A Quora answer links to a Youtube video about the Battle of Alesia, which took place in 52 BC between the Romans and Gauls. The video examines Julius Caeser’s strategy in defeating a larger army with a better position in the field. The video ends with a discussion of Caesar’s way of thinking about achieving victory.
Here–you can watch it if you want.
Here’s the key thought–Caeser’s thinking vs conventional thinking. Continue reading
A common approach to discussions of Bayh-Dole is
(1) accept that what is happening is just what people say is happening–the law is working (as people claim), based on a politicized spun history (as people claim), based on a metrics of success (as people claim), and then
(2) misrepresent the law (or uncritically repeat misreprestations of the law) to account for why, and then
(3) go on complain about the law anyway or propose how to build on its wonderfulness.
It’s a grim way to discuss policy, what with all its trappings of academic sophistication and authority of publication. Such articles gather together, reinforcing each other and vying to move the policy discussion to be about some bit that each posits. As a result, the academic literature on anything Bayh-Dole is nigh unto useless for practice, policy, or thinking about innovation. AUTM data is also useless. Summaries of Bayh-Dole drawn from the academic literature are largely wrong–especially if written before 2011. But so are the political spin statements made about Bayh-Dole when it was debated and which have been repeated, unchallenged and unchanged, for over thirty years. Even Senator Bayh was wrong about Bayh-Dole’s fundamental operation, and the US Supreme Court ruled as much in Stanford v Roche. It’s almost like people want to get Bayh-Dole wrong, regardless of whether they love it, hate it, or just want to gussy it up.
Here’s an article by way of example: “Correcting Bayh-Dole’s Inefficiencies for the Taxpayer” by Michael Sweeney, published Northwestern Journal of Technology and Intellectual Property in 2012. Let’s work through the article’s account of Bayh-Dole. The exercise is not so much to show the defects of this work–it’s someone’s annotated opinion, so fine, and I could pick almost anything–but rather let’s use this work as a springboard to open up what Bayh-Dole actually does, were folks to comply with it, and perhaps from there we might begin to think about what ought to be done about it, if anything. So, consider that the article–forgotten perhaps by all but for the internet and a guy’s law firm bio–has a place of honor here at Research Enterprise and still has a legitimate role to play, though it is badly defective on the law and those defects render its proposals for change mostly useless.
Here’s the start of Sweeney’s article on Bayh-Dole:
By transferring ownership rights of federally funded inventions to non-government contractors and their subsequent licensees, the University and Small Business Patent Procedures Act of 1980 (Bayh-Dole Act) gives private actors unprecedented rights to intellectual property that was cultivated with public money.
I have bolded some things for consideration.
One can see, then, where Bayh-Dole comes into play in this meaningless mess. Bayh-Dole was drafted by the same folks who created the IPA system. The IPA system was shut down in 1978 as ineffective and contrary to public policy. Bayh-Dole emerged the next year, slogged through Congress, failed, and then was revived, tacked onto a bill to make technical changes to federal patent law, and passed in a lame-duck session as a parting gift to Senator Bayh, who had lost his re-election campaign. Bayh-Dole was given the appearance of doing what the IPA program had done.
Norman Latker, the NIH patent counsel that had developed the IPA program, had a hand in the Nixon patent policy revisions of the Kennedy patent policy, and then had a hand in drafting the Federal Procurement Regulation that codified the Nixon patent policy (because the Nixon patent policy had added this requirement for codification, by perhaps total coincidence), wrote later that Bayh-Dole was based on the IPA program. Really, Bayh-Dole was based on the Federal Procurement Regulation, not the IPA program, but because the FPR, which become effective in 1975, was designed to create the opportunity to expand the IPA program government wide, really Bayh-Dole was constructed out of parts of the IPA and FPR, a sort of franken law raised from the dead to serve university patent administrators. Continue reading
To lay it out in bullet points, the now dominant university patent-based approach to research inventions defaulting to exclusive licenses:
None of this “protects” research inventions. None of this facilitates technology transfer. Quite the opposite. There’s enough money supporting this approach, however, that all that’s needed is one big financial outcome every two decades or every 5,000 inventions per university to make it all appear profitable–a patent license, a startup is acquired, an infringement judgment, a financial settlement in a contract dispute. All the other inventions in the university’s “portfolio” then become the grist for the successful deal, and the practice perpetuates itself for another couple of decades. Continue reading
Prior to federal funding becoming the dominant source of university research funding, most universities operated their invention policies with a review committee that made recommendations to the university president with regard to particular inventions. The volume of invention reporting was sufficient low that people could consider possible a committee review. But with even a small uptick in the volume of inventions reported, committees were simply not workable. They would have to meet daily if not weekly, they would have to have technical, business, and legal knowledge from across the whole gamut of university research, they had no idea what to do if they said “no” to taking on any given invention, as “no” appeared to waive the whole invention policy apparatus. By the early 1980s, university invention review committees at a research university of any size were unworkable.
Instead, university administrators worked with Research Corporation to streamline reporting of inventions directly to Research Corporation. Research Corporation worked in the 1970s to create “technology transfer offices” at universities to help inventors recognize inventions and report them to Research Corporation for review. Thus, there were on many campuses people who knew something about inventions, how to document them for management review, and how to get them to Research Corporation or some other agent. These people were motivated to get invention agents to pick up reported inventions for management–each one represented the prospect of licensing income–and therefore of continued employment for the administrators involved. Conversely, each invention that was not adopted by an invention management agent meant the loss of the effort to get the invention fully documented and the prospect of having to waive the opportunity to make money for the university back to the inventor. Continue reading
University administrators have engaged in a thirty-year effort of research invention management that creates patent gridlock for what amounts to a tiny bit of the overall inventive activity in the country. That’s the black border area on this nice blue circle:
This domestic block fest is particularly the case for federally funded inventions–but keep in mind we are talking about 0.8% of all US patents from 1981 to the present.
The federal government early on in its foray into funding research to advance the frontiers of science and whatnot constrained itself to avoid the concentration of economic power that might arise if only a few companies or regions gained the benefit of federal subsidies–as Vannevar Bush had done during World War 2, contracting with only select companies and universities to get the indicated work down. Instead, the government committed itself to spreading the work around. And in doing so, by design federal funding fragmented where inventorship would arise in its programs for any given field of scientific and technological inquiry. It wasn’t that much of a problem, however, because federal invention policy meant that the government would acquire inventions made under contract other than with companies who had established commercial positions and make those inventions available to all.
Put simply, companies with real business could keep their patents, subject to a government license, and non-profits and contract research organizations that just did research for doing research would treat inventions as contract deliverables, knowing that they would get a non-exclusive license to practice along with everyone else. Another way: the federal government aimed not to disturb the commercial marketplace by its contracting–it wanted companies to participate in a fashion so that no one company obtained a dominant position with regard to others merely for having latched on to a source of government subsidy not available to the rest.
Yet another way: the federal government maintained its commitment not to use the patent system to sue its own citizens for using what they had funded nor to take a financial interest–necessarily then conflicted with regard to regulation and justice–in anyone exploiting patent rights under a government license.
Thus, as long as university research inventions were treated as contract deliverables, available to all via the federal dedication of inventions to the American public, spreading the work around to various universities and regions of the country–research as a form of economic pork rather than for its timely and useful results–was not a big deal because the government in effect made inventors and their employers cooperate in the release of the inventions to all. Continue reading
“If life is going to exist in a universe this size, the one thing it cannot afford to have is a sense of proportion.”
—Douglas Adams, Hitchhikers Guide to the Galaxy
In the Bayh-Dole era–1981 to the present–the US Patent Office has issued somewhere around 6.1 million utility patents. During this time, American universities and their affiliated nonprofits have obtained around 120,000 patents, of which a bit over 50,000 cite federal funding. We can illustrate this situation:
The circle area represents all US utility patents in the Bayh-Dole era. The university contribution is 2%, the federally funded university contribution is 0.8%. That is, the university contribution is within the area taken up by the black border of the circle, and the federal contribution–for maybe a trillion dollars of research–is less than half of that black border.
Counting patents is pretty much goofball. A lot of patents does not mean a lot of innovation. A lot of patents might not mean anything at all. A lot of patents is like describing a baseball season as a lot of hits. There’s not much one can tell from counting hits. What did the hits do? Who won what games? Were the games fun to watch? One hit in a 1-0 nine inning game no hitter may be worth way more than 22 hits in a 17-2 blowout. Counting patents, like counting hits without context, is meaningless. Continue reading
Bayh-Dole uses “protectable” with respect to inventions 35 USC 201(d). That’s strange. Nothing else in patent law has to do with protecting inventions. What could “protection” have to do with inventions, as a matter of law no less? To get at an answer to this question, we will have to explore the policy scheme that back claims about why the Bayh-Dole Act is necessary.
Let’s talk patent “protection.”
The Bayh-Dole Act is part of federal patent law, Title 35 of the United States Code. Among the strange provisions of Bayh-Dole, we find this at 35 USC 201(d):
The term “invention” means any invention or discovery which is or may be patentable or otherwise protectable under this title or any novel variety of plant which is or may be protectable under the Plant Variety Protection Act (7 U.S.C. 2321 et seq.).
Why strange? First, this is the only definition of invention in federal patent law, and it stipulates–for the Bayh-Dole Act, in Chapter 18, at least–that an invention is any invention that is or may be “patentable or otherwise protectable” under federal patent law. To work the grammatical logic here, an invention is any invention that may be “protectable.” Patentable is just one form of protectable. Not particularly helpful. Perhaps the part that operates is that an invention may also be a plant variety protectable under the Plant Variety Protection Act–but that’s not federal patent law.
But the second strange thing is the use of “protectable” with regard to inventions. Nowhere else in federal patent law is protectable used this way. (There’s really no other use of protect, protection, or protectable in federal patent law but for a header “Patents and Protection of Patent Rights”–not protection of inventions by means of patent law, but protection of patent rights from loss by means of proper registration).
What then is this “protectable” doing here? What does it mean for an invention to be protected by federal patent law? It’s one thing for a patent to be issued for an invention–the patent gives the patent holder an exclusive right for a limited time to (1) prevent others from practicing the invention and (2) to receive compensation as awarded by a court for infringement of the patent. As a result of these two rights, patent holders then have (3) the opportunity to grant licenses under their patent rights to those willing to provide in return consideration for the license without being taken to court. And, according to patent law, patent rights have the attributes of personal property, (4) patent holders may assign their patents and may receive consideration for doing so–indeed, for an assignment to remain effective, the assignor pretty much has to receive something of value in return–see 35 USC 261. Continue reading
I’ll try to make this simple.
When a university creates a written policy that commits it to attempting to commercialize inventions made with federal support, that policy alters the scope of any proposal the university submits for federal funding. Commercialization becomes a purpose of the funding.
When a university furthermore demands that faculty investigators assign all inventions to the university as a condition of employment or as a condition of participation in sponsored research, the university confirms that the scope of any federally funded project includes commercialization. What faculty investigators may intend by their work is irrelevant. The university intends to attempt commercialization with any invention within the scope of its claims.
When a university in addition claims that its technology transfer program provides it a competitive advantage in obtaining federal grants, the university makes it ever more clear that it intends commercialization to be an intended part of any federal project.
With me so far? Continue reading
Twitter thread:
Federal patent law uses “protect” with respect to inventions only in Bayh-Dole’s strange definition of invention at 35 USC 201(d): “is or may be patentable or otherwise protectable under this title” What does it mean to “protect” an invention?
“otherwise protectable” implies that “patent” as a matter of law is a form of “protection” A patent grants the patent holder with respect to practicing an invention (i) the right to exclude others and (ii) the right to require compensation. So what is the *protection*?
But wait, there’s more! Bayh-Dole’s policy requires the patent system to be used to *promote the utilization* of inventions arising from federally supported research or development. 35 USC 200. This is a working requirement that applies only to Bayh-Dole inventions. Continue reading
