NIST’s Explanation of the Addition of an Assignment Requirement

NIST added an assignment requirement to the standard patent rights clause authorized by Bayh-Dole. There’s no authority in Bayh-Dole, however, for an assignment requirement. The Supreme Court in Stanford v Roche made clear that Bayh-Dole does not vest ownership, does not require assignment of ownership, does not give contractors any special privilege to take ownership, or otherwise mandate that contractors obtain ownership of any invention made in work with federal support. NIST has nothing to stand on, but they still must think that forcing bureaucratic control of federally supported inventions is a top-notch way to “unleash” innovation.

Let’s look at how NIST tries to rationalize what they have done.

First, keep firmly in mind that Bayh-Dole does not require any written agreements whatsoever between employers and employees. There’s no authorization in Bayh-Dole for federal agencies to require that employees who invent assign their patent rights to their employers or even to the federal government. When the Supreme Court looked at Bayh-Dole in 2011, it made clear that Bayh-Dole does not vest ownership of inventions with federal contractors and does not give contractors any special privilege to take ownership:

Only when an invention belongs to the contractor does the Bayh-Dole Act come into play. The Act’s disposition of rights—like much of the rest of the Bayh-Dole Act—serves to clarify the order of priority of rights between the Federal Government and a federal contractor in a federally funded invention that already belongs to the contractor. Nothing more.

Nothing in Bayh-Dole authorizes NIST to require that contractor require assignments of inventions. If NIST had the good sense to comply with the law, NIST would have to determine that there were extraordinary circumstances and create a patent rights clause that required contractors to require assignments from inventors to address those circumstances. But NIST has not done that. Continue reading

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NIST does not understand the government license in Bayh-Dole

NIST has issued a draft green paper that consolidates all the fake history, pseudo data as fact, misrepresentations of Bayh-Dole, and misconceived proposals all in one convenient place. I can’t hope to catch everything, but let’s take a look at one thing–the government license. NIST proposes to define that license–a nonsense move, and I will explain why.

NIST discusses what it calls a “government use license”:

The government use license refers to the “nonexclusive, nontransferable, irrevocable, paidup license to practice the invention or have the invention practiced throughout the world by or on behalf of the Government,” that applies to any federally funded invention

  • There is no such thing as a “government use” license.
  • The government’s license does not apply to any federally funded invention.
  • The entity benefiting is the “the United States” not “the Government.”

The term “government use license” does not appear in Bayh-Dole. Bayh-Dole specifies that the standard patent rights clause to be used in any federal funding agreement unless an exception applies or a statute overrides shall include a license to the government (35 USC 202(c):

Each funding agreement with a small business firm or nonprofit organization shall contain appropriate provisions to effectuate the following: . . .

(4) With respect to any invention in which the contractor  elects rights, the Federal agency shall have a nonexclusive, nontransferrable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any  subject invention throughout the world . . .

Nothing here about “government use.” Not even “Government.”  Continue reading

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NIST’s “substantially fueled” premise for unleashing innovation

Here is a claim from the opening of a recent NIST report–1234–on “Unleashing American Innovation,” a “draft green paper”:

The U.S. innovation system is substantially fueled by the discoveries and inventions arising from federally funded R&D at the Nation’s universities, research institutes, and Federal Laboratories.

What supports this claim? On the face of it, it cannot be true. “Substantially” is wrong. “fueled” is utterly ambiguous. And what constitutes a “U.S. innovation system”?

Consider: about 60% of university patents in the Bayh-Dole era don’t recite federal funding–that’s about 70,000 patents that don’t to the 50,000 that do. And while university patent counts are a direct measure of the extent to which research innovation has been blocked and delayed, I don’t expect that NIST is making the subtle argument that because federally funded inventions are blocked by university patents less extensively than are other inventions, that somehow they contribute more to the “U.S. innovation system.”

And university research itself is hardly the source of “substantially” all “innovation” in the United States. We import innovation—technology, research, products—from the rest of the world; our industrial research produces new technology; and innovation—technological and otherwise—also arises in non-research (and non-institutional) environments. Put it this way, in terms of patents–in 2017, the USPTO issued over 300,000 utility patents. Of these about 7,400 recited federal funding. Do some math. That’s about 2% of the total with federal funding. NIST starts its report with the silly claim that this 2% of inventive work somehow is the substantial “fueler” of the “U.S. innovation system.” It doesn’t add up.  Continue reading

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Nine Points to Consider (with regard to AUTM’s licensing survey), 8-9

We are considering nine points with regard to AUTM’s annual licensing survey. We have got through seven points–not validated and with estimates, duplicate reporting, conflating technology and invention, activity measures giving the illusion of a process at work, no reporting of federally funded outcomes, silent on Bayh-Dole specific objectives, misleading on the key questions. Now for two more points, both requiring a bit more discussion so you can see how clever AUTM has been in institutionalizing its practices as proxies for technology transfer and public benefit. Keep in mind that “technology transfer” originally meant the transfer of inventions from a university campus to Research Corporation or another external agent for management. That’s what a “technology transfer office” was designed to do. The idea that a research invention (or anything else) might be “transfered” to anyone else, or to industry, or to a venture speculator–that’s a later overlay–as is the idea that a university engages in patenting and licensing rather than identification, referral, and perhaps assignment.

That said, consider these two further points.

8. As a matter of public policy, AUTM’s focus on patents and licensing is misplaced. Well, yes it is a “licensing” survey–and one pretty much must have an ownership position in order to license–but that’s a big part of the problem. If one looks at AUTM’s survey, one would think that technology transfer means obtaining patents so that one may attempt to license for financial return. No doubt AUTM intends this thought, but licensing is only marginally related to technology transfer. The foundation of technology transfer is that others come to use what another knows how to use. That is, a technology is transfered when it is taught. If others independently learn how to practice the same technology, that’s not technology transfer–it’s independent discovery, or recognition, or development. Transfer matters, then, only in the case that someone cannot readily discover or create the same technology at need but must rather rely on being taught the technology. Otherwise, obviously, taking an ownership position is intended to prevent independent development–not to transfer the technology. You see? In any area in which any reasonable effort will produce the expected invention, ownership of a patent right defeats common development. Continue reading

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Nine Points to Consider (with regard to AUTM’s licensing survey), 1-7

The Association of University Technology Managers, a front group for university licensing professionals, conducts an annual survey of the universities that its members work for. The survey asks for various metrics regarding inventions, patenting, licensing, startups, and revenue. The survey is used by various organizations and science policy researchers as primary data for assessing the effectiveness of university “technology transfer” and the Bayh-Dole Act. The Government Accountability Office prepared a report in 1998 that considered AUTM’s survey. The GAO had this to say:

The AUTM survey is limited in its application to Bayh-Dole R&D because the survey covers the activities involving inventions by the universities from all funding sources—not just federal. Also, the AUTM survey is limited as an evaluation device in that (1) the data are based on a survey sent to the organizations, (2) not all organizations respond, (3) respondents report data according to their own fiscal year, and (4) no independent  verification or validation of the data is provided.

We may summarize: the AUTM data is not validated, not normalized for reporting period, not complete, and doesn’t break out federally funded inventions from others. Let’s add to the GAO’s observations with nine points to consider. Seven here, two more to follow in the next article.

1. The AUTM survey data are not validated. What the GAO observed. There’s no quality check or audit to verify that the data reported are accurate. For instance, for years the University of Washington faked its start-up metrics (vastly exaggerating the number of startups each year), reported the fake numbers to AUTM, and then cites AUTM as the source for its continuing claims to be a startup powerhouse, as if AUTM had conducted its own independent research on the matter. But no, AUTM merely feeds back what universities report to it, uncritically, merrily. Thus, for starters, AUTM’s survey is only a reliable as university officials in reporting the requested information. AUTM encourages estimates when a university doesn’t have the records. Here’s the instructions for the 2016 AUTM survey:

The information provided to AUTM then may be a “best estimate”–make of that what you will. Without some way of marking verifiable figures rather than estimates, one has to work with a default expectation that AUTM figures are administrator estimates, not facts–in which case, there isn’t even anything to audit. How does one validate an estimate?

2. Universities duplicate the reporting of inventions, patents, and startups. A number of inventions made at universities are actually co-invented by researchers working for different universities. Each university requires the disclosure of each invention, however, and adds that invention disclosure to its annual totals, which most universities then dutifully report to AUTM. You can see that as universities reports inventions, a number of inventions with co-inventors at different universities will be counted multiple times. For any given university, this is not much of a big deal–round up those half or third inventions to whole invention–but as soon as someone starts to add up the inventions across universities to get some grand total, things go bad. There’s nothing in the AUTM survey reporting to guard against this double and even triple reporting of inventions. The survey data reported might be helpful in assessing a given university’s activities in its fiscal year, but the data are not helpful in assessing anything on a regional or national scale.

This same problem comes up for patents (co-inventors) and startups (which may anticipate licenses from multiple universities and thus be claimed by each university as “its” startups). Maybe you don’t care–perhaps the inflation is only 10% or 15%. Falsus in uno, falsus in omnibus. AUTM makes no attempt to present accurately what is going on. Big numbers matter. Call it the blindness of confirmation bias. Call it political bluffery. But the result is numbers that aren’t reliable.  Continue reading

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Nine Points to Consider (with regard to Bayh-Dole)

No matter how one takes apart the assertions of the advocates for the Bayh-Dole Act, they just keep coming back, like some obsessive combatant out of Road Warrior. In the articles here at Research Enterprise, I have documented and reasoned and cited the evidence and the arguments that show that Bayh-Dole has been and continues to be a dismal failure. But things are beyond reason. Bayh-Dole represents a prophecy about good things to come, about potential, about bureaucrats trying so very hard, so earnestly, to make good things happen by owning research inventions, by attempting to license those inventions for commercial development. That prophecy has failed, but the adherents are deeply committed to the idea beyond all reason and double down. They can’t just walk away. This is not the Society for Putting Things on Top of Other Things, after all.

Without getting caught up in the details, let’s summarize.

1. Bayh-Dole is based on fake history. Universities were involved in technology transfer before Bayh-Dole. Bayh-Dole is premised on involving federally funded inventions in the same system of management that universities used for non-federally supported inventions. University licensing of inventions was not better than the federal government’s licensing, especially in biomedical matters.

The federal government did not own all inventions made with federal support prior to Bayh-Dole. Department of Defense contractors generally could own inventions made by their employees. The NIH and NSF operated Institutional Patent Agreement programs for nonprofits that required institutional ownership of inventions made with federal support when the nonprofit decided to file patent applications. Other federal agencies could allow contractors to own inventions on a contract-by-contract basis or on an invention-by-invention basis.

For universities, for biomedical inventions and basic science invention–Bayh-Dole represented no change in practice. At best there was a three-year lapse from the termination of the IPA program as ineffective and against public policy in 1978 to mid-1981 when Bayh-Dole came into effect. The 28,000 federal patents wasting away meme was just a political bluff by a federal attorney. But the fake history lives on, repeated as if Twilight were real.  Continue reading

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In re King, 1

President Truman’s Executive Order 10096  in 1950 established the rules under which the executive branch should claim rights to inventions made by federal employees. The implementing regulations for Executive Order 10096 give guidance with regard to the definition of “made.” Here’s 37 CFR 501.3(c):

The term made as used in this part in relation to any invention, means the conception or first actual reduction to practice of such  invention as stated in In re King, 3 USPQ2d (BNA) 1747 (Comm’r Pat. 1987).

This definition of made is also used by Bayh-Dole, but without any guidance. Let’s have a look, then, at In re King.

In re King involves a dispute over whether the federal government owed compensation to Eddie King, who had invented a new way to connect pallets used to load and off load cargo from aircraft. In 1969, Eddie King worked as a civilian forklift operator for the U.S. Air Force, saw there was a problem, and spent his own time to come up with a workable invention. The Air Force tested the pallet coupler and found that it worked better than anything else they had, and started using it. The case ends up in dispute and gets decided on appeal in 1987 by the Commissioner of Patents and Trademarks. The outcome of the appeal hinges on nuances having to do with “first actual reduction to practice.”  Continue reading

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On advocative fakery of Bayh-Dole

Advocates of Bayh-Dole tell a fake history. They say that before Bayh-Dole, the federal government owned all inventions made with federal support. They say that Bayh-Dole gave universities the right to take ownership of inventions made with federal support. They say that Bayh-Dole prompted university technology transfer. They say that university technology transfer has been wildly successful, and is successful because of Bayh-Dole. None of this is true. It’s made up. It’s political spin made to appear to be fact. Only fools reason from political spin as if it is fact. Advocates of Bayh-Dole apparently cannot help that there are so many fools around, and so exploit their advantage.

Advocates for Bayh-Dole have told this fake history so many times they believe it, and their professional reputations ride on that fake history being accepted as true. They need folks to play the fool. Don’t expect them to start retracting their assertions, their Congressional testimony, their articles, their AUTM workshops.

Before Bayh-Dole the federal government did not own all inventions made with federal support. The claim the government did own all such inventions is simply not true. The Department of Defense, for instance, was adamant that contractors should have the right to own inventions made in defense contracted research. The NIH and NSF IPA programs permitted–no, required–each participating nonprofit to take ownership of each invention made with federal support when the nonprofit decided to file a patent application on the invention. More generally, the Kennedy patent policy of 1963 made it express that federal agencies could allow contractors to own inventions made with federal support, even for research contracts that otherwise were required by federal statute to start with a claim of federal ownership. Agencies could allow such ownership upfront, contract by contract, or could allow such ownership after an invention had been made and reported, if doing so was in the public interest.

For nonprofits, then–especially those doing the bulk of federally sponsored research, and that from the NIH and NSF–the IPA program meant that the nonprofits, not the federal government, could step in and own any invention made with NIH or NSF funding whenever they wanted–or at least whenever they chose to file a patent application. The IPA program ran from the early 1950s to 1978, when it was shut down for good as ineffective. At best, there was a two-year gap between the end of the IPA program and Bayh-Dole. Even so, the implementing procedures for the Nixon revision of the Kennedy executive branch patent policy for those two years still allowed federal agencies to allow contractors to own, contract by contract or invention by invention. If a federal agency chose not to do so, it was because the agency determined it was not in the public interest not to permit contractor ownership, not because some statute or executive branch policy required federal ownership. Continue reading

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Nixon’s Need and Encouragement

In a series of articles we have dealt with the monopoly meme. The monopoly meme argues that the true purpose of patents is the corporate right to exclude all others from practicing an invention. Without this right of exclusion, so the meme goes, no one will use any invention and no one will develop the invention and therefore the public will not benefit from the invention. “What is available to all will be developed by none.”

The monopoly meme generally dismisses the role and rights of inventors in the use of the patent system. What matters is that a single company–one that’s wealthy or that can attract investors–gains exclusive control over an invention and “develops” it for commercial advantage. Without the “incentive” of exclusive control, neither companies nor investors will be motivated to “take the risk” to develop any invention, and without companies and investors, the public then will not have the benefit of any invention, let alone inventions made with federal funding, and that federal funding then will be wasted.

Here’s President Nixon’s version of the monopoly meme, from a March 16, 1972 explanation for changes in the Kennedy patent policy:

One important barrier to the private development and commercial application of Government-sponsored technologies is the lack of incentive which results from the fact that such technologies are generally available to all competitors. To help remedy this situation, I approved last August a change in the Government patent policy which liberalized the private use of Government-owned patents. I directed that such patents may be made available to private firms through exclusive licenses where needed to encourage commercial application.

Continue reading

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15 USC 2218(d)

[updated to make clear 15 USC 2218(d) is specific to fire prevention and control legislation]

A federal statute passed in 1974 establishes a federal policy with regard to inventions made with federal support–15 USC 2218(d), part of a fire safety law. Folks wrapped up with Bayh-Dole don’t often mention 15 USC  2218, which establishes the authority of the administrators of federal agencies to enter into contracts for research and to perform other administrative functions. Among these, 15 USC 2218(d) addresses federal claims to inventions and discoveries made in research supported under the law:

(d) Inventions and discoveries

All property rights with respect to inventions and discoveries, which are made in the course of or under contract with any government agency  pursuant to this chapter, shall be subject to the basic policies set forth in the President’s Statement of Government Patent Policy issued August 23, 1971, or such revisions of that statement of the policy as may subsequently be promulgated and published in the Federal Register.

The Nixon patent policy revised the Kennedy patent policy of 1963 and required a codification of the policy in the Federal Procurement Regulations, which was finalized in 1975. The codification featured standard patent rights clauses to be used in all federal research and development contracting unless a federal agency could justify an exception that better served the public interest.

Thus, by 1975 federal policy had a uniform executive patent policy that was expressly endorsed by Congress, backed by a thorough codification of the policy that included patent rights clauses to be used by all federal agencies and provided for contractors who met certain conditions to own inventions arising in federally supported research or development.

Continue reading

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