agents. The university may subcontract and pass the Bayh-Dole obligations to others when they invent. The university may assign its Bayh-Dole interest in inventions to any company that has a primary function in managing inventions–sure, an affiliated research foundation as a dutiful liability screen–but also any company–like an industry partner, say.

Third, Bayh-Dole doesn’t say that bureaucrats should make all the decisions about a subject invention. The university personnel designated for patent matters could be deans, or department chairs, or principal investigators–it is their grant proposals, after all, and their hiring, and their future work. For all that, the university personnel could be company folks in a consortium representing industry interests in university patent positions. And of course, the inventors could be designated to make decisions on behalf of the university (rather than be isolated with the presumption they only look out for themselves, or that in looking out for themselves they aren’t somehow performing an important service. After all, if the university can equate licensing income with public service, what is different about a research inventor doing that?)

I know, there’s no persuasive evidence for any of this. It’s like Bayh-Dole didn’t have to be written with all that flexibility. Why give us a flexible law when university administrators *don’t want it* and now they’ve got a NRC report that agrees with them.

Fourth, Bayh-Dole does *not* require “successful commercialization.” That is fabrication. Bayh-Dole is about practical application, collaboration, manufacturing jobs, small business support. That’s what the law says it is about. Oh, I know it is secretly about whatever the AUTMites want it to be about, like making money with monopolists. But commercialization gets a mention while practical application gets a full definition and is repeated throughout the law.

In some twisted way, I suppose practical application can secretly mean exclusively license to induce a company to make a product that makes a pile of money and some of it comes back to the university and the work of technology transfer personnel is to get more money out of the company than it would have paid without the work of these people.

But that’s just twisted. I don’t see why Bayh-Dole has to state one thing but be secretly about something else. That is quite a finding, but why not trot that out–Bayh-Dole has been co-opted by a commercialization fixation and a really narrow, ineffectual one at that, and this single-minded practice undermines other roles a university might play with its patent rights, such as participating in standards, creating open systems, cross-licensing to obtain access to technology on behalf a research or practice community.

There is no way that an inventor can play the lead role, unless the inventor has control, at times, over his or her inventions. How often is “at times”? How does anyone know when these times are? What would be a good mix? Do you think the report will have answers to such questions, and draw those answers to how policies could change to introduce a broader range of agents, greater roles for inventors and others, and a broader range of outcomes, not just money-making through “commercialization”?

The report writers cannot imagine any other well implemented approach. They only present arguments for a lousy implementation, and then they argue that those are indeed lousy arguments. But stating lousy arguments for implementation, and then dismissing those arguments, does not get one done with the issue. Is this a deliberate thing, to preserve the status quo? Or are these writers incapable of imagining any other approach with sufficient substance to make a real case? Say, the Canadian approach, taken by a number of schools, that allows inventors to take the lead.

And in all of this, no one seems to give a rat’s ass about principal investigators. It’s bureaucrats or inventors, and who can make more money. What a dull dichotomy. What a dull purpose for high points of university research.

Finding 5: A persuasive case has not been made for converting to an inventor ownership or “free agency” system in which inventors are able to dispose their inventions without university administration approval.

Well, here the report gets down to beating up the straw man. Scarecrow cries out. First, the report reveals itself as the arbiter of cases. The universities have made a case, and others haven’t. Well, how are those cases made? Did the committee take testimony? Did it commission studies of various alternatives? Or did it just do a clustergutcheck?

Who has made a case for inventor ownership? Note, Bayh-Dole permits it. So how can Bayh-Dole be unquestionably better, good enough not to serious undermine faculty promotion, and still not make a case for inventor ownership? Oh, we don’t want *that* part of Bayh-Dole to ever operate. That’s the point of the report.

Put these proposals on the board: universities have implemented narrowly under Bayh-Dole. They try to run general purpose patent licensing shops and after 30 years, it is painfully obvious they are not much different than the government was. They have few specialties. Biotech maybe. Oh, that’s *all* Bayh-Dole is really about, is it? Proposal: expand the range of agents available to do specialty work. Note: not *replace*.

It’s naive beyond naive to argue that one narrow system is wonderful, and it would be bad to replace it with another approach. Or, perhaps these folks aren’t naive. They are being political. And the politics is to suck up to the status quo. Well, neat.

And why is it that faculty shouldn’t have some say in how their research deploys? Why should a university administration approve such things? Where is that in a big imaginative approach to research innovation? Oh, yes, why, all good things should pass through a bunch of bureaucrats! Yes, yes, yes. The public cries out for bureaucrats to touch every research thing.

No, the problem is the commons. The thing people have raised is enclosure where a university administration is willing to take money for anything. Or that faculty inventors would do this. Bayh-Dole says, protect the public from non-use and unreasonable use, and don’t let patents get in the way of more discovery. That’s the role for bureaucrats–something they are good at–keep separation between commercial interests and public service, even where creating commercial interest is a public service–it isn’t necessarily a good thing for a university to do directly. Keep integrity and compassion in treating patients, not using them as test subjects for a commercial deal. Challenge the status quo, foster the loyal opposition, give the public straight poop not more marketing hype. No one is saying, though, let the bureaucrats take over, that’s the unquestionably better route to innovation. Er, no, the report is making that case.

A report like this has to be a speaker for those without voice. It is not merely an arbiter of academic this and that. It has to consider prospects whether they are trendy or not, anticipate needs and desires and opportunities, and show how the status quo is a choice among others, just as different countries are pursuing different variations on the theme.

But then, perhaps a report like this is intent on being a voice for the status quo, a restatement that everything is just fine. The economy is in the dumps, the US is losing its leadership positions in technology (remember the Gathering Storm report?), open innovation and grand challenges are sweeping the land, and the only constant in all this is a crummy process-laden patent accumulation program run by bureaucrats that hasn’t changed in 30 years. Fascinating.

“Finding 4: The Bayh-Dole legal framework and the practices of universities
have not seriously undermined academic norms of uninhibited
inquiry, open communication, or faculty advancement based on scholarly
merit. There is little evidence that IP considerations interfere with
other important avenues of transferring research results to development
and commercial use.”

Have not “seriously” undermined. What does this mean? Some undermining is okay? Undermining a little is *way better* than the worser past when this undermining wasn’t? What norms are important here? Ah, inquiry, communication, and promotion. What a strange set to care about, and to care about them as less undermining.

What other norms might we care about? How about collaboration with industry? Oh, haven’t heard about that? What about inquiry freely migrating toward trendy market things rather than challenging consensus claims? What about promotion aligned with following something out to make an impact? But no, the promotion takes place despite technology transfer–what a relief to hear that!

And yet, this finding is a total failure to engage with what technology transfer aspires to, and how it is practiced. There is little evidence has nothing to do with whether anyone has bothered to collect the evidence, or whether the committee considered things such as the increase in litigation by universities against their inventors, whether claims in inventions by universities delay or undermine efforts to commercialize or dedicate to the public domain. Worse, there is no thought given, apparently, to the role a university might play in a community besides being the devourer of patents, investment, and government funding.

How about the norm of whether all the patents claimed have been licensed? How about the norm that graduate students should have the right to practice what they have uniquely learned in their degree research but cannot because the rights are licensed exclusively somewhere, or worse, aren’t licensed at all? How about that norm? No, it doesn’t wash. It’s just hand-waving. Bye, bye! Had lots of fun! Come again!

“Finding 3: The system put in place by the Bayh-Dole Act, that is,
university ownership of inventions from publicly funded research and
latitude in exercising associated IP rights subject to certain conditions
and limitations, is unquestionably more effective than its predecessor
system—government ownership subject to waiver in circumstances that
varied from agency to agency—in making research advances available
to the public.”

This is a finding? More effective in making research available to the public than something 30 years ago that government was doing rather than something 30 years ago that faculty inventors were doing? Oh, it doesn’t matter, it’s just better. Unquestionably. No one has any questions about it. Certainly not on the committee. The assertion is, more of the same is better even though we don’t know what the same is, or why it is better, or better than what.

The *system* put in place by Bayh-Dole normalizes a contracting interface between universities and agencies for dealing with patent rights. The *system* put in place by universities, in response, to deal with their own innovative research talent is Blighted Dullness, a monoculture of accumulating patent rights, making a show of licensing, treating inventors as commodity labor, and claiming success from a few lucrative licenses disingenuously allowed to stand for outcomes of the overall effort.

But oh, it is not worth pointing this out. How many government agencies in that deep unquestionably worser past *trolled* industry with their patent positions? Ah, yes, that’s *really so much better* in making things available.

Technology transfer is about patent licensing in Finding 1, but by Finding 3 it’s about making technology “available”. Like the public domain doesn’t do that. Like maybe the government was *more selective* about what to patent. Like maybe technology transfer is about something more than “availability”. No, something is wrong here.

Is it so terribly difficult to get clear that the issue is not availability, but the nature of that availability? A patent is an exclusionary right. It can be used to create a monopoly position. University commercialization folks are fixated on this. “Anything else is just a tax.” Right. Sure. An unlicensed patent is also a monopoly position. Universities have *tons* of unlicensed patents. How are those monopoly positions making technology “available” to the public. No, it is not the case. They are not. They are withholding technology from the public. But the report doesn’t care.

The first challenge in university technology transfer is to *license everything one claims*. The second challenge is in the license to do something that advances *technology yet to be created*. In commercialization, this is a *product*. In ventures, it is a new company. In commons, it is an opportunity or a platform or standard. But it’s all the same. It doesn’t matter in the report. t’s just better than it was, and that’s so very true if you don’t know anything about the past except a couple of assertions in the academic literature, and you don’t care which past you are comparing things with, and you don’t care whether the present is matched to what is possible.

Live for the present. Believe it’s the best thing that is possible. Or, perhaps, the sad thing is, given the people holding the status quo in place, *there is no hope to do anything better*. Unquestionably.

Finding 2: The transition of knowledge into practice takes place through
a variety of mechanisms…

Here we have a conflation of knowledge and technology transfer. Technology transfer is not about knowledge transfer. Or, the report might point out that university technology transfer should be about a particular kind of knowledge transfer, and isn’t.

The finding lists a standard set of activities in a university. But there’s nothing that indicates that any of it has to do with, say, using the patent system to promote practical application, or, er, making money by selling off public assets to monopolists.

And the list isn’t even focused. What does it matter that students graduate? Or that faculty consult on matters not having to do with “university-owned IP” (meaning, title patents in inventions claimed by bureaucrats). Why would these things even be within the scope of the report unless it the report is going to challenge university claims to “IP” and especially patent rights?

But, no, everything is nearly all right. They have got it–the report is about licensing of IP (meaning, patent rights for money in trendy markets), even though these other things are important. Was this group simply bored with the exercise?