The AEA, Bayh-Dole, and Government Patent Claims

Posted on November 16, 2009 by Gerald Barnett

It has been pointed out that I should take a look at the Atomic Energy Act of 1954. The AEA is an interesting read. Bayh-Dole is at pains to carve out DOE/atomic-nuclear energy provisions, but expressly takes precedence over AEA (see 35 USC 210(a)(6)).

The earliest version of AEA stipulates that any invention made under a contract with the Atomic Energy Commission is “deemed to have been made or conceived by the Commission”. That’s an expansive claim that avoids the problem of assignment–much like current US copyright law’s “work made for hire” provision, where the author is the employer or commissioning party. The AEA’s approach gets amended in 1961 to “shall be vested in and be the property of” the Commission, with a procedure by which the Commission can “waive its claim”; otherwise the PTO is to issue the patent to the Commission as agent on behalf of the Government. In other words, inventors can file what they want, but the Government can change who the patent issues to. That is, there are no formalities as to assignment of personal property if the PTO simply changes who the patent issues to.

It appears further that by statute all inventions within the scope of the act are to be reported to the government regardless of whether funded or not, but if the Government takes a patent, then it appears also that it provides for a reasonable royalty from any subsequent licensee to be paid to the patent owner, which the patent owner may work out with the licensee, or have the royalty set by the Commission directly. And Section 159 provides a direct link to override anything in federally funded research generally.

The AEA strategy started as claiming that inventive acts take place as if by the Commission (hence, no assignment is needed, since the Commission is by law the inventor), and then was modified to directing the PTO to issue patents to the Commission regardless of inventorship, with provisions for patents already issued and taken by the Commission to allow for royalties payable to the inventors/patent owners if subsequently licensed by the Government. There appears to be something of the form of eminent domain, except that the value of the taking is only realized in the event of a license. A similar taking is possible for inventions made having national security significance, which may be taken by the government (and even then, potentially with a secrecy requirement so one cannot talk about the invention or the taking) (35 USC 181).

37 CFR 401.14(b) carries these gestures through with regard to DOE nuclear propulsion and weapons programs. There, the language is that the contractor “agrees to assign” patent rights. There doesn’t appear to be any special indication in the law how the contractor gets those rights in order to assign them. This is part of the “exceptional circumstances” breakout at 37 CFR 401.3(b)(4). Under 401.3(b), agencies still use the standard rights clause at 37 CFR 401.14(a), which is where we find the requirement for written agreements with research personnel to protect the government’s interest. That would certainly one way to do it.

Given these various approaches–

government *is* inventor

government directs patent office to *issue* the property right to the government

government *requires* assignment (from contractor, from inventor)

the law *requires* assignment

–the question is not whether the government can do any of them–apparently it can and has and still does–but which ones operate in the normal (without a finding of exceptional circumstances) operation of Bayh-Dole.

The options come down to–

i) the contractor has ownership on notice to the government

Personal vesting of patent rights is suspended, and when the contractor notifies the government of its election to retain title, it actually then and there holds title.

ii) the contractor is given permission by the government under the funding agreement to obtain ownership (or designate who should obtain ownership) via assignment;

The contractor relies on its written agreements with research personnel to require assignment of patent rights to itself or another qualified organization. The transactions follow the standards of US patent law, such as 35 USC 261.

iii) the government has ownership outright absent contractor action unless the government waives interest;

The law provides for ownership of patent rights by the government, as in the original AEA, but the contractor may pre-empt vesting by notice. If the contractor does not pre-empt vesting, then vesting takes place unless the agency formally waives its interest. Again, no assignment because no personal property rights for the inventors until the agency has taken action to release its ownership interest.

iv) the government obtains ownership by assignment from inventors or contractor upon conditions under which government may obtain title;

If the contractor does not elect to retain title, or fails in its obligations having elected to retain title, then the government may obtain ownership, and to do this, the government requires assignment from whomever holds title. That is, the government respects the personal property right, and exercises its interest as a conditional lien on title.

For i) and iii), these might be thought of by analogy with eminent domain takings, except that one may argue that the inventors here never hold the patent right as personal property, so nothing technically is taken. That title is placed with the contractor or government is different from a 35 USC 118 filing on behalf of the inventor.

Breaking down yet further, one gets to whether:

a) something legal happens that makes title to patent rights vest initially somewhere other than with the inventor–contractor or agency;

b) the written agreements in Bayh-Dole establish enforceable promises to direct the assignment of patent rights initially with inventors to other parties;

c) the law requires such action, and to enter into any other arrangement or make any other action is illegal and unenforceable (such as, a present assignment of a future invention extending to inventions made with federal support, as perhaps in Stanford v. Roche) except as permitted by 37 CFR 401.3.

My thought is that b) is the means by which Bayh-Dole is implemented. What I’m finding is a lot of belief in a) and c).

What I don’t get, however, is why there is any need in Bayh-Dole for written agreements to protect the government’s interest if the government intended to assert ownership outright, or could vest that ownership in contractors upon contractor notice without moving through inventors. If Bayh-Dole followed a), one might expect that the patent law would identify such changes in patent policy. There is an argument that since Bayh-Dole is placed in US patent law, if one can read Bayh-Dole as an a)-style scenario [title vests in contractor directly], then no other indication of a change in policy on ownership is necessary. Following a c)-style scenario [it is illegal to do other than assign as directed] would involve allowing title as a formality rather than expecting a promise to assign as partial consideration for the award of research funding. Again, could be, but I’m struck by the absence of apparatus that would signal such an intended effect of policy. The argument might be, Bayh-Dole is that apparatus, but then we are back to interpretations.

The government grants the patent right, regardless, so these various ways of doing it are all the government in a sense negotiating with itself over how, starting with the defaults to be managed by the Department of Commerce and the USPTO, and Bayh-Dole making a statement to preempt various agency positions, and to allow these to be reformed within the exception practice at 37 CFR 401.3.

Why does all this matter? Is it just navel sniffing?

Due process matters. After 30 years, it would be a tremendous step to isolate the process clearly by which title to patent vests and is conveyed in compliance with Bayh-Dole. Does Bayh-Dole pre-empt inventors’ personal property rights in inventions?

Written agreements matter. Inventor-based practices place a different interest in written agreements from that in contractor-first or agency-first practices. For research, this matters, as university researchers, in particular, may be expected to voluntarily propose the work leading to the research, and without some consideration in the activity, might choose not to bring their best work within a federal funding arrangement (or even within a use of university resources arrangement). What do research inventors get in the bargain? That would be the subject of the written agreements, beyond the protection of the government interest.

Pathways matter. If folks are taking shortcuts and not obtaining assignments when they must, they jeopardize their licensing positions. If, alternatively, they are spending resources obtaining assignments when these are not required, they are wasting those resources and creating false expectations as to ownership, entitlement, and freedom of action.

All this doesn’t argue that universities weren’t intended to have ownership–clearly they were put in the driver’s seat by Bayh-Dole. What it does open up is that there are a bunch of ways for this to happen, but that are not being exploited by US universities.

Posted in Bayh-Dole, Technology Transfer | Comments Off on The AEA, Bayh-Dole, and Government Patent Claims

Bayh-Dole and Diversity

Posted on November 16, 2009 by Gerald Barnett

In discussions of diversity of practice, I encounter an urge to compare programs to obtain metrics of performance. In Canada, a number of universities have inventor-own policies. University of Waterloo, for instance. The immediate gesture is to ask whether Waterloo is *any better* at technology transfer for having such a policy. But does it matter? That is, should it matter to Waterloo that with different metrics (or even the same metrics), another university makes more licensing income? Or signs more licenses? or files more patents? Would it not be enough that Waterloo’s policies (and technology transfer functions) do what they are intended to do at Waterloo? Isn’t it sufficient that Waterloo’s policies and practices are high performing within their local context? Does Waterloo have to intend to do what some other university does?

Dan Ariely in Predictably Irrational talks about decoy pricing and how we tend to judge value by seeking comparisons, so that two prices (or anything else) that are similar will get more attention than some other thing to be compared that has nothing close to it. Folks will tend to take what appears better of the things that can be readily compared. In tech transfer, if you can’t judge the worth of something on its own, then try to find a way to judge it in comparison to something close to it, like the tech transfer program at another school. Anyway, that’s apparently the impulse.

Yet, tech transfer is not merely a function of a technology transfer office’s efforts. In practice, one might even argue, that most tech transfer happens despite those efforts. This isn’t to say tech transfer folks aren’t needed. In many cases, they are helpful, even critical. The inventions are made in research that is not controlled by tech transfer. Inventions are reported as a function of investigator and inventor choice, not so much because of the fine “training” that is provided on the topic, regardless of whether the “training” is a veiled threat about compliance or a veiled come-on for greed. Patents are filed based as much on available funding as on merit. And in any event, the number of patents may not have much to do with effectiveness of the program, even if a lot of patents might increase the changes that some few “hit it big”.

Stewart Kauffman, in Investigations, suggests that life is “in the ordered domain, on the edge of chaos.” That is, life-like systems have stability, but also actively explore diversity. Another way, they don’t remember too much or worry too much. From quite a different direction, Jared Diamond, in Collapse, describes various societies that fail as a result of changing conditions–such as in environment or trade. One point Diamond makes is that the values that sustain a society in terms of status and function may not be the ones that give it strength in changing circumstances. Greenland settlers would rather stave with their livestock than eat seal meet with the Inuit.

From these discussions, one might turn to research that aims to discover, to invent, to validate, and to challenge. For this work, engagement with community is, one might expect, not a single, stable function, but rather many diverse functions. At least that might make a starting premise. Instead, the working premise in US university technology transfer appears to be that a single model is best. Universities claim ownership of research inventions, file patents, and shop these to industry. Oh, there’s a lot of different ways to shop. But the goal is to make money from an ownership position. The cover is public benefit. The pragmatic administrative equation is that what’s good for the university is the public good. And the simpler and safer the better.

The point of diversity is that it spreads out the search for the new, beyond the “adjacent possible” (to use a Kauffman term again) and beyond the values that got us here. Innovation provides not merely the optimization of opportunity under the present conditions, but also the resiliency that comes from multiple ways of doing things, of having back ups at hand arising not from legacy but from exploration. The search for new local maxima as solutions to a social challenge will look inefficient, even wrong-headed, to folks with a fixation on improving the practice at hand. The desire to optimize is one of moving up the existing local maximum, to stay on the road already set out, to do things better and quicker. It’s a dream of clever shop practice, holding everything else constant.

All this may seem far afield. Creating new programs out on their own is not how comparative metrics get made. When we created a new software-directed practice at UW, there were patent folks who hated it. Software was easy to manage. Faculty would be confused. Policy didn’t allow it. It made the patent-first approach look bad. Poof.

One can look at a comparative metrics as a form of hazing, an effort to pull practice into a standard state to substantiate one’s claim to “best practices”. In this, comparative metrics actually serve as a conservative argument about how things can get done. If you don’t like change, or competition on practice, or exploration, then create a comparative metric that shames folks for not being like you. Put it all in a list. Show where you rank. Then it’s all about execution and efficiency. Arguing for other goals for IP is an excuse. So is other exploration of practice.

In all of this, it serves a conservative position relative to innovation management to argue that Bayh-Dole requires university ownership of inventions, or that the intent of Bayh-Dole was to create university patent licensing shops to make discretionary money for university research and inventors. That is, a conservative position about patent practice that greatly reduces the manner in which research innovation may come about. By merely restricting the pathways by which innovation opportunities can be addressed, the thrall of comparative patent licensing metrics really can and does stand in the way of innovation. When you need a new practice, you don’t have it, nor do any other schools, and there’s no opportunity to build it, so the practice is lost, not merely some local opportunity to collaborate.

In all this, one might say: it is useful to have a national approach to innovation that explores multiple strategies for using patents to promote use of research originated inventions. It ought to be a goal of national innovation strategy that there are diverse, competing ways to deal with patents. For every start up or product, there should be a commons or standard. For every dollar of licensing income, something dedicated to US industry without charge. For every corporate-style play, something moving through individual action. Why is there so little of this diversity in US university IP practice? Is it the network effect of having everyone doing the same thing, so it’s easier to hire and train folks to staff IP offices/ Is it the satisfaction of being able to make an easy comparison rather than a hard one, or to design practice for what’s needed rather than to do what everyone else has done?

One thing I’m sure of: it’s not Bayh-Dole that restricts the diversity of US university IP practice. It’s other things. Maybe it is as simple as: US universities have become administratively dull places to work. Is it that, that university administrators are generally unsuited, for the most part, to even think about innovation practice, let alone the means by which a breakthrough network operates to deliver something new to community? Not sure these are merely rhetorical questions, carrying their own answers. Or whether there are other issues about.

Another thing that I’m not so sure of, but think it is worth mentioning: comparative metrics are not particularly helpful in increasing the diversity of IP practice. Once it comes down to the most money with the least investment, there’s not much more to it. Any old standard model will work. Pick one that doesn’t require any smarts at the top to work it. That way, one can tell how things are simply by looking at the comparative metrics. Is that how we expect to run innovation programs? Seems to be at a lot of places.

The point of diversity in innovation practice is that we develop the techniques we need before we need them, we develop expertise that can create and adapt what is needed for local conditions rather than trying to fit everything into a bit of model built out of a fifteen year or so biotech speculative investment window running on decade-long product cycles aiming for billion dollar a year products backed by a few crucial patents. For this, we need to mine public policy like Bayh-Dole for its potential rather than for the narrowness of comparative, administrative comfort zones. Quite apart from the conventionally metrics of technology transfer, a good diversifying metric would be the number of US IP programs reporting different metrics to characterize their operations. At a recent SSTI conference, one session took this up and had assembled a list of was it 200 or more? metrics that offices were reporting in their annual reports. It would be good to see such metrics begin to reflect program goals that did not have to live or die based on comparisons with other schools’ practices. One way to do this is to construct a set of metrics tuned to the stated objectives of Bayh-Dole and Circular A-110. That would make for some interesting innovations in university accountability for all those patents they claim ownership of.

Posted in Metrics, Technology Transfer | Comments Off on Bayh-Dole and Diversity

Ownership Politics

Posted on November 16, 2009 by Gerald Barnett

I have been working through how Bayh-Dole operates to distribute patent rights arising in federally funded university and non-profit research. How things work aren’t so entirely obvious, but I’m finding folks have some deeply held beliefs about it. Things can get technical in a hurry. That I’m sure loses some folks, who would just as soon continue dealing as they always have. For these folks, any statement that removes the will to discuss is sufficient, regardless of the particular technique employed. That’s politics, of course.

If we turn toward looking at the law, and how things work, or appear to work, or could work, what do we find? That’s a different deal. That’s what I’m trying to get at. What’s the point of the effort? To open up ways to advance research assets to community practice–discovery, invention, insight, tools, data, expertise–to use, development, standards, products, and services, commercial or otherwise. To extend and improve practice by laying out how things can be done to involve the people that matter. Matthew Stewart, in The Management Myth, quotes Mary Parker Follett to the effect that management is the “art of getting things done through people”. Andrew Hargadon, in How Breakthroughs Happen, emphasizes the role of an active social network in moving an idea or invention into commerce.

A couple of citations about management doesn’t make a case, of course. My sense, however, is that research originated inventions, especially, often carry a bunch of tacit knowledge–expertise embedded in a research team, in particulars of research set ups and lines of reasoning, and the abstraction of this to “invention” and from there to “patent claims” breaks up this context of tacit knowledge. In its place stands a patent right with ownership markings and an opportunity to exclude others–something one would expect is precisely the opposite of what scientific or university instructional norms might suggest. But more: the patent stands as something on its own, a line in the sand. Doing anything with the underlying technology, ideas, insights still requires people with those capabilities. Doing things with the patent–licensing, threatening, doing business deals–that can go on apace using the capabilities of professionals who know how to handle the instrument, parry it, and trade on it.

In this, the “valley of death” is another way of saying, “we stripped off all the living direction from this research event and now have this rock of a patent that some investor is going to have to put up money to develop a product or company worth the risk.” Valley of death means: fear the evil of ownership of a right stripped of expertise.

This split between tacit knowledge of potential technology and the tacit knowledge of patents, contracts, and business threats and opportunities is what is at stake in creating ownership positions around research events and removing the assets from the lab for disposition. Either one brings critical chunks of the lab along, or there is a lot of challenge in keeping the patent work on track as a technology instrument, rather than as a financial and legal one.

Oh, yes, a patent is certainly a legal instrument to be used for financial or business purposes, but if we look at Bayh-Dole, we can see that the purpose is to use the patent system to promote the utilization of federally supported inventions. It’s a stretch to say that Bayh-Dole permits one to ignore the use of technology so long as the university makes money over the patent right. It’s a stretch to say that the purpose of Bayh-Dole is to give universities a source of income at the expense of investors and industry, in some predatory or parasitic way. It’s a stretch to say that Bayh-Dole intends universities to go directly at money-making, any way they can with patent rights, as if their own uses for licensing income must far outweigh the use of the inventions made with federal funds. That is, the use of the patent (in this way of thinking) is to make money. The use of the invention is to benefit the community. It’s all too easy to conflate these. The odd part is, who cares?

In other words, to get at the interface of research assets and community, one might do well to start by focusing on “getting things done through people” who have capability with those assets, and involving the patent-side, business-side, contract-side, threat and thrive folks as part of a network, not the anchor-owner-starting point for a money proposition.

It’s not that ownership doesn’t matter, or that patents are bad, or that university IP offices do a bad job, or that Bayh-Dole doesn’t provide a means by which universities can claim ownership. It’s just that effective research to community invention practice doesn’t require any of these things, and where it does benefit from patent practice, the distinctive mandate for universities managing inventions is that they promote the use of the inventions, using patents. The other stuff–making money, developing products, starting companies–arise out of promoting use. That’s the societal nut B-D asks universities to focus on. In addition to the money bit from licensing, universities also should be looking to create standards, build new platforms, and get technical folks excited rather than weighed down with restrictions, contracts, and huge money thoughts.

All this no doubt sounds impossibly fluffy to folks who have dedicated their efforts to generating patent licensing income as the primary measure of their success. My point is that licensing income is not a metric of success under Bayh-Dole, though it is anticipated that there will be licensing income. The success happens with use promoted by the patent system–use that provides benefit to the public, that supports American manufacturing jobs, that helps small businesses, and develops university-industry relationships. It’s easy enough not to care about these things and just accumulate patents to deal in. I expect most university administrators don’t care at all about these things. They show little understanding of these things, and don’t have time to, and so long as they aren’t fired for their lack of care, they have no intention to care. They don’t report these things in their annual reports as metrics, though some show up as accidental anecdotes.

They care about the money. They care about status. They care about “success”. They don’t particularly care how they get there. They don’t care how Bayh-Dole operates or what it says, beyond: “we own patents to research inventions and make money through licensing.”

It’s a shortcut. It’s a cut to the chase. Being thoughtful about research interests is idealistic overhead. Being technical about Bayh-Dole is purely academic, or worse, obstructionist. Being focused on low-value things like “platforms” instead of high-risk, high return things like “the next Google” or “a deal like Emory’s” is a waste of resources. Poof.

In working with Bayh-Dole, that’s the condition we face on the politics. Is the law about enhancing social impact arising from the federal investment in university research as represented by a particular class of output–the patentable invention? Or is it about making money off patents any way one can? We can guess what university folk believe, and here it may be as true for a lot of university inventors as for administrators. The fight over ownership under Bayh-Dole between university inventors and administrators clearly is not positioned about who might serve as a better steward of inventions on behalf of an interested public. It’s about who gets to the money trough. For that, there’s no amount of legislation that will get it right. May as well pass a law to try to prevent terriers from digging. If there’s going to ever be a focus by universities on the interface between their federally sponsored research and community over inventions, it will come because folks decide to do this, recognize the value of doing this, and choose to deploy patent rights to encourage this.

That’s the reason for going after the ownership issue under Bayh-Dole. To show the stewardship nature of ownership. To show the objectives asked of the steward-owners. To ask for accountability relative to those objectives. To develop out new practice that adapts the patent system to emerging community, and industry, and investor, and research needs. We won’t get there focused on licensing patents for the money. We won’t get there assuming Bayh-Dole is just a corporate ownership ticket to troll.

Posted in Bayh-Dole, Technology Transfer | Comments Off on Ownership Politics

Portfolio Sniffing

Posted on November 14, 2009 by Gerald Barnett

Is a portfolio making $10m/year and closing 50 licenses a year high performing? Is it still high performing if it is making $9.8m from one license, and $200K total from four more, and about one third of the patenting costs from the rest, and 40 of the 50 licenses are non-exclusive in consortia, and of the 750 inventions disclosed in the past five years, the total licensing activity generating revenue over expenses and seeing invented technology actually in commercial use (internally, or as a product) amounts to about 25 cases . This latter situation may be the typical profile for a university patent portfolio. A few big hits, some stuff stringing along that might come to something, an apron of stuff that makes the numbers look good, and a lot of stuff with some bits of fading hope but not particularly priority. Even still, from a portfolio point of view, that may be a good deal–money is coming in, just have to do one deal every 15 years or so to have enough to make budget. For this, one might think to show how the income is better than other places with more disclosures per year, or more sponsored research, and make the claim that the office is doing even better.

From the perspective of a given research project, however, that tremendous portfolio doesn’t look so hot, regardless of the comparisons. That’s because it’s unlikely that for any given project, its inventions are the ones hitting it big. For 150 inventions disclosed in a year, there might be 50 to 100 different projects involved. The odds of hitting it, on the numbers, is 1 in 750, or of generating any income whatsoever, maybe 1 in 30. These may be decent odds, comparatively speaking–and one can make a good argument that technology placement via patent licensing for a royalty is really challenging and takes time. But for a bunch of projects, the tech transfer office will hold patent rights but will not have anything to show for it. This is the social reality. How many labs are the heavy side of the 1 in 30 after a decade of practice? Yeah, for them it sucks. And over time, there will be a lot more of them than there will be of the successes. Since the tech transfer successes don’t result in any direct benefit to the labs with inventions and no action, it’s even worse by comparison, since all the labs have to show for their participation in the program is the distraction of submitting invention disclosure documents and answering a bunch of questions. Sure, they are learning how patents are obtained, and some ideas of how they might be used, but that’s a long way from a check worth talking about.

From the point of view of a project that has disclosed inventions that the university claims, but which are not in play, the university ownership is a liability. It represents uncertainty and overhead. Grad students leaving the lab for industry positions cannot practice what they learned (or even invented) in their company positions. Investigators owe their colleagues a heads up that what they are publishing on is claimed by the university, which holds the patents and will do what it will, if the opportunity ever arises. Even where there’s a close partnership, goodwill, and lots of incentive to get on with one another, there’s still the lingering bit that the portfolio is doing well, regardless of what happens locally, for this project, in the near term. The social reality is, unless a majority of inventions are in play, a university portfolio will not be “research-successful”, regardless of how much money it is bringing in.

For research-successful, we might look at working relationships, participation in platforms and standards, and development of tools and methods that primarily have a life of internal use rather than either as a product or new company. A university holding patent rights in portfolio to be licensed for commercial sales may as well put up a sign that it intends to stand off anyone who wants to use internally until someone comes forward to take a commercialization license. That’s not so much an innovation stance as it is a money stance. That’s what gets folks off about the whole thing. That patent portfolio, even making a nice bit of money, is likely under-serving its research community, increasing the uncertainty with regard to the industry research and practice community, and working against rapid uptake of research inventions into shared assets such as standards. And still, it’s a successful portfolio, if one looks only at the money spent and the money received.

This is a problem of reporting “metrics”. If one knows that the “numbers” make you look good to folks who don’t know how you do it, and can’t guess the structure of your numbers, but these otherwise tell a tough story, is it in the public interest to leave an impression that’s not, let’s say, true? That is, the numbers are “true” but the impression isn’t. I think that research personnel sniff this out and don’t like it. For that matter, I think industry and investors also sniff it out and don’t like it. Is there any ethical obligation, at least in reporting the structure of a university patent portfolio built on federally funded research, to lay out the structure of the portfolio and not leave the impression of lots of money and lots of licensing, if it’s one case and a few efforts and a lot left on the table, perhaps to have its day later, but mostly to waste?

This is not a criticism of tech transfer operations. Especially, this isn’t a case that an office could “do better” and license nearly everything, if only it were expert or funded or motivated or efficient or celebrity stocked or run by investors or boosters or really important people or technicians who just followed policy and didn’t think so much. Yeah, right. No, it’s not possible. The bit about a single office handling the invention affairs for $200m in research spread across every bit of life is not possible. This isn’t about improving efficiency or doing things optimally or making more money. This is about a kind of intellectual honesty in reporting what is happening to one’s own service community and to the public.

I note: who reports how many inventions have not been licensed? or the average age of unlicensed inventions? or the amount spent on unlicensed inventions? or the number of inventions waived as to university interest?

I note: who reports the number of inventions earning more than their patent costs as a percentage of the entire number of inventions under management?

I note: who reports the contributions to collaboration, standards, testbeds, small business other than one’s owns startups, even when these didn’t make “money”?

I note: who reports how they spent all that hard-won licensing income?

Posted in Uncategorized | Comments Off on Portfolio Sniffing

Bayh-Dole: The Series

Posted on November 14, 2009 by Gerald Barnett

It has been a wild two weeks since I raised some points with regard to university patent practice under the Bayh-Dole Act. There is much to develop, but I can’t do it all in a single post. So it will come in parts. Here is a starting question: why has university practice under Bayh-Dole been so uniform? That is, why do so many universities claim ownership of patent rights in federally supported inventions rather than use any of the alternatives provided for–even anticipated–in the law?

Related to this question is another: what are effective strategies for helping communities gain the benefit of discoveries and inventions made in the course of federally supported research?

Both of these questions take a run at diversity of practice. One may think that universities in different locations, with different research expertise, variations in IP expertise and emphasis, and different surrounding communities, investors, and industries, might take different approaches to inventions and patents. Or that different industries might have different needs for research outputs, have different sorts of value chains in which those outputs figure, and take up new stuff at different points, for different reasons, with different transactions. It’s not a given, of course, but the gesture is, diversity of practice adapted as needed to potentially wildly different situations.

What I am wondering is: why is diversity not the default? Why is it nearly non-existent in university “technology transfer”? Why does everything look the same with regard to ownership under Bayh-Dole, even in universities where the practice differs–from a big emphasis on industry research to a conventional license a lot of stuff to a start-up intensive program?

In asking these questions, I’m looking for different sorts of answers. Some will track history. Folks made these assumptions, drafted these documents, and others liked the look and took advantage of the work effort and did something similar. Maybe that’s the deal. Some others will track rationales. This kind of program made a lot of money licensing this way, or that program got into trouble and we should avoid their problems, or faculty here want it this way. Fine, those are reasons that ought to count for something. And there may be answers in something more abstract, even bureaucratic, such as that when faced with competing interests, rather than attempting to meet those competitors with multiple gestures, instead seeking to harmonize bits and pieces of these interests into a single program that has defects associated with most but meets the needs of a few quite well. That is, compromise for administrative simplicity rather than deploy in challenging ways to address directly disparate interests. That would make sense, though it may not satisfy.

In all of this, I have been struck by how quickly technology transfer folks in the US turn defensive. In some conversations, I have not been able to even lay out the case for diverse practice without folks working in overdrive to prevent the topic from even surfacing. There’s generally not: we are always looking to expand our range of tools. Not: wow, how would that work and do you think we could use it? Not: it would be worth knowing how to do that so we wouldn’t have to learn it when we really needed it. It’s mostly the other way: There is no data for that. That’s never been done. We’re doing really well. Why are you making things more difficult? Are you suggesting we’re not doing our best? Or: I don’t believe you. Prove it. And: inventors don’t know much at all about commercialization.

I’m sure there’s life in all of this. I just don’t see why we have 200 university tech transfer offices as the result of Bayh-Dole, instead of, say, 50 specialized, diversely located invention management shops focused on key areas of community, investment, and industry practice. Or, a mix of all sorts of practice, with some schools waiving all rights and others working with incubators and proof of concept centers, and yet others working in what are now regarded as conventional licensing offices. Bayh-Dole permits alternative realities. It just hasn’t happened. Why?

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Solheim Lab Microwave Kiln Micro-donation Project

Posted on October 29, 2009 by Gerald Barnett

As part of RTEI’s efforts to promote new forms of inquiry such as research-based art, we have been working with the Solheim Lab at the University of Washington. The lab has a blog for their open 3d printing initiative, which gives a good idea of what they are working on. Solheim Lab is student-oriented and develops its 3d printing research work in the context of continuous exchange with practitioners. Lab co-director Prof. Mark Ganter often provides students with materials he pays for out of his own pocket.

For the open 3d printing project, Solheim Lab could use a microwave kiln. A microwave kiln would speed up the firing process and would open up new ways to work with 3d printed objects, such as changing drying characteristics and permitting much more precise heat management. The cost would be about $750. This would involve purchasing a high grade commercial 1000 to 1200w microwave oven (like the ones we nuke potatoes in) with a big working space (so more like five potato land) and all metal construction, along with some specialized ceramic inserts made to manage the heat, such as the one made by

I want to see if we can raise the money for this lab addition by creating a micro-donation project. I’m looking for 15 to 25 people willing to pledge $25 to $50 (micro-donations!) to add a microwave kiln to the lab’s resources. I’m in for $50 and I’ll increase my donation to match anyone (once!) who contributes over $50 up to $100. We will collectively be the “Friends of the Microwave Kiln”. If we can get enough pledges by December 1, then I’ll send an email to everyone and we can all go to the University of Washington Solheim Lab donation page to make our contributions.

What do we get out of this? A microwave oven with “Friends of the Microwave Kiln” lettered on it, with the names of each donor (who wishes to be named) and an encouragement for artists and engineers who use it to post pictures of their work at the Open 3d Printing web site with the tag “microwave kiln” so we can see how the oven is being used. Other than that, the usual bit about how the joy of giving in support of student creativity is worth much more than the $25 could buy any other way. And donations through the University of Washington are generally tax deductible.

If you would like to participate, send me an email at gerald barnett att.net with the amount you are willing to pledge–any amount is fine, really, though $750 or more would rather spoil the fun for the rest of us. When I’ve got enough in pledges to meet our goal, I’ll send an email out to everyone, and we can then make our donations directly through the Solheim Lab Fund at UW. Thanks in advance to all who support Solheim Lab and open innovation!

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Pursuing A-110

Posted on October 18, 2009 by Gerald Barnett

OMB Circular A-110 sets the overall federal policy for the funding of university research. Within A-110, Bayh-Dole appears as a section within __.36, which pertains to Intangible Property. Other sections of __.36 address copyright and data.

There are other federal regulations, as in the FARs, that also pertain to intellectual property in contracts. When those contracts are with universities, then these will come into play as well. For federal contracts, Bayh-Dole still mostly comes through, but copyright and data matters can get twisted around, such as through the FAR Special Works clause or under restrictions imposed by agency specific FAR supplements in the Rights in Data General clauses.

Intangible Property is defined this way in A-110 (at __.2(s)):

(s) Intangible property and debt instruments means, but is not limited to, trademarks, copyrights, patents and patent applications and such property as loans, notes and other debt instruments, lease agreements, stock and other instruments of property ownership, whether considered tangible or intangible.

The definition is quite broad, encompassing intellectual property, debt instruments, and other contracts. Where it becomes interesting is when we turn to __.37, the next section in A-110:

___.37 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. Agencies may require recipients to record liens or other appropriate notices of record to indicate that personal or real property has been acquired or improved with Federal funds and that use and disposition conditions apply to the property.

I’ve boldfaced some parts for emphasis. There are couple of things to get out of the way. First, does this apply to patents and copyrights? On the face of it, it certainly appears to. One can push it further, however, and ask what it means for patents to be “acquired or improved” with federal funding. “Acquired” alone might mean “purchased”, such as one might acquire equipment, or obtain permission to practice to carry out the project. “Improved”, however, has little of this and suggests improvements to the underlying inventions, or to the claims one might make in the patent office. “Improved” could also mean something along the lines of “made more valuable through the conduct of the research”, but in that sense it would only matter if the improvements were held by the recipient (let’s say, here, a university) as property (through an assignment, contract, deed, or other such instrument).

If we look specifically at patents, it is clear that these are only acquired by a university by means of an assignment transaction from the inventors. There is no “work for hire” or automatic statute that operates to hand patent rights to a university as employer. Thus, the university as recipient of federal awards is clearly acquiring patents when its policies require assignment of right, title, and interest to inventions made with federal funds. Such actions would appear to fall directly within the scope of A-110 __.37.

A second point has to do with the term for which such obligations under __.37 operate. What happens, for instance, at the end of an award period, when the money has been spent, the final report accepted, and the grant account closed out? We note that the licenses granted to the government under __.36 do not terminate. In a related section, covering Program Income (__.24), language expressly limits the requirements for such income to the “project period” (see subparagraph e). There is no such language here in __.37. We are left to conclude that the obligations of __.37 continue after the end of the project period.

Getting all of this out of the way seems sort of stuffy. But it’s important. Here’s the juicy part. This little __.37 clause is the roadmap to what universities should be doing with their IP policies, and the routine violation of this clause is what’s gone so very wrong.

The point of __.37 is that universities as recipients of federal grants are to act as trustees for the IP they acquire that results from that funding. To put borders on it, not simply to act as corporate owners of copyrights and patents, nor as indifferent hosts as if the research were private and they are just in it for the indirect costs and prestige. When a university seeks to own rights to patents made in the course of federal funding, it should be making the acquisition of the patents on behalf of the beneficiaries of the research. That’s what __.37 says. Further, __.37 says, even if the recipient doesn’t acquire the rights, but merely improves them, the recipient still is to play the role of trustee.

For all those technology transfer programs trying to make money licensing commercial rights, the challenge of __.37 is to demonstrate that doing so results in benefits for the intended audiences of the research. It may be obvious that the invention in use will have benefit, but explain how making money in doing this is what a trustee should be doing.

Bayh-Dole lays out who the beneficiaries are to be for university-retained invention title: US labor, small business, industry collaborators, scientists, students, and inventors. Other than the share of income provided to inventors, I don’t see universities reporting on how these other objectives are being met. And when it comes to inventors, I don’t see how cash only can possibly be the only obligation a trustee owes them in managing patent rights.

Right now university technology transfer appears fixated on starting companies. That amounts, mostly, to helping venture capital firms with their deal flow. That is so sweet and caring. The VCs I’m sure really appreciate having university folks so fixated on helping them make money. I can’t see how that is what a trustee is to supposed to be doing.

We can take it one step further. Universities need to account for their Bayh-Dole income. All they do is report their total licensing income. We need to see what of it is from subject inventions. More importantly, however, we need an accounting of how they are using this money. Bayh-Dole says: cover the costs of managing subject inventions (including the costs in sharing with inventors), and use the remaining funds (if there are any) to support scientific research or education.

Since this last bit appears to be lost on administrators, perhaps it is worth spelling it out more clearly.

1. Fund the darn tech transfer program. It’s a Bayh-Dole mandate. This idea that you can do it on 20% or 30% of licensing income is crazy. That’s being a slumlord not a trustee. 40% plus costs if you’ve got the program working exceptionally well. That amount from your own funds until you do. File some patents and take care of them. If you’ve got enough income to handle full participation in the program, then scale the re-investment back then.

2. Share with inventors. The pre-set “royalty sharing” schedules in policy are a crock. These schedules are only there set in stone because no one trusts you guys to do the right thing. Start by sharing income with *all* inventors participating in the subject invention licensing program, not just with the ones that hit it big with a licensing deal for their own inventions. Then let inventors have a say in the sharing for the inventions they contribute to the program. And for the portion they dedicate to the university, let them have a say in how that is used, too. And make that all public. Let’s see how inventors want to cut things, as between themselves and their science and students.

3. Put the remaining funds to visible use. They are not slush funds, nor funds for whatever pet project. So use them well, and account for them. Consider, as trustee, putting them to work in support of scientific research in the labs of the scientists who are doing the inventing. Consider, as trustee, supporting that work beyond your own institution. Same for educational uses. Consider asking the audiences that expect to benefit from the research how the funds might be best used. Yes, it means you have to ask the dirty masses what they think, but you know, that’s what a trustee does. A trustee communicates with the intended beneficiaries.

Posted in Sponsored Research, Technology Transfer, Uncategorized | Comments Off on Pursuing A-110

Bureaukleptosis Assessment Tool

Posted on October 5, 2009 by Gerald Barnett

Does your university have bureaukleptosis of the IP? Sounds like an ugly malady, to be sure, and it is. At its root, it is an abrogation of the university’s role as trustee of IP in favor of an ownership claim on its own behalf. Here are some questions that help to sort out whether it’s bureaukleptosis. There are 11, just for completeness.

1 ) Does the IP policy use “to the extent legally allowed” language to claim IP?
2 ) Does the IP policy require assignment of IP on request?
3 ) Does a question about not assigning IP trigger a conflict of interest concern?
4 ) Does any IP worth anything ever get released to inventors?
5 ) Does the policy have a good way to receive non-required IP?
6 ) Do you have a large, unlicensed patent portfolio?
7 ) Do senior administrators say, “We own all of it, we just don’t always enforce that”?
8 ) Does university counsel generally take the side of the administration in IP issues with research personnel?
9 ) Do research inventors have a choice of where to place new IP?
10 ) Does the burden fall on inventors to show why the IP is not the university’s?
11 ) Does the university send out an assignment document automatically when you report an invention?

Positive answers to any of these questions suggests bureaukleptosis. Positive answers to at least six of these means a full blown case.

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Bureaukleptic Innovation Management

Posted on October 3, 2009 by Gerald Barnett

I’m giving some thought to “bureaukleptic” innovation management. That’s my word for it. Essentially, this consists in claiming everything one can, and then releasing what one doesn’t want. This approach is favored by folks who don’t have any idea what they are doing and know it. So they draft a conservative policy–which ends up being incredibly grasping and ineffective. The premise is, things that the organization doesn’t need can be let go. But it’s an unworkable premise–really, it is a lie, not merely an unrealized dream or naive hope. No way for an organization to let go under a bureaukleptic approach, and no amount of making it look orderly, consistent, fair, or cosmetically rational changes this.

Short piece is, if someone expresses an interest in claimed IP, then there’s a reason to hold it, and if they don’t, then it’s not worth the effort to release it. Is she a witch, anyone? Anyone who wants something, then, has to pretend they don’t, really. Even if the inventors want stuff to be publicly available, they’ll be accused of conflict of interest because they might make money consulting or want to somehow in spite to prevent the university from profiting. It’s more totally worse that just this, but that’s for another post. Overall, the cost to manage IP in a bureaukleptocracy is too great to allow access across all the ways university research assets could propagate.

There is no point in trying to improve a bureaukleptocracy. In this regard, UIDP and the Lambert Agreements are off track. It’s tough to eradicate a bureaukleptocracy as well. The Kerr-Drucker hypothesis applies: Change comes from the outside, build out rather than fixing the old.

The edge that is necessary is to build out to compete with the bureaukleptocrats. That means: getting choice to university investigators, inventors, and entrepreneurs–not cutting them free of their reseach and public commitments–but rather empowering them to be leaders with regard to them. With leadership, responsibility. If they want to hand their stuff to the bureaukletpocrats, let it be their choice, not the BKCs’ policies.

So much for “systems” of IP management that grab everything and claim to release. Doesn’t happen. A lie. Honestly.

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Research Chattels

Posted on October 2, 2009 by Gerald Barnett

I’ve been working recently on “research chattels”. These are things created in the course of research that are tangible in some way, and so not real property, but also are not simply the intellectual property. I’ve done some work developing concepts of NIPIA related to research–the non-IP intangible assets. So it makes sense to look at the tangible assets.

Typically tangible assets end up looking like something out of a patent handbook, but lacking something. So, for instance, a chattel could be the best mode of practicing an invention, as might be a circuit board or a cell line. Or, it may be just like an invention, except not patentable (which sort of makes it not an invention, really, for policy purposes, but then again, for policy purposes, it seems to work to treat it as an invention and then remove the key elements that make it inventive, like novelty or non-obviousness).

Generally, tangible stuff is handled by material transfer agreements. These are transfer instruments that make a contract out of a transfer activity. Typically, the contract makes the transfer a bailment–a kind of loan of the material so that possession changes but not the ownership. But bailment is also a kind of fiction, for in a conventional bailment, the recipient possesses the chattel but does not have the free use of it. One might argue, a bailment for research purposes only entitles a recipient to inspect and analyze the material, but not to use it. Or, we might say in a fictional spirit, “use it only for research, which isn’t really a use at all, if by use we mean for production or commercial purposes.” Really, the idea of bailment exists in these transfers to get around gift and sale issues. How can a state university, anyway, gift things to private parties? Isn’t that just corruption? Abuse of state assets? All that. (Isn’t that kind of thinking just total crock? And yet we can’t get rid of it. Smells like bozonet spirit washing up with every tide!). Same is true for sales, leasing to questions of sales tax, unrelated business income, alienation of property, unfair competition with private industry, and on-sale patent bars, and first sale exhaustion of IP rights, if there are any.

There are good reasons to have some form of notice with the transfer of research materials, but they aren’t based in IP. That’s not to say there aren’t reasons given that are based in IP. But first the good reasons: notice of hazards, proper disposal, and allocation of risk. If there is going to be any formal elements to a transfer of research materials, these make sense. For the most part, these can be handled by notice, not by contract.

IP reasons are less useful. The typical one is based on patent rights. By transferring the material, a provider gives a recipient a better opportunity to study the material, think up inventive improvements and rush to the patent office ahead of the provider. So the provider tries to restrict the use–perhaps even requiring that the recipient not investigate the material but only use it, and then only in an agreed-upon research protocol. Typically also, the source wants data back, notice of any invention, and sometimes also a grant of license in any inventions made regarding the material or using the material. These kinds of requirements are called “reach through”. The need for such requirements points up a fundamental paranoia of advantage that populates thinking about transfer of materials. For research universities, it boils down to trying to preserve an exclusive licensing position. For that, it makes sense (in a weird kind of way) to put up barriers to use by others. Validation is fine. Use in limited research, also fine. But the rest is pretty much seen as competitive with one’s own interests. It wouldn’t be so bad as this, except a whole lot of materials transferred under MTAs have no IP rights attached to them. So all that reach through and paranoia and barrier and prudence is left over apparatus from the general idea that a research chattel ought to be treated as if it were an invention, even if it is not. An invention without essential inventiveness. When really, a material is transferred as a deposit, for reference, for validation, or as a tool. I point out only that whatever practice universities have, industry practice is even more paranoid.

But this is just by way of context. What is bothering me is how a research chattel comes to be owned, that is, becomes “property”. With ownership, we have four basic properties: possession, use, enjoyment, and freedom to alienate. (No, not the way tech transfer offices often do with MTAs–alienate as in ability to transfer to another). It’s easy with incoming raw materials that are purchased: reagents, parts, seeds, paint, whatnot. For these, the sale documents a transfer in ownership. But now what happens in a research setting?

Someone plants the seeds, and tomato plants grow. Someone mixes reagents and poof, there’s a precipitate. Someone uses the paint to paint an image. Does the property right that starts with the material extend to its transformation? Let’s say the folks doing the transformations are university faculty conducting research. Let’s say tomato plants are selected based on variations and crossed to produce new varieties. Does the ownership of the seeds spread throughout all the plants that descend from those seeds? Does ownership rise up from the ground on which seeds from descendants are sowed? Does ownership flow through the hands or paychecks of those who take care of the plants? If a farmer shows up at a university farm, and asks for seeds to try out, and an investigator hands some over, on whose authority is the investigator acting? If an investigator picks a tomato and eats a slice, is it okay if it’s to test the flavor or other property, but not if, say, she is hungry or wants to enjoy the flavor?

For these sorts of things, we have transformative chattels. The stuff that was purchased with university funds is transformed through the activities of research, and becomes some other thing. If it is inventive, we say there are patent rights and hold onto those. If it is original expression (a painting, a sculpture) then there is copyright. But if it is just useful in a transformed way, how does ownership come about in this changed research chattel? How does ownership jump and skip from seeds to a new hybrid? How does it slide into a circuit board or the output from a lathe?

In a corporate setting, this sort of question has an easier answer. The employment agreement, at least, can make an attempt at it. The employee agrees that all work effort is the company’s, not just inventions and expression, but anything at all. The catch-all premise is trade secret. Combine that with a non-compete clause for post-employment activities and forbid disclosure, and it’s pretty sealed up, except for some bits about the scope of claims to inventions.

But in a university, a lot of this doesn’t happen. Trade secret, in particular, is not so easily implemented. The whole idea around a university is that it is open–not in the sense that every thought is forced to be divulged, but rather, that the university as an institution does not seek to constrain information. We see this most clearly with copyright, where most universities do not assert ownership of copyright in scholarly expression, or “independent academic effort” as the University of California copyright policy puts it. Some folks get horribly mixed up about this, by the way, and think that faculty are working for hire because it’s within the scope of their employment to produce scholarly works. Such assertions miss both that employment in copyright is not identical to the meaning of employment for HR purposes, and that an employer and employee have the freedom to agree on what constitutes scope of employment for copyright purposes. For chattels, this matters as well. Despite using the resources of the university–labs to do research, computers to write reports, mailing services to send off manuscripts for review–the faculty generally own their copyrights, and they should. Why would the university want to decide what gets published and what suppressed?

Yet the lingering feeling one might suspect is that the reason there’s a question about research chattels–data, artifacts, prototypes, tools, developments–is that there’s a defect in the policies and employment contracts. That, from corporate experience, there are ways to “fix” things so the ownership question is settled. Unsettling, perhaps, if one believes that a distinctive value of university research is precisely that it does not adopt corporate style approaches to IP. Given the really horrible record of corporate management of IP for innovation, one wonders why anyone would go there. Perhaps the allure of order is stronger than the insight of innovation.

If one thinks in alternatives, then one might turn to personal ownership. The tomato plant, twenty generations along, is now the personal property of the investigator. The circuit board, assembled and tested out, personally owned for being assembled creatively. The image, as painted, is in its tangible form, personal. Going this route leads to the concern that all these apparently public materials become personal simply by having a research activity take place on them. It may be. It’s not a natural thing, anyway. It would be something we decided to say happens.

If a faculty member pulls paper from a university printer to make a grocery list for personal shopping after work, we might say, oh, that’s conversion or theft. But if the faculty member prints out a draft report on his research and sends it off to the publisher, the paper that it’s printed on goes away never to return. It’s not a bailment, not a sale, not a lease, not a gift. It is just the disappearance of the paper moving from the possession of the investigator to the possession of an editor at some journal. Same for a grant proposal to a foundation. The chattel changes hands. Not theft or conversion, even when the copyright in the work conveyed is personal. But if we are indiscriminate with this, we end up with the idea that research personnel are squatters permitted to take their gleanings, but that the are independent, even of their funding sources, their duties to the university, of the on-again-off-again social contract with the public about instruction and integrity and the community good at heart. It’s not as simple that everything becomes personal the moment a researcher touches it.

So here’s the thing. What if we have a normal environment here where research chattels are not owned as either corporate property or personal property? What if this is not an abnormal, poorly organized state of affairs, but rather one of the shining examples of commons at work? WIPO has developed the concept of “traditional knowledge” as a form of IP. TK does not have to follow statutory formalities. It may reside as IP in tribal practices, in social conditions, in the stories or weaving patterns that one family or line of artisans holds, and others do not. In a TK development, IP arises in a commons–and in some ways is deeply linked to the social fabric of that commons. It’s almost like IP as a fiction of IP, or IP’s imaginary part. A form of intangible asset that has the properties of IP but isn’t. Sort of how universities treat inventions that are not. This sort of TK is perfectly natural, it may be highly stable, but it is not necessarily formal, contractual, consistent (on some superficial basis), or statutory. We see these kinds of collisions when anthropologists collect artifacts (or designs on artifacts), or agriculturalists harvest native crops, or entomologists collect their entoms. Who owned these before collecting? To whom should decisions about circulation and use (and especially, but not necessarily most importantly, commercial use) be referred? To the artisans, the farmers, the elders? Perhaps.

In a research setting, who are the artisans, the elders? It may be that these are readily apparent, and are generally not the administrators that are designated to deploy delegations of authority and enter into contracts. Generally, we might expect that the stewards of TK are the investigators, and that they obtain possession of TK by virtue not of their employment or position, but by virtue of their leadership in the research commons that transforms raw materials supplied through the agency of the university into something new, just as they create expression in their report of findings. With the rise of Bayh-Dole (not B-D’s fault, by the way), universities claim ownership of inventions (and really, the patent rights in inventions). They do not need to do this (even under B-D) but generally that’s the case. The corporate claim settling in like a pallor over the TK commons of research.

This is where I’m coming to: that research chattels are creatures of a traditional knowledge commons presided over by investigators who by transforming raw materials into things of research purpose–artifact, tool, prototype, instance–they establish a proper authority over the things that result for all activities for which research is conducted. In this capacity, the investigators are the artisans and the elders. There is no administrative intervention that can add value by changing the ownership conditions, whether interposing a corporate claim or insisting on a personal claim. The ownership is tribal. It is the commons of research participants that sets those conditions, and it is up to the lead investigators to articulate the conditions as decisions and actions.

If this holds up, then universities should get out of the business of MTAs. At least, they should stop claiming to own research chattels, and stop trying to extend and improve corporate-style policies and contracts to bring order to what was already orderly. The imposition of corporate style order, or the assertion of personal claims–neither adds value to the performance of a research environment. Rather than seeking to impose IP and contractual restraints on research activities, a better, more challenging, and necessary activity is to seek how to extend the mores of research conventions into transactions that support community adoption and use, whether via open transactions, classroom mediate instruction, or various commercial and investment pathways, whether managed by governments, NGOs, or captains of industry and finance. If all this is so, then the policy we need is one that recognizes research commons, confirms the proper role of investigators as the stewards, if you wish, of research chattels, and that corporate and personal theories of ownership are simply inappropriate.

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