Thanksgiving 2018

Posted on November 22, 2018 by Gerald Barnett

It’s Thanksgiving here in the United States.

It’s a good time to give thanks to (and for!) all the people who come up with things new and intriguing–whether by accident or design, whether directed or random, whether paid or free, whether looking to make a mint or happy with the pleasure of finding things out.

And it’s a good time, too, to give thanks to (and for!) all the people who are willing to work with and for and on behalf of people and their new and interesting things to improve things in this mysterious and strangely ever-giving world of ours.

Introducing new things into established orders turns out to be not all that easy. Established orders have their own rationales for why they are what they are, and have their own plans for how they will change. New things coming in from outside, or leaving from the inside, don’t set so well.

We should give thanks, too, to all the smugglers and enablers and facilitators and defectors and cheaters and those that look the other way and those that choose not to comply or force compliance, and even those that repeat unfounded myths about innovation and federal law and policy, and those who by their own accidents of administration set the stage for others to mess with established orders.

It’s a big wide weird world. Stuff gets done anyway, despite the urge to own and manage, despite mania for process and procedures, despite ideology and despite anarchy, despite IP and despite open, despite selfishness and despite altruism. It seems that we humans have been on a hunt for new tools since before we were fully conscious of our hunt.

So, thanks for the desire to hunt, to be gruntled, to be enough curious and desirous and optimistic that we keep pushing our imaginations, our ability to observe, our making records of what we observe, and reasoning, stumbling, fighting, and cooperating our way to new things drawn from the apparently endless frontier of what the world must be, despite whatever appearances it may have at first and later habitual glance.

 

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“Government” rights in federally supported inventions, 2

Posted on November 21, 2018 by Gerald Barnett

We might ask, then, what happens if a contractor does not acquire ownership of an invention made in the performance of work under a federal funding agreement. The answer is that the Nixon patent policy as revised remains in effect, and even though the Federal Procurement Regulations no longer exist to codify the Nixon patent policy, and even though the replacement Federal Acquisition Regulations are based on Bayh-Dole’s standard patent rights clause, the Nixon patent policy, now without the bother of codification, applies.

The Nixon patent policy sets out conditions under which the federal government should acquire rights (Section 1(a)):

Where . . . [four conditions] . . . the Government shall normally acquire or reserve the right to acquire the principal or exclusive rights throughout the world in and to any inventions made in the course of or under the contract.

Notice that the general requirement for government acquisition has nothing to do with whether a contractor owns an invention–just that the invention was made “in the course of or under the contract.” Even though the codification of the Nixon policy includes a definition of “subject invention” that is one “of the contractor,” the codification’s standard patent rights clause also requires contractors to have patent agreements to “effectuate” the delivery of invention ownership to the government. If the government has the right to receive title, then that title comes through the contractor via the required patent agreement, and so the contractor will own all such inventions, and they will be subject inventions. Bayh-Dole forgets all this and doesn’t require any such patent agreements and furthermore does not stipulate that a federal agency should have any expectation of ownership except in the failure of a contractor, having acquired an invention, to disclose it or file a patent application and follow through on that application. So there’s no standing requirement for government ownership in Bayh-Dole because Bayh-Dole preempts all such claims when a contractor acquires ownership of an invention made under federal contract.

Continue reading →

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“Government” rights in federally supported inventions, 1

Posted on November 20, 2018 by Gerald Barnett

Bayh-Dole requires federal agencies to use a patent rights clause that includes a provision under which contractors who obtain ownership of a patentable invention made in the performance of work under a federal funding agreement and elect to retain that title must grant to the government a license. The wording matters. Here’s 35 USC 202(c)(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 . . . .

The requirement states a licensee (the federal agency that made the contract) and a scope (to practice and have practiced for or on behalf of the United States . . . throughout the world). Bayh-Dole does not define “United States” and so one might think “United States” is just a handy synonym for the federal government. But no.

In the Kennedy and Nixon patent policies, the grant of license is to the “Government” and Government is defined to be the federal government, state governments, and domestic municipal governments. Here’s the old Federal Procurement Regulations (1975) restatement of the Nixon (1971) patent policy: Continue reading →

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Does Bayh-Dole Require a Written Assignment?

Posted on November 19, 2018 by Gerald Barnett

Does Bayh-Dole require a written assignment?

No. But Bayh-Dole is screwy. I’ll elaborate.

Look all you want, there’s no assignment requirement in Bayh-Dole. Heck, the Supreme Court looked for an assignment requirement and couldn’t find it. Here’s how the majority opinion in Stanford v Roche put it:

Nowhere in the Act is title expressly vested in contractors or anyone else; nowhere in the Act are inventors expressly deprived of their interest in federally funded inventions. Instead, the Act provides that contractors may “elect to retain title to any subject invention.” 35 U. S. C. §202(a).

. . .

The Bayh-Dole Act does not confer title to federally funded inventions on contractors or authorize contractors to unilaterally take title to those inventions; it simply assures contractors that they may keep title to whatever it is they already have. 

. . .

But because the Bayh-Dole Act, including §210(a), applies only to “subject inventions”—“inventions of the contractor”—it does not displace an inventor’s antecedent title to his invention. 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.

There is no authority in Bayh-Dole for inventors to be forced to give up ownership of their inventions–not to contractors and not to the federal government. Furthermore, Bayh-Dole expressly preempts all other statutes (but for Stevenson-Wydler and any future law that references Bayh-Dole), so there’s nothing outside of Bayh-Dole that a federal agency can rely upon to insist that inventors give up their rights in federally supported inventions. (Well, there is 15 USC 2218(d)–but that’s a long story for tomorrow.) Continue reading →

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University policy beyond higher purposes and loopholes

Posted on November 17, 2018 by Gerald Barnett

The University of California Standards of Ethical Conduct (Regents Policy 1111) states that individuals must set aside their own ethical judgment and comply with institutional policy, conform to institutional roles:

Each situation needs to be examined in accordance with the Standards of Ethical Conduct. No unlawful practice or a practice at odds with these standards can be justified on the basis of customary practice, expediency, or achieving a “higher” purpose.

Each member is expected to seek clarification on a policy or other University directive he or she finds to be unclear, outdated, or at odds with University objectives. It is not acceptable to ignore or disobey policies if one is not in agreement with them, or to avoid compliance by deliberately seeking loopholes.

The university’s statement of ethics announces that it is beyond the control of the individual. No individual may conceive of a motive beyond compliance with the organizational demand. “Higher” purposes are unethical purposes. Even seeking to avoid compliance by “seeking loopholes” is unethical. Individuals must “seek clarification” from university officials on any organizational demand that is otherwise stupid. Individuals authorized to speak for the otherwise mute and fictional person of the university decide what words will control individual practices. Individuals cannot be trusted to use their own judgment.

A university policy of commercialization through monopoly exploitation of patents is placed beyond the control of the individual inventor and even beyond the control of the individual university patent licensing officer. It is declared as a matter of institutional policy that to seek “loopholes” around “commercialization” is unethical.

For inventions taken broadly we must then add to university claims of ownership interest and financial interest a claim that the university protects its personnel from their own necessarily unethical behavior–behavior that’s unethical because it does not comply.

To ask what patent policy should control federal research contracting or should control university claims on inventions already presumes that the purpose to be achieved is the control of individuals by organizations. The policy that comes to mind, then, is reflexive policy: policy that restricts the organizational imposition of policy. You know, taking seriously Vannevar Bush’s idea from Science the Endless Frontier of the “free play of free intellects.”

Reflexive policy is the one form of policy that organizational thinking cannot tolerate. In institutional speak, ethics means compliance with institutional policy not commitment to a common standard of virtue or integrity or character. Emotivism holds there is no such standard and diversity argues that such a standard is not even desirable. Yet institutions insist on imposing their own arbitrary standards in the form of policy statements.

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Why do we have Norman Latker’s fantasy rather than Vannevar Bush’s fantasy?

Posted on November 16, 2018 by Gerald Barnett

There’s a number of people out blaming Bayh-Dole for high drug prices. There’s plenty to blame Bayh-Dole for–it’s an ugly law with a dismal track record. And there are ways that Bayh-Dole can be implicated in high drug prices, but not anything like what’s being written. In short, blaming Bayh-Dole for high drug prices isn’t all that close to the truth–and does a good job of hiding the truth.

Before Bayh-Dole, the NIH and NSF ran the Institutional Patent Agreement program, which required nonprofits to take ownership of inventions made under contract that the nonprofits chose to patent. The implementing regulations for Nixon’s executive branch patent policy–codified in the Federal Procurement Regulations–required all contractors to have patent agreements with employees to “effectuate” the requirements of the patent rights clauses–and since those clauses generally required contractors to assign inventions made under contract to the federal government unless there was an exception in place, those patent agreements necessarily had to require inventors to promise to assign their inventions to their contractor-employer or to the federal government as directed by their contractor-employer.

The decisions, then, not only about patenting but also about how any given patent might be deployed, were not in the regulations but rather were with the owners of the patents–with contractors and federal agencies. Continue reading →

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UW Continues to Ride Fake Startup Metrics

Posted on November 15, 2018 by Gerald Barnett

From 2008 to 2015, the University of Washington faked its startup metrics and won itself awards and reputation for its entrepreneurial and innovative chops. (See articles discussing UW fakery here and here and here.) Senior UW administrators concocted a story about startups and repeated it regularly, expressly endorsed by the university’s president. Even with changes in the UW president and licensing office, the new officials happily adopted those same faked metrics and made them their own.

Here we are in 2018, and the university continues to promote itself based on its fake metrics. Here’s a current “CoMotion” banner ad that shows up at the bottom of many of its web pages:

[Update–UW is still at it. Here’s the current banner footer, July 2020:

[Update–UW is still at it. Here is the current banner footer, April 2023:

Startups must have faded, so UW has switched to counting licenses granted, sort of like Spinal Tap being rated the loudest rock band, going to 11 and all.]

Notice that they cite startups from 2017, and the Milkin report is still the 2017 one, although it is, um, let me see, midway through 2020. It’s not that they are even trying to be accurate. The Milkin survey–as pointed out below–is still laughable. The primary measure of “innovation” is how many academic papers from a given university get cited in patents–but patents cite literature to demonstrate that the claimed invention *is not that* and *is not obvious given that*. Just the opposite of what the doofs at Milkin have it. Other measures figure, as well–mostly, apparently, to show off the Reuters patent database as a marketing thing. Other than UW’s *volume* of publications, grant income, and non-selective patenting, it would appear that university #6, University of North Carolina, is more effective at technology transfer. But ranking institutions for “innovation” is a nonsense game, played by folks who delight in the rhetoric of nonsense. “Innovation” is not to be conflated with patents (they could block and delay), licensing (just deepens blocking and delaying), income (could be from speculative trading on things never brought to market or price gouging on things that are), or fake, bureaucrat-enabled bean-counted startups (enough said).]

Let’s consider the university’s claims. Let’s start with number of startups launched. CoMotion cites its source as the Association of University Technology Managers (AUTM). Each year AUTM conducts a licensing survey. Not all universities participate–including some with major research programs. The thing about AUTM’s survey, however, is that it merely reports what participating universities report to AUTM. For years, UW faked its startup metrics and reported more than double the actual number of startups that met AUTM’s criteria for a reportable startup–essentially a company formed for the express intent to license an invention from a university, whether or not the company has finalized that license in the reporting period for the AUTM survey. Continue reading →

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28,000 federal patents and the monopoly meme went into a bar, 4

Posted on November 14, 2018 by Gerald Barnett

In 1980, in introducing S. 414, Senator Dole repeats the 28,000 patents meme:

Now, however, it’s 5 percent, not 4 percent, and it’s not inventions licensed but rather inventions used. It’s a wonderful bit of bluffery. There’s nothing in Forman’s 1976 testimony that would support the claim that the government knew how many inventions covered by its patents were actually being used. At best we know that most of those patented inventions were defense-related, and the defense contractors had declined to own the inventions and patent them. There’s nothing to indicate that the lack of a monopoly position had anything to do with whether any given patented invention owned by the federal government would be used or not, licensed or not, developed or not. Dole here is just bluffing.

Dole continues, conflating federal procurement, basic research to open scientific frontiers, and an “investment” that is supposed to produce new products:

In these two sentences, Senator Dole repudiates the last vestiges of Vannever Bush’s Science the Endless Frontier, the report that provided the impetus for ramping up federal research spending for university-hosted scientific research. Bush had argued that the federal government had a legitimate interest in opening up new areas for public use by funding exploration, and science was no different. For Bush, the “free play of free intellects” at universities was the best way to open up new scientific frontiers, and Bush distinguished this research from that of government laboratories–directed at government agency missions–and industrial laboratories–directed at the production of technology in support of products. Continue reading →

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Bayh-Dole’s “subject invention” botch of the Federal Procurement Regulations, 3

Posted on November 13, 2018 by Gerald Barnett

A careful read of Bayh-Dole and its omission of the patent agreement requirement argues not only did Bayh-Dole reverse the “presumption” of federal ownership of inventions made under contract but also repudiated the federal requirement that contractors own inventions so these inventions could be delivered to the federal government. If inventions do not have to be delivered to the federal government by default, then there is no statutory reason why contractors should own, so long as the federal government received a non-exclusive license if anyone involved ever did obtain a patent.

Bayh-Dole does not require university administrators to crush academic freedom. Indeed, the way Bayh-Dole is drafted, it leaves universities free to be as open and ungrasping as they choose to be, even as small companies might adopt conventional industry-style patent agreements suitable for employees assigned to invent or experiment. Similarly, the implementing regulations for Bayh-Dole produce four distinct standard patent rights clauses–now conflated into two clauses–at 37 CFR 401.14 (for companies, for nonprofits, and for nuclear weapons and propulsion research) and 37 CFR 401.9 (for inventors, to be treated as small business contractors, but with fewer requirements than other small businesses). Notably, the inventor patent rights clause does not require inventors to file patent applications. Federal patent law does not require inventors to use the patent system. Perhaps that’s why Bayh-Dole, as part of federal patent law, also does not require inventors to use the patent system.

For universities, this is a tough nut–though clever university attorneys have persuaded courts using the argument that if a requirement to assign inventions is in the university handbook, then faculty have agreed to it. They then point out their claim on inventions in patent policy and ignore elsewhere in the policy or handbook the more fundamental assurance to faculty of their  freedom of research and freedom of publication. If university attorneys were honest folk rather than (with all due respect) the mostly inapt mercenaries that they are, we would have a chance to have a decent national practice involving inventions made by people at universities. But not the way things are now. Now things are run by clowns misrepresenting Bayh-Dole, a federal law drafted by clowns. Continue reading →

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Bayh-Dole’s “subject invention” botch of the Federal Procurement Regulations, 2

Posted on November 12, 2018 by Gerald Barnett

We are looking at how Bayh-Dole botches invention ownership. Where the Federal Procurement Regulations implemented in 1975 were clear, Bayh-Dole in 1980 is muddy. The FPR approach is simple: contractors must have patent agreements that ensure that contractors will be able to assign inventions made under contract to the federal government unless the federal government allows a contractor to retain ownership. Thus, in the FPR every invention made under a federal contract will be a “subject invention”–an invention “of the contractor” because the contractor, as a requirement of the patent rights clause prescribed by the Federal Procurement Regulation, the contractor must have an equitable interest in every such invention.

Bayh-Dole fails to do this. Bayh-Dole does not require contractors to have patent agreements. Thus, while the Federal Procurement Regulations create a mechanism by which all inventions made under contract become inventions “of the contractor,” Bayh-Dole applies only after a contractor acquires–if ever– an invention made under contract. Further, the Supreme Court made clear in Stanford v Roche that Bayh-Dole has no mechanism to vest title of inventions made under contract with the contractor, nor to otherwise create a mandate for contractors to acquire title to such inventions. Law professors are led to crazy propositions such as that somehow a report from 1947 led federal policy makers–patent attorneys, in this case–to assume–mistakenly–that everyone got patent agreements so they could just drop what they had drafted five years before about requiring contractors to have patent agreements.

No, instead it was a botch job in drafting–like much of Bayh-Dole. Or was it? Perhaps the move from a federal procurement regulation under the control of the executive branch to an amendment of federal patent law under the direction of Congress fundamentally altered what a patent rights clause could require by way of contractor rather than inventor ownership. Or perhaps in the wrangling that produced Bayh-Dole and its standard patent rights clause, people decided to create a pathway by which inventors rather than organizations had the freedom to decide what to do with their inventors. But university patent administrators have insisted since Bayh-Dole was passed that the law intended universities to own all inventions arising from federally supported research, even though the law has nothing of the sort–nor does its standard patent rights clause. Continue reading →

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