Best practices in university invention management, 3

Posted on June 6, 2018 by Gerald Barnett

We are working through ipHandbook’s discussion of best practices in university ownership of inventions. After a clear discussion of invention ownership–inventors own their inventions unless they have agreed to assign them or it is equitable to find that circumstances imply they agreed to assign (such as if they are hired to invent).

Here’s the fantasy university patent policy used in a series of examples created to illustrate the problems with university policy, invention assignment agreements, and those pesky things call circumstances (my emphasis):

It is the policy of the university that individuals, through their employment by university, or by participating in a sponsored research project, or using university-administered funds or facilities, thereby accept the principles of ownership of technology as stated in this policy. In furthering such undertaking, all participants will sign invention assignment agreements …

In typically sneaky fashion, this fantasy patent policy attempts to construct an implied contract between “individuals” and the university. If you use university resources, say, our policy asserts that you agree to our “principles of ownership.” The policy cannot even state directly the ownership claim and the basis for the claim–it just asserts “principles” apply. But as we will see, the fantasy policy does not even set out principles.

Why such subterfuge? Universities generally assert that their policies apply to everyone at the university, and university employment offers routinely make the offer conditioned on acceptance of university policy. Patent policy, however, routinely asserts that the policy is a condition of employment, as if the other parts of university policy aren’t. And there’s more. A university patent policy that requires assignment is not directed just to employment: it demands that employees give up ownership of personal property–and inventions are personal property. But no, a university patent policy typically also demands that non-employees give up ownership of personal property. And for faculty, it demands that they give up ownership of personal property even when the university does not act as their employer–such as any inventions “related” to their field of expertise–not even to their personal expertise. What could possibly be equitable about such a demand? Right! Nothing.

The only way such a policy looks even remotely proper is if it is represented as required by law–Bayh-Dole (utter nonsense), say, or state conflict of interest law (for public universities–more utter nonsense). “You have to give up ownership of your inventions or you break the law.” Once the policy is in place–this is the clever part–the rationale for the policy can be dropped. The policy now dangles free from any need for justification. It just is. “You have to give up ownership of your inventions or you violate policy.” And if you violate policy, university officials have the freedom, apparently, to threaten you, ruin your reputation, fire you, sue you.

So why should the patent policy condition its application only on employment, participation in sponsored research, or use of resources? And if the policy already cites employment, then what is added by participating in sponsored research? Ah, someone might not be employed who participates in sponsored research. But “participate” is broad–it doesn’t mean only that someone has been hired to conduct sponsored research (“employed,” “hired to invent”). One could have a chat at a conference about someone’s research project and that chat might be construed as “participating” in the research. Just saying. Continue reading →

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Best practices in university invention management, 2

Posted on June 5, 2018 by Gerald Barnett

We are working through an article in the ipHandbook that argues for “best practices” in university ownership of inventions.  The article spends little time discussing how faculty are employed in their research work, nor the other requirements of university policy that shape faculty rights with regard to research and inventions. The focus of the article quickly narrows to how a university can disrupt the basic default of patent law–that inventors own their inventions. This is the implied best practice. University administrators must find ways to prevent faculty inventors from owning their inventions. The best way, so the article goes, is to have a written invention assignment agreement (IAA) with each university employee. That’s best practice; that should do it. Let’s see.

The author of the article, B. Jean Weidemeier, having laid out in clear terms the conditions that apply to employer-employee relationships, sets out eight examples in which university-based faculty and student inventors with varying degrees of selfishness and ineptness.

The unreasonable inventor. Gets a three-year federal grant, invents, refuses to assign to the university. Depicted as signing a “clear, unambiguous” invention assignment agreement (ha!–we will deal with that later) with the university and as “signing” the federal grant. Most universities don’t have a start-day invention assignment agreement. University of California does, but it is not “clear, unambiguous.”

Nothing about the university complying with the written agreement requirement in the patent rights clause that very well could knock out the university’s invention assignment agreement. May not be unreasonable at all for her not to assign to the university. 37 CFR 401.9 controls.

Continue reading →

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Best practices in university invention management, 1

Posted on June 4, 2018 by Gerald Barnett

Things get complicated that don’t have to be complicated when it comes to university ownership of inventions. Administrators make things complicated, then argue for lots of money to pay for the talent to navigate those complications, and then more money for lawyers to try to make the complications stand up. In this, folks offer advice about “best practices” to navigate the ugly situation administrators have created for themselves. It’s all a crock, really.

Take a look, for instance, at this entry by B. Jean Weidemier in the “ipHandbook of Best Practices.” The article dates in its revised ipHandbook form from 2007–before Stanford v Roche (2011). So we have to cut it at least a bit of slack for any misrepresentation of Bayh-Dole–but the article does so much more. In fact, one might see in this article the reasoning why so many university patent administrators misunderstand Bayh-Dole and went over the cliff of Stanford v Roche.

The ipHandbook of Best Practices asserts”best practices.” By doing so its title makes a rhetorical claim that we will consider from time to time.  Weidemier’s article in the ipHandbook is titled “Ownership of University Inventions: Practical Considerations.” The implication is that this article also recites best practices. Let’s have a look.

We might note the fundamental ambiguity of what constitutes a “university” invention. Is it an invention that a university claims, as in university’s invention? Or is just an invention made at a university? Or made by someone who is affiliated with a university? The implication of the article will be that all university inventions are university inventions, or could be if administrators used best practices to “protect” their university.

There are other ways of looking at the situation. Consider–what is the purpose of a best practice regarding invention ownership? Is it how to wrest an invention from its inventors? Or is best practice something else–especially for a university–such as how to help an inventor position an invention to provide a benefit to others? And if so, might not that help include *not asserting an ownership position* in an invention. Yes, of course it might. Hold that thought. Continue reading →

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Bayh-Dole? Nope.

Posted on June 1, 2018 by Gerald Barnett

A bill that drastically changed the United States patent system made it through the legislature without substantial debate.

Bayh-Dole? Nope. But sure sounds familiar.

House Bill 3610 passed during an all-night session of the House without even a committee hearing. When sent to the Senate, it was linked to House Bill 4278 as a conference report, which obligated the Senate to vote on these bills without amendments. The Senate passed this bill package on September 30, 1996, and the President signed it that evening.

This is the legislation that created a limitation on infringement liability for the practice of medical methods–35 USC 287(c). See Leisa Peschel, “Revisiting the Compromise of 35 U.S.C. § 287(C).”

Thus, a bill that had repeatedly failed to pass both the House and Senate made it to the President’s desk without much discussion.

Same as Bayh-Dole. What a kick.

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Unleashing American Innovation

Posted on May 30, 2018 by Gerald Barnett

NIST convened a symposium in April 2018 titled “Unleashing American Innovation”:

On April 19, 2018, thought leaders from across government, industry and academia gathered in Washington, D.C., to discuss how we can work together to address systemic barriers to catalyze the full potential of American innovation. The United States invests about $150 billion each year on federal R&D, but are the American taxpayers reaping the full benefit of that investment?

The premise of the symposium, then, was that things are not working all that great–there apparently are “systemic barriers” and that somehow we have failed to “catalyze the full potential” of “innovation.” Somehow, American innovation still needs to be “unleashed.” We have questions, then, about what the leash is made of, how it has been attached to the collar of American innovation, who has done the attaching, and who now will do the unleashing.

If the NIST language used wasn’t so full of bombast, one might think there was a serious problem. As it is, we find a serious problem couched in the bureaucratic language of self-congratulation: “We are doing tremendous work, so proud of it all, and on the chance we can do even better, let’s assemble ourselves for a big group pat on the back.”

Here’s a second paragraph like unto the first, so you can see the rhetoric in action:

The Unleashing American Innovation Symposium was about highlighting the nation’s journey to a new level of innovation performance.

We are already at a level of innovation performance, and we seek a “new level” of that “performance” worthy of “highlighting.” No blame here. No one will be called out. Everyone gets a trophy. T-ball for technology. Continue reading →

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The NIH’s View of Bayh-Dole Compliance, 8

Posted on May 29, 2018 by Gerald Barnett

We are working through the NIH’s policy manual on Bayh-Dole. We reach a helpful list.

Some of the steps required by the regulation to retain intellectual property rights to subject inventions include:

  • Report all subject inventions to NIH.
  • Make efforts to commercialize the subject invention through patent or licensing.
  • Formally acknowledge the Federal government’s support in all patents that arise from the subject invention.
  • Formally grant the Federal government a limited use license to the subject invention.

This is garble, confusing election to retain title with conditions under which a federal agency may request title with requirements for which there is no title implication. And the NIH conflates invention rights–that is, right to use the patent system to promote use of inventions–with “intellectual property” generally. Simply wrong. Garble.

Report. The federal government may request title if a contractor fails to disclose a subject invention. “Report” is lazy. One may report without disclosing. Further, the condition is not that one may lose title to all subject inventions by failing to report any one of them. It is that one might lose title to each subject invention that one fails to disclose. Of course, if one also blows the patent rights to that subject invention by failing to disclose it for more than a year after a patenting bar date (such as public disclosure or offering for sale), then big whoop–there’s no title for the NIH to request.

The problem with the disclosure of subject inventions is that it may be difficult to determine whether an invention is within scope of the standard patent rights clause or not. This isn’t the place for a bunch of details–just keep in mind that proper disclosure is not so simple as one might think. Continue reading →

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The NIH’s View of Bayh-Dole Compliance, 7

Posted on May 28, 2018 by Gerald Barnett

We have come full circle through NIH’s garbled version of Bayh-Dole, having been referred by the NIH’s SBIR guidance back to the NIH’s policy manual regarblization of Bayh-Dole in section 8.2.4.

Section 8.2 has a bunch of data and research tool and organism sharing guidelines and says this about inventions:

8.2.4 Inventions and Patents

The Bayh-Dole Act of 1980 (Public Law 96-517; 35 U.S.C. 200-212) and the related EO 12591 (April 10, 1987) provide incentives for the practical application of research supported through Federal funding agreements.

Citations are real. The incentives are fake. Nothing in Bayh-Dole speaks of incentives. Bayh-Dole applies to federal agencies and requires them to use a default patent rights clause that preempts other federal law that might require the agency to take ownership of inventions made in work with federal support that a contractor has come to own. No incentives. Rather, restrictions on federal agencies. In this, perhaps, a restriction on federal agencies to act in the public interest. Private ownership of inventions with public strings attached is arbitrarily announced to be in the public interest, wherever someone private can obtain that ownership. Think about it: the NIH is teaching people that they should make every attempt to obtain ownership of federally supported inventions so that the NIH will not have to consider the public interest in its management of those inventions. How very odd.

We might restate Bayh-Dole’s basic policy this way: if the patent system is to be used, it must be used to promote the utilization of inventions arising in federally supported research or development. That is, practical application of the invention–the invention is used so that benefits are available to the public on reasonable terms. And that the patent system is used to promote free competition and enterprise, not to suppress such competition and enterprise. If you figure out what’s left of the patent system, then you have a grasp of Bayh-Dole’s policy for inventions in federally supported work that a contractor has come to own–subject inventions. Continue reading →

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The NIH’s View of Bayh-Dole Compliance, 6

Posted on May 25, 2018 by Gerald Barnett

Research Enterprise has been examining the NIH’s representation of Bayh-Dole. So far we have seen that the NIH persists in citing a 1995 document that gives “guidance” that the Supreme Court in Stanford v Roche (2011) rejected. But the NIH hasn’t bothered to take down the document or revise it, or change any copy on the web that relies on it. We have also seen that the NIH apparently doesn’t understand much of anything about how Bayh-Dole operates in its substantive provisions. Most everything that matters, apparently, has to do with the finer points of paperwork compliance. Let’s drive that point home by looking at some NIH guidance for reporting, “Patents Part Two: A Closer Look at Reporting.”

The guidance here takes the form of general advice about managing inventions for patenting.

Here we cover types of patent applications, invention reporting requirements, and compliance advice. But first, a word to the wise.

And the word to the wise?

Patent Before Public Disclosure

When it comes to your invention, you should be thinking “first comes patent, then comes public disclosure.”

In other words, before publicly disclosing any details of your invention, such as in a publication, apply for a patent.

This is strange advice. First, in the US there’s a one-year grace period for publication before filing a patent application. Thus, the NIH apparently argues that obtaining the right to exclude others from practicing an invention in foreign countries is more important than announcing research results for others to use. Don’t even go to the problem of the added cost of going after foreign rights up front. One patent attorney I worked with for a long time once said (I paraphrase), “I’ve never seen a university foreign patent amount to anything.” The word to the “wise” then is to be sure to get those useless foreign patent rights before anything else.  Continue reading →

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The NIH’s View of Bayh-Dole Compliance, 5

Posted on May 24, 2018 by Gerald Barnett

We are working NIH’s not so tasty guidance to participants in its SBIR and STTR programs directed at small businesses. We reach the NIH’s account of the “principal features” of Bayh-Dole, at least with regard to “intellectual property” requirements:

Principal Features of the Bayh-Dole Act

Organizations are required to establish a written agreement with all employees to disclose promptly each subject invention made under a federally sponsored program and to execute all papers necessary to file patent applications.

And here’s the first principal feature–of all things–the written agreement requirement. Well, the written agreement requirement is not in the Bayh-Dole Act. It’s not even in the implementing regulations. It shows up in the standard patent rights clause. There’s some logic to why it is there–we have just been through all that–but the written agreement is most certainly not in the Bayh-Dole Act.

Just to be clear: the principal feature of the Bayh-Dole Act is that federal agencies are limited in the conditions under which they can require a contractor to assign to the federal government an invention made with federal support if a contractor has otherwise acquired ownership of that invention. That’s the essence of 35 USC 202(a).

Bayh-Dole

  • pre-empts other laws, but only when the contractor owns;
  • provides protocols for federal agencies to vary from the restrictions;
  • provides default requirements for contractors to retain ownership of inventions;
  • provides requirements for contractors to use inventions for public benefit on reasonable terms, mostly waivable by federal agencies.

The upshot is that Bayh-Dole creates a pipeline of patent monopoly rights in federally supported research to private companies, in secrecy, without public accountability, and with no enforcement of the public protection requirements in the default patent rights clause. Continue reading →

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The NIH’s View of Bayh-Dole Compliance, 4

Posted on May 23, 2018 by Gerald Barnett

Here’s the NIH offering an overview of Bayh-Dole for its SBIR and STTR programs. Much of the “information” here appears to be drawn from an NIH Q&A document from 1995. That document, “A ’20-20′ View of Invention Reporting to the National Institutes of Health,” presents a view of Bayh-Dole that the Supreme Court rejected in Stanford v Roche (in 2011). After Stanford v Roche, the NIH should have reviewed all its published guidance on Bayh-Dole and removed or corrected all statements that ran against the Supreme Court interpretation of the law. But no. Just like other agencies–most especially NIST–the NIH ignores Stanford v Roche and goes its merry way on Bayh-Dole.

I groused about NIH’s 20-20 document five years ago here at Research Enterprise. And five years before that. But let’s look at it afresh, since it’s been nearly a decade, filtered through NIH guidance for small businesses with regard to Bayh-Dole.

Bayh-Dole Act Background

The Bayh–Dole Act is US legislation dealing with intellectual property arising from federally funded research.

Nope, just patent rights and PVPA. Bayh-Dole is part of federal patent law. Furthermore, on its federal contracting side, Bayh-Dole deals only with those patentable inventions that a contractor owns.

This Act encourages researchers to patent and market their inventions by guaranteeing patent rights.

Nonsense. Nothing in Bayh-Dole encourages researchers to patent and market their inventions. The patent system, if it is used, is to be used to promote utilization of inventions. That must be too hard to think about. To require inventions to be used is to impose a working requirement. We might say then that Bayh-Dole introduces into  federal patent law a working requirement for inventions made with federal support that are acquired by a contractor. Continue reading →

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