Waiters Packing Heat

Posted on August 8, 2010 by Gerald Barnett

A basic question I ask university tech transfer officers is this: in a licensing situation for university IP, who is it who first needs a contract?

I get a lot of interesting answers to this. But here’s the thing. It’s the company that needs the contract first. A university can grant a license without a contract at all. It’s the company that wants the contract, the paper that secures the continued promise of the license.

I’ll go further. In university licensing, the companies that participate *have already chosen to pay*. I call this the waiters packing heat problem.

Imagine you are going to a restaurant. You have already decided to pay when you walk in the door. It may be an expensive place, but you are there for the food, the hospitality, the ambiance, the conversation, the social point.

Now imagine a restaurant in which the waiters pack heat. Guns in their belts. They believe that it is by flashing their guns that patrons choose to pay. How do you think this would go over? Not so well. It would utterly destroy the social mores of a restaurant, even if the waiters were right that every so often, someone tried to avoid paying for something. For one thing, it would send the message that folks were expected to try not to play. Well, that would be a wrong signal, wouldn’t it? To run a restaurant, you take that risk in stride and aim for maintaining the reputation of the place–a place people choose.

Now bring it back to university IP. It’s the company that needs a contract. Without a contract, no binding promise on the license thing. Well, a contract is offer, acceptance, and consideration. If the company wants the paper, it has already decided to pay. What matters is what form the consideration will take, and what the university is doing to deserve it, and how in the transaction the company comes away feeling satisfied at the transaction. In this, the value of the transaction is in the relationship, not in the particular value of any particular dish served out on the table.

When universities get all worked up over their IP marketing, with efforts to value the IP through market studies, they are going the wrong direction. When they send out licensing contracts running to 30 or 40 pages, to capture value, they are in essence waiters packing heat. The chefs are the research investigators and inventors. The owners of the place are the public interests sponsors of research. The waiters ought to assume those that choose to work with the institution want to contribute, and that they will pay for a great experience because they have chosen to do so.

This is not an argument that folks will donate money because the university gives away its results. Boy, how that attitude grinds in government circles. The feds hand out what, $50b a year to universities for research, and folks run around all fluffy saying that they are helping the whole world, subsidizing foreign companies and governments, through the largess of the American taxpayer.

No, I’m making an argument about the difference between a license, which is an offer not to enforce a right to exclude practice, and a contract that makes that offer binding, and a written contract that makes that offer binding beyond one year. To acquire that binding, lasting contract, a company pays–chooses to pay–for the *relationship* that the contract memorializes.

Physics is full of counterfactuals. Point charges. Perfect spheres. Closed thermodynamic systems.

Imagine a university licensing operation that for a given patent portfolio offered a general license at no charge, with no formalities. We can make it practical by dividing things up. Say, it’s a no-formalities no-charge license for making and using in the state of California. If you want a piece of paper over it, then give a call. Turn a license into a contract, you’re willing to pay. That starts a purposeful discussion. Gotta be good and valuable consideration to make it a contract.

If one worked this way, then there would be no bottleneck to local practice in the tech transfer office. Want to practice this stuff? Move your operations to California. Want it otherwise? Oh, that’s different. You want to be convenienced, and want us to work out the paper for it, and why do we need to do that? Oh, because you want to work with us. Let’s see if we can serve up something that reflects the kind of experience we put together for the folks we want as repeat customers in our IP restaurant. What would a deal like that look like?

Would universities make just as much money in their licensing programs if they let companies choose them rather than pushing their rights out into the world, like waiters packing heat?

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Pathway Dependence

Posted on August 8, 2010 by Gerald Barnett

Let’s look at a licensing situation set up two different ways. The purpose is to illustrate pathway dependence of an offer.

Let’s say we have an invention with an associated patent right and a university laboratory willing to engage industry on the matter. Let’s say, further, that in this university, folks are fine with non-exclusive licensing. Okay, it’s a counterfactual, but work with me here.

We have two primary intangible assets to play with: a patent right and the interaction between the lab and industry. Let’s call this interaction a “workshop”. It could be a “collaboration” or a “consortium” or a “newsletter subscription” or an “affiliates program”.

In a conventional IP-first approach, one could offer companies a non-exclusive license for some ridiculously modest amount, like $2K, with the added bonus that the lab will throw in a free workshop to explain how the invention works.

In an integrated IP/NIPIA approach, however, one might do things in reverse: come to our workshop for $2K and we’ll throw in a no-charge license to our patent.

It’s the same fundamental deal: a license and a workshop. But it’s really very different in how it lands in a company. In the first instance, the offer of a license is an implied threat and goes to the legal department. Do we need this license? Can we design around it? If we pay up are we heading down an evil road?

In the second instance, the offer for a workshop lands in professional communications and development. Do we want to know this stuff or stay ignorant? That there’s a patent license thrown in is easy. No commitments on that front.

Let’s say 50 people will come to a workshop at $2K. That’s like $100K. Is it easier to get 50 people to attend a workshop for a modest fee and throw in a patent license or two, or get 50 companies to take a license just in case they might need it? How easy will it be to get commercial partners paying $100K a year in patent royalties? Might it be easier to hold a workshop capped at 50 people, invitation only, each year? 10 years at $100K and there’s a $1m cumulative technology. We know from Stanford’s numbers that this is a 1 in 100 proposition. Think there are 50 people in the world each year who care enough about one of your inventions to attend a workshop that lays it all out? And if there aren’t, why again are you filing an application?

One might think, using an invited workshop in the lead intangible asset position might be a great way to query the market potential of a research invention.

No university does this. I don’t know why. But it does serve to illustrate how the structure of a proposed relationship can change up the decision structure for possible adoption.

Posted in IP, Projects, Technology Transfer | Comments Off on Pathway Dependence

You Know You Are In Deep When…

Posted on August 8, 2010 by Gerald Barnett

Attorneys won’t help you figure things out without 1) a dispute and 2) getting paid.

There’s a point at which the law becomes whatever someone wanting to get their way is willing to argue for. Until then, it is really nothing. A marker for a future dispute to bring clarity, meaning, a pending decision for which attorneys may then be employed to hump up their best arguments. Later, the tailings of the work provide law profs with raw materials to evaluate what went wrong.

The challenge for IP practice is that while there are plenty of things legal about it, at its heart it is not directed by the law. Oh, it an be, just as IP can be directed by business or by auditors or by activists. But if one wants to get clear on the law piece, that’s tough without a dispute and the money to pay attorneys to figure out the best spin. And even then, there’s no promise the dispute will clarify anything.

One would think that innovation ought to have other drivers for a community. That introducing change is something imaginative, creative, even delightful, and yet it would appear that it’s really still primarily about money, guns, and lawyers.

I guess that’s a risk in asking universities to get involved. Choice: do we work from local vision and compelling opportunities to help communities, or do we emulate corporate accumulate-contract-litigate approaches?

Posted in IP | Comments Off on You Know You Are In Deep When…

Whose Research is It?

Posted on August 8, 2010 by Gerald Barnett

Really, it is *their* research, but not in the normal ownership way of thinking. I’m talking about university principal investigators. In the university way of doing things, faculty are not required to conduct research as a part of their employment agreement. Research is of course a big part of the game of keeping employment–such as getting tenure–and moving up the academic ladder. But research is extramural. The faculty investigators decide what research to do, what grant funding to go after, what proposals to write, who to involve. It is their research.

It is most definitely not the university’s research. When universities report their sponsored research income, they are not reporting something any of their administrators did, from assistant vice chancellors of research on up to the system-wide president–nada, ain’t the corporation’s research.

It is the principal investigators and their teams that conduct the investigations, gather and analyze data, assemble research equipment, swear and laugh, decide what is worth publishing, writing manuscripts, choosing the forums for publication, editing the proofs. It is theirs to document and get credit for.

So how do university administrators come to associate research IP with corporate rather than personal–or at least project–ownership? On copyright, they still haven’t figured quite how to reach in. They can argue for commissioned work, like a department web site. They reach further by messing up work for hire by research staff (thinking, those folks must be working within the scope of their employment, and so the copyright is with the university–but oops, their work is directed by faculty investigators who are not working for hire when on extramural funding–will get at this when I can if folks don’t see it). That leaves data and patents.

Data ownership theories are trade secret, statutory regulation, and tangible properties. Trade secret is a tough one to hold. It may be the investigators choose not to publish, but that doesn’t make it a *university* trade secret. There’s no promise not to disclose between the university and the investigators–and if there is, it goes the other way–the administrators are the ones with keep it mum order.

Regulatory restrictions come by way of HIPAA, FERPA, export control, exceptions to public disclosure laws, and restrictions on use of certain information (such as mailing lists compiled by state agencies). This sort of thing isn’t really a matter of ownership but can get in the way of things normally associated with ownership, like being at liberty to disclose things. But those regulations are not university regulations–they are federal and state. So there’s nothing here that makes the research the *university’s*.

That leaves data. Universities typically now have policies that require university access to data records, generally to resolve allegations of research misconduct. Most of the time, these kinds of allegations are totally botched by administrators–really, have you heard of a clean inquiry into research misconduct that didn’t descend into a witch hunt or a huge circling of the wagons? Send along instances.

Administrators have their own rationalizations. One told me that the university owned all research data, just they didn’t bother to tell faculty that unless they had to. No contractual obligation not to disclose and restrictions on use, no ownership theory on the information value of data.

That leaves tangible stuff. A researcher goes to Pepperland and brings back a locker of butterflies on stick pins. Another picks rocks off some black smoker vent on the ocean floor. A third collects strawberry cultivars from all over the world. Who owns these, as tangible property, as chattels? What’s the common law? What is the university policy? What kinds of contracts for research or for use of facilities might come into play?

We might argue that from a common law point of view, faculty doing research and collecting things are collecting stuff for their research, for their projects, for themselves. Just as copyright can vest in a group without independent legal standing (the senior class at Meadowdale High can own copyright in a work they prepare), one might argue that tangible data can set up a tenants in common or joint tenancy situation. Perhaps someone wants to take this on.

In federal awards under OMB Circular A-110, tangible personal property acquired under a federal funding agreement may vest with the “recipient”–which would be the organization and not any individual or project or team. Similarly, in many industry and foundation sponsored research, the research contract may stipulate university ownership of data. This kind of clause is often put there by administrators rather than investigators. Sort of interesting, the university can use an agreement with a sponsor to take property that otherwise would be with the investigators or the team or joint among all of these and the university. What’s the authority for the university administrators to do this? Something to chase down.

We are left then with inventions, and we are up to the gazoo dealing with invention rights. So not much to add. Let’s say that the baseline is: university inventors hold title to patent rights until they assign those rights. This rankles true believers in automagicality and title limbo, but hey, let’s track patent law and the MPEP.

Across all of this, research is the investigators’ but for bits of tangible data and committed invention rights.

There’s one more thing, and that’s the general standard in A-110 __.37 regarding stuff:

“Property trust relationship. Real property, equipment, intangible property and debt instruments that are acquired or improved with Federal funds shall be held in trust by the recipient as trustee for the beneficiaries of the project or program under which the property was acquired or improved….”

Intangible property includes “trademarks, copyrights, patents and patent applications … other instruments of property ownership, whether considered tangible or intangible.”

The research is the investigators’ and their teams’. The intangible property when federally funded does not change ownership, but the university is to hold the property *in trust* for the beneficiaries of the research.

That’s as good as I can do at this point to lay out the issue. With all the fuss over title to inventions, I think the broader plain effort of federal funding, at least, is to put the university in the role of steward, not owner. That’s what is asked, and that makes a lot of sense. I don’t see a lot of talk about how universities should be good stewards of research properties or even of research projects as societal assets.

Posted in Projects, Social Science, Technology Transfer | Comments Off on Whose Research is It?

The Third Flavor

Posted on August 8, 2010 by Gerald Barnett

What’s not perhaps so obvious is how much variation and structure there is in the third flavor of technology transfer, from lab to application. We have four venues for this work: independent inventors, industry labs, government labs, and university labs. These are arenas can be very different in how they go about research and where they are in any pathway from discovery to application. An industry lab might be deeply steeped in market realities, and use that as its inspiration to go into the science, as part of a long range plan that might be ten to twenty years out. A university lab, by contrast, might be focused on advancing a discipline-defined issue, such as testing a theory involving the origin of stars.

One simplistic assumption in most university descriptions of this third flavor in university technology transfer is that it all starts with an invention in research, and from there moves to an assessment of commercial potential in the context of existing markets (the little linear model). Indeed, one can treat all research inventions this way. It is possible. It just isn’t necessary, or particularly effective, to do so.

Even the idea of “commercial potential” is narrowly drawn. One sense is “the potential to create a profitable product”. Product is interesting to patent licensors, because product means sales, and sales means a royalty base, and royalty base means parasitic heaven. The tick finds a vein. But commercialization also can mean use by companies internally to improve commercial efficiencies or to gain a functional advantage, without any need or interest in selling product to others. It’s tougher to establish a royalty base on cost savings. Yet further, a really important commercial use is as a platform or standard. The potential of a standard to transform commercial opportunities, but not itself a product. Here, inventions are contributed to define a common set of resources on which future competition will take place.

Consider the role of universities as a critical source of platform resources. One can make a good argument that treating university research originated inventions primarily as potential products as a significant barrier to the development of new technology platforms. In this view, university patenting behaviors are responsible for the failure of nanotechnology to establish workable platforms.

There are three other areas in which universities may contribute to the broader community available technologies. The first is to use patent positions to attract investment to start ups. This kind of work pulls investment but it appears that a lot of the time, the resulting investment develops a different technology. We saw that with the Sonicare toothbrush. The core technology was developed at the University of Washington, and involved the use of ultrasound. The product that emerged developed without the ultrasound bit (note, it’s not the Ultrasonic toothbrush). So a neat product comes on the market, but it’s not the one the university research invented the technology for. One might say the university technology was used to create conditions favorable to the creation of another technology. I suppose that is a practical application of an invention, but it is not practically applying it!

While using patent rights to attract investment is perfectly natural, there is a side-effect folks don’t tend to report. That is, when an invention is licensed exclusively to a startup, and the fact of the license is used to raise money to recruit management and engineers that then build some other product, then the original invention, although patented and licensed, *sits on the sidelines*! It doesn’t get developed, and worse, it is not available to be developed. It gets used as an inventive shield, as a puff intangible asset, and it keeps others off anything that might be competitive with the technology that is being developed. So much for the number of licenses as a proxy of practical application. My experience is that half of the companies I’ve seen start around a university invention made their way on something else.

In thinking about Bayh-Dole–I’m sorry, can’t help it–it’s sort of odd that the mandate there is to use the patent system to promote use of the research inventions, but start up mechanics being what they are, one ends up using the patent system to attract investment that promotes the use of things other than the research inventions. It is a natural thing, but it drives patent licensors nuts, not because they care about Bayh-Dole, but because they really want the royalties that come with developing a commercial product within the scope of their license.

They really want to use Bayh-Dole to claim that they have to make royalties! That somehow Bayh-Dole requires some sort of “fair consideration” or “return on taxpayer investment”. Of course, not true at all. Despite this, patent licensing folk may work really hard to force diligence provisions. That horses up the apparent risk of working with universities (meddling, forcing business decisions, raising prospect of disputes). This in turn encourages design-around. Patent licensors know all this, of course, so they horse it up even more. No wonder negotiations are a pit.

The second use for research inventions is as artifacts. Artifacts are also useful in furthering research. They illustrate work product, they serve as sketches for what is possible. They live ephemeral lives. They teach what not to do. They frame problems. They point to what might be cool. They are the demo for more research.

There needs to be a ready source of artifacts moving into broader circulation. Artifacts are the silt of the river of research knowledge. Without the silt, all the nice platform beaches go away, and with them the firepits of product and safe harbors of standards. Perhaps it’s clear that filing patents on artifacts just because they are inventions, or because someone in a company might want to mess with it for a few months, doesn’t make a whole lot of sense. But if everything has to look like a possible product, then, well, guess you gotta do what you gotta do.

The third aspect to research originated inventions, and that is as a research and development tool. We’ll get to that next.

Posted in IP, Technology Transfer | Comments Off on The Third Flavor

Cooperative Competition

Posted on August 8, 2010 by Gerald Barnett

The Tour de France finished up at the end of July. The strategies of bicycle racing help to illustrate the practical nature of competition. In bicycle racing, there’s a mechanical advantage in being behind another racer. Trailing racers move into the slipstream of the lead, where there is lower pressure. Even better if there’s a whole pack of riders. See this simple discussion.

In a distance bicycle race, therefore, it takes a lot of work to breakaway from the main group (called the “pelaton“). One is doing all the work. More typically, a small group of riders will break away. Then, to keep their lead, they have to work together, sharing the lead position for the rest. The leader doesn’t want to stay out in front all the time–he will wear out and have to fall back to the pelaton. You can see that to maintain a separation advantage, there has to be local cooperation to overcome the huge advantage, over long distances, of riding in a big pack.

Similarly for groups that separate later to chase the lead group. These chase groups also must cooperate to catch up with the leaders and stay ahead of the pelaton. There is a politics of cooperation and competition throughout.

As the leaders close in on the finish, they know that they are positioning for all-out competition with one another. They know this when they break away together, when they cooperate to share the lead to distribute the work load to maintain their position. They know at some point they will challenge each other. But they have scores of kilometers of cooperation to create a battle among themselves for the last two or three.

This is a valuable pattern to consider in technology competition as well. While there is no slipstream, we can consider analogs. We can recognize that there are times we it saves resources to be working with other organizations to get something done over trying to do everything oneself. In cooperation, we might find that we can write *smaller budgets* for local research.

One might find that the really interesting metric for university research is not how much money total a university has managed to grab away from others, but rather how well it is able to write lower expenditure budgets to accomplish in partnerships what other universities have to build all on their own. One might call it an ego-bloat. But how does one get at this without slipping into a boring argument about generic waste and inefficiency, which ends up in more compliance overhead like forcing for-show bidding environments for procurement and more paperwork to authorize travel. Sigh.

In the effort to create transformation from research technology, there is a tremendously important role played by commons. That is, by shared technology development without immediate cost accounting and proprietary positions. What is most important is keeping all energy directed at establishing and developing the new position. Anything that steals energy is uncooperative and ruins the work for everyone.

With regards to the PARC Dilemma, there’s an ancillary issue and that is the challenge faced by an industry research team in getting anything it is developing into product. The marketing department is not necessarily willing to take a chance on just anything that comes out of research. The higher value the existing product lines, the more difficult the transition from lab to marketing. Even new work that would create viable new product lines won’t make the cut if the resources to do this are pulled from efforts to maintain existing flagship products’ market share. Why spend $50m to develop a new product with a little, but profitable, market when that same $50m spent in advertising might contribute another $1b to the bottom line?

It’s hard to get anything new from industry lab to industry product within the host company. That’s my sense of it. And it’s even more difficult if a university attaches patent conditions to some inventive artifact introduced in the the industry lab. If you can’t get it out easily anyway, it’s going to be a lot harder if there are more bothersome strings attached. It’s not that the research labs don’t want to pay–perhaps they don’t–but it doesn’t matter. The real problem is that if they have to track the university requirements as well, it’s a losing proposition.

It is hard enough to hit the fastball. It’s harder still with a fly on your forehead. That’s what most university patent licensing in the research pack means for industry labs.

In technology development, transformational changes used to take a generation. The idea of using the patent system to promote use presumes changes in less than 20 years. But even in a decade of work, it may be that 95% of the time, collaboration is critical. This has nothing to do with being fluffy and getting to yes, oh, yes, yes, yes… It has to do with the clear-headed sense of how new technology platforms takes on the status quo. It also illustrates how the status quo slurps a huge amount of resource to keep its position. The status quo makes it all the more difficult to maintain even a skew position. All the benefits are for working in the status quo.

Universities have huge stakes in the status quo. They are involved in workforce development–training for the careers that are available within industry. They cultivate strategic relationships with market leaders–companies who donate to university programs, who hire graduates, who sponsor research, and who carry weight in political lobbying for university funding. As one university development officer told me, “we really don’t do much with small companies”. One can see why.

But transformational research is not really about entrenching or servicing or offering gifts to the status quo. That’s what makes a lot of drug discovery and testing socially important for universities to be doing, but not really particularly interesting from the perspective of transformational innovation. A lot of drug work involves turning an acute condition into a chronic one. That’s the sweet money position. The pharma infrastructure is set up for this. The drug discovery effort is largely business invariant. It preserves the whole product delivery infrastructure, just refreshes the inputs. Sophisticated, elite, moneyed. You gotta play there. It’s the best of the industrial status quo, and also perfectly rigged for a few patents setting up billion dollar monopoly positions.

One can see why university patent administrators would be attracted to this arena. One has to wonder, however, why anyone would try to extend this approach to any other areas unless there was a strong indication that the approach matched the situation.

In the vast majority of university research areas, it would appear that cooperation over many years is indicated, and monopoly positions are something for the very end when competitors sort each other up. The university research role is to be out ahead of the status quo, the peloton, where the work is a lot more difficult. But in that research, the university position has to be cooperative with the labs doing the same thing in industry, in government, at independent research organizations, and among non-institutional practitioners.

It is this kind of development that shifts attention from monopoly products as the index of university patent administration success to the role of patents, and other IP, and other NIPIA, in weaving together lead groups and chase groups dedicated to transformational new platforms. That’s what we should be evaluating. That’s where the university metrics for management should be. That’s what makes university research critical to national social and economic goals. The rest of it is still worthy, but it is just for fun.

Posted in Commons, IP, Metrics, Social Science, Technology Transfer | Comments Off on Cooperative Competition

The Patent License that Keeps on Taking

Posted on August 8, 2010 by Gerald Barnett

I was presenting at a conference of independent research organizations. Many of these are non-profits with mission purposes to cure diseases and support social change through research. The question came up from the patent attorneys in the audience: how do we deal with infringers?

Here’s what stumps me about the question: Isn’t use what one is striving for? Why call it infringement, when it otherwise is success? Why not declare success, confirm that you won’t sue anyone using the technology you’ve created, and offer to help?

Embedded deep in the idea that users of patented non-profit research technology are infringers is that the management of research inventions is about making money or at least making people comply with licensing restrictions. But if imitation is as good as anything for innovation, why would anyone in a non-profit research organization license a patent right in a way that prevented imitation? Only if there was a substantial investment up front to get things to happen at all. And even then, why set things up so the substantial investment has to be made by a single company, who is required to play the monopolist?

Just to push it. In the typical university patent license, the university will place restrictions on sublicensing. It will guard against the licensee granting free sublicenses or cross-licenses. That would spoil the royalty position the university typically negotiates for. In other words, university licensing practice makes it a condition of the license contract that the licensee stays a monopolist rather than the leader of a new platform.

That is, the business strategy in non-profits stands in the way of what industry otherwise frequently does–share results to establish new, complementary capabilities.

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The PARC Dilemma

Posted on August 8, 2010 by Gerald Barnett

At Xerox’s Palo Alto Research Center, a lot of great technology has been created. Postscript, ethernet, graphical user interfaces, the mouse, among others. The problem has been, that these technologies were not able to make it into the host company’s product lines and instead became platforms for others to build on.

The typical way this is described is that Xerox should have taken stronger proprietary positions and extracted value from their research. I see it differently. To my way of thinking, the dilemma for an industry lab is the choice between feeding platforms that feed the industry broadly and holding things to take advantage of their own position. It is also the dilemma for the university lab.

Consider another company in Silicon Valley, Silicon Image, Inc. SII is responsible for, among other things, the DVI standard for connections between computers and monitors. Here is a relatively small company working things out with a bunch of huge players to deliver a new platform technology. What does it do for SII? It gives them a leg up building products that ride on the standard, that anticipate developments in the standard, and therefore can be first in and most capable implementers of the standard. This is no loss for SII, that DVI isn’t held out as a proprietary product for the company. The standard is a strategic asset, even though it is not owned by SII.

If we look at Teece’s development of innovation, the issue is cast as a competition for benefit among the innovator, the imitators, and the infrastructure. The idea of an innovation becoming a standard means one feeds the imitators. The imitators in fact become the innovators. The platform is the innovation.

Geoffrey Moore, in Dealing with Darwin, a book about the challenges of re-innovating in large companies like Cisco, argues there are only three kinds of innovation to consider: innovation that creates separation from the competition, innovation that allows one to catch up, and innovation that reduces costs in doing any of this. The rest of innovation, Moore asserts, is waste. That cuts it down. One can see in Moore’s development much of the schema outlined by Teece.

Separation = innovator
Catch up = imitator
Cut costs = infrastructure

But the PARC Dilemma suggests that there’s more to it. That one can turn the imitators into the change agent, leaving those with separation with their own proprietary innovation outside the emerging new platform. Call it a network effect.

A lot of the talk about interoperability, standards, open source, and the like is about the development of new competitive platforms. University patent licensing operations nearly entirely ignore this kind of thinking. It’s product separation or nothing. Yet one might argue that the particularly special role for university research is to feed platform development rather than product development. If we return to Bayh-Dole, which doesn’t dictate university practice but does now dominate research conditions, it becomes clear that practical application is just as readily achieved through standards as through monopoly products. Just university patent administrators don’t even try.

We might suggest that a significant effect of Bayh-Dole, reflected in the rise of university patenting of research originated inventions is to remove a huge stream of platform technologies and research tools from circulation in industry and community. The more patents the universities claim, the worse it is. Not because of the patenting, but because of the university implementations and fixation on sharing gifts with monopolists. Seen this way, it is not Bayh-Dole that stands in the way of innovation; rather it is the university implementations and their emphasis on “commercialization”. A few years ago, I was riding in a cab with two directors of university tech transfer offices. They were in agreement: they wouldn’t handle an invention if they were required to license it non-exclusively. Yet universities with this attitude continue to take ownership of the majority of inventions they see through their shops.

This development of the theme intends to put a lot of pressure on the idea that the only–or best–or first–role for university research patents is to give monopoly positions to companies. This also puts pressure on the idea that companies will only invest in new products if they have a monopoly position. And on the idea that without products positions, the inventions would not be used.

This addiction to the exclusive license is a big problem in university patent administration. Of course there is room for exclusive licensing, but university administrators really have not worked their way through the PARC Dilemma. They have don’t have effective ways to work across universities and industry to create interoperable platforms, libraries of tools, testbeds, ad hoc standards. You just can’t do this with one-off inter-institutional agreements. Faculty researchers do this by ignoring the tech transfer office, to the disgust of the officious class of administrators.

There are ways to use patents to develop platforms and feed American industry with robust new resources That’s what research enterprise and RTEI is about.

Posted in Technology Transfer | Comments Off on The PARC Dilemma

3 Flavors of Tech Transfer

Posted on August 8, 2010 by Gerald Barnett

Technology transfer historically comes in three flavors.

(1) From developed countries to developing countries–which these days means from India and China to California and Michigan. This work involves adapting technology, providing infrastructure, and training people to use the technology. For IP, a signal issue is territory.

(2) From one industry to another. This involves gaining access to new markets, adapting and certifying the technology for new uses, and dealing with field of use issues. Thin film technologies that were developed for photography are now finding their way into areas like solar panels.

(3) From research to practical application. This involves bench to bedside thinking in medicine, but the immediate roots of this work are in the great industry laboratories of last century created by Bell, Edison, Westinghouse, Sarnoff, and others. The typical route was from the industry lab to the host company’s products. Another route was from independent inventors to companies looking to expand their operations quickly. Universities typically enter technology transfer focused on aspects of this third flavor.

We will explore how all this comes together in a series of posts. We will examine what it means to transfer, where that transfer takes place, and what roles universities can and should be playing, and how the current line of development of university patent licensing represents a particularly narrow bit of the range that creative class research culture really needs.

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Frame Agreements

Posted on August 7, 2010 by Gerald Barnett

Over in the “Pages” area on the upper right I am starting to add illustrative documents that show how one can extend research enterprise to include open innovation, commons, collaborative research, and the like. The first of these involves frame agreements. There’s some explanation of why and how, with a link to a sample agreement. I’ll post some ancillary materials as well as I get time. If you have suggestions or want to consult with us on issues, we are also interested in hearing from you.

While a lot of this blog space has been taken up with Bayh-Dole, a whole lot of other things are going in the RTEI project. We’ll be restoring the balance so appearances track the broader range of activities.

Posted in Commons, IP, Projects | Comments Off on Frame Agreements