The Rat in Bayh-Dole’s Rotten Pickle Barrel: 35 USC 202(c)(5)

Posted on December 6, 2017 by Gerald Barnett

Most of the Bayh-Dole pundits out there in the university patent and license world have never understood Bayh-Dole. I’m not sure all that many have read the statute. Certainly if they did so, they read without comprehension. Take this recent article on Bayh-Dole copyrights. Pure incompetence–but also designed to mislead, to make it appear that federal law gives universities a mandate to take ownership of everything created by their faculty, in defiance of that “free play of free intellects” that Vannevar Bush so highly regarded, and in defiance of what used to be important ideas, such as freedom to publish. And not to mention the idea baked in to federal patent law that inventors own their inventions and employment alone does not give an employer any equitable right to an employee’s invention.

Bayh-Dole is a law that doesn’t get read. Instead, people rely on pundits who have set up shop with a faux version of the law. They claim that Bayh-Dole gives invention rights to universities (despite the Supreme Court ruling not); they claim that Bayh-Dole requires commercialization (no, the standard is practical application); they claim that Bayh-Dole applies to universities (bah–the law is directed at federal agencies); they claim that universities must create new IP policies to comply with Bayh-Dole (there is no requirement that a university even have an IP policy in Bayh-Dole); they claim that universities must take ownership of inventions to comply with Bayh-Dole (absolutely not–there is nothing in the standard patent rights clause that requires ownership–and anyway, all substantive elements of the patent rights clause are not enforced). Continue reading →

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Thinking about projects, small and big–5

Posted on December 5, 2017 by Gerald Barnett

Consider the implications of an assignment of an invention in the context of big projects and greater inventions. If one assigns an invention, having already granted a license to that invention, then the license follows the assignment–unless, of course, the owner of the invention terminates the license (if it has that right). That is, the new owner has the same obligations under the license as did the prior owner. If the prior owner granted a sponsor a license that extends to a big project–say, commercialization–then assigning an invention to a patent management firm does not change the scope of that license. We are still dealing with the big project, but now it has expanded to include a new assignee of the invention. Same deal if the assignee is a “commercialization partner.” The big project defined by the university and used to justify obtaining ownership of the invention, obtaining patent(s), and assigning the invention is still on, regardless of how the university subsequently deals with ownership of the invention.

If it were otherwise–if a university could define a big project (commercialization) and claim that small research projects are justified by being part of the big project, but then cut off sponsors of the small research projects from access to greater inventions simply by assigning rights in some aspect of those inventions to a private monopoly interest, then we would have a classic bait-and-switch scam. “You will get a non-exclusive license, but it will help you only if we don’t assign the invention to someone else, which we are determined to do if you don’t commit to fund the entire big project and make commercial product, so if you refuse, you you won’t get anything you can actually use, you poor loser sucker sponsor. We will see to it that the development necessary to create commercial products (and any associated patent rights) prevent you from having full access to the results of our big project, even though you have supported that big project.” No wonder industry sponsored research agreements at universities are so fraught with company bitterness! Continue reading →

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Regulatory Blah-Blah and the Public Interest in Inventions

Posted on December 4, 2017 by Gerald Barnett

Look, if two different units of the same company come to you to support research, and the units offer different and conflicting terms for their funding, then you tell them to knock their heads together and figure out just what they are going to do. You don’t take their money and then splutter about the problems. At worst, you take the work from the unit with the more favorable terms, and tell the other unit to figure things out. Well, if the sponsor is the federal government, then perhaps the different agencies might not be able to coordinate their requirements–it might take all sorts of regulatory blah-blah to do that. But then that’s a reality of contracting with regulatory blah-blah. Choose one agency and dance with it. You don’t have to have two dates to every prom.

Even Bayh-Dole, for all the gibberish about “uniform” federal policy, doesn’t actually do that. Bayh-Dole requires the Department of Commerce to come up with standard patent rights clauses, but it doesn’t dictate how many such clauses Commerce can create. In fact, there are at present four patent rights clauses. One for small businesses, one for non-profits, one for inventors, and one for some naval weapons systems. There could just as easily be twenty. Furthermore, Bayh-Dole does not actually require agencies to use any of these clauses. What the law does is make it difficult for an agency to vary from the default clauses. It does this by introducing all sorts of regulatory blah-blah about how determinations of exceptional circumstances can be made–and the same for other such reasons to vary from the default requirements.

The effect of Bayh-Dole’s regulatory blah-blah is to make it difficult for federal agencies to vary from the default patent rights clause even when the public interest would be served by doing so. The need for university patent brokers to bring more than one date to the prom is more important than the prom itself.  Continue reading →

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Thinking about projects, small and big–4

Posted on December 4, 2017 by Gerald Barnett

Let’s repeat, for the sake of emphasis. If a sponsor supports a project, and that project is part of a larger project, then the sponsor necessarily also supports the larger project. It doesn’t matter that there is separate accounting for the project and the other projects that comprise the larger project. It also doesn’t matter that a sponsor supports a small project first, and that project is followed later by the next projects in the larger project. The small projects are parts of a whole project, regardless of how the money is booked and regardless of the sequencing.

University administrators insist that there is always a larger project, one of commercialization, that all university inventors must participate in. Any sponsor who supports a small project in a university with such policy claims–and public claims, and established practices–necessarily also supports these bigger projects of commercialization. Small projects must support these bigger projects. Sponsors of small projects necessarily support later commercialization projects. They do so because university policy demands that they do so.

If you see this point, then you will also recognize that if a sponsor expects deliverables from its support, it is entirely reasonable for the sponsor to expect deliverables from the larger project, not just from the small project that it directly supports–access to data, to software, to inventions, to reports. University administrators may think that there are no such sponsors with these expectations. But if they do think this way, they are wrong. Continue reading →

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Thinking about projects, small and big–3

Posted on December 1, 2017 by Gerald Barnett

We have used a scenario to illustrate the relationship between small projects and big projects in a university research environment. In a sense, this relationship between projects is one of the key drivers of research enterprise. It’s not just that work becomes persistent with a purpose–a project–but that projects, too, may form relationships, often informal. And informality is often a very good thing–it is easy to be informal, except when surrounded by administrators devoted to formality, and then informality appears to be messiness, or lack of proper documentation, or indifference to process, or failure to respect policy, or non-compliance, or insubordination, or corruption. Funny how policy may create crime against authorities. We might wonder just where it is in innovation that a necessary ingredient is administrative authority.

Why is it that the informal establishment of a project, or the informal relationships among projects, are somehow not good enough and must have, in addition, administrative formality? It may well be that for some projects, administrative formality is just the thing, just as with selling activity–at some point, for some activities, forming a company is an important next step. Some things can be achieved with formal structure that cannot be achieved informally. But in contrast, if one wants crazy messing around to discover what’s worth being persistent about, trying to organize everything runs against volatility, runs against an environment in which crazy messing around is an important precursor to finding things worth persisting in doing, studying, collecting. We find the worth of new things in the doing of them, not in pre-stated reasoning about what must be important.

If a committee of reviewers already know what’s important, then we aren’t on the frontiers of science anymore, even if that’s what the billboard above the committee proclaims. Continue reading →

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Thinking about projects, small and big–2

Posted on November 30, 2017 by Gerald Barnett

We are working our way through the idea of project–a succession of tasks to accomplish some purpose. A small project is a project in which there is just such a succession of tasks and some purpose. We can call a big project a set of small projects, where each small project supports the overall purpose to be accomplished. Supporting a small project that’s part of a big project is equivalent to supporting the big project, if only “in part”–that is, by contributing to an essential small project.

Consider a scenario. A company sponsors a small project to study the behavior of a molecule–a chlorinated paraffin, say. The molecule might be used to reduce friction between moving parts in motors. Should the study show that the molecule has desirable properties, the company expects to use the molecule to develop a lubricant. The project statement of work, however, addresses only the conduct of various tests and preparation of reports. The university’s research contract, however, requires that the university own any inventions made in the project, and grants the company sponsor the right to negotiate for at least a non-exclusive license. This university action–ownership of inventions, offer of a license–constructs a bigger university project. The university contemplates commercial use of any invention and establishes that the university will control that commercial use. The university therefore establishes, too, that in any invention, the university will necessarily seek to draft patent claims that cover commercial use of the invention–that exclude commercial use absent a license granted by the university administration. Continue reading →

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Thinking about projects, small and big–1

Posted on November 29, 2017 by Gerald Barnett

Let’s consider “big” projects. A project can be bigger than any particular part of it described by a particular budget to support specific work. Similarly, an invention can be bigger than any given patent filed on some part of it. We will get to inventions in a bit. These are hugely important distinctions. “Big” distinctions! Why? They make all the difference in determining the scope of a license to inventions offered to sponsors of projects.

University administrators, as they have revised their patent and research policies, and have instituted systematic efforts to commercialize inventions, especially using monopoly patent licensing, have turned otherwise small projects into big, institutionally required projects. That’s the reality of the formal documents and the repeated public assertions. If written policies and contracts matter, then university administrators are bound to outcomes involving licensing of inventions that might surprise even them. If they disclaim the surprise, then they are involved in fraud and deception, a culture of lies and untruth. It really is that stark a set of options. Let’s work through things. I will show you what I mean and you can decide for yourself.

Let’s call a “small” project one that is specified by a bounded statement of work. That statement could be on an informal description of the project, in a grant proposal, or in a funding agreement. “This is the work we will do.” Typically, unless the project is utterly simple, the work is described in phases, with a time period and budget for each phase. The work is specified, with a justification for the work (why should this work be done at a university, to advance science, for the public benefit, and all), some reports, and perhaps setting some things that are intended to be produced (data, software, a collection, a refined protocol, a design). The funding agreement also defines the deliverables from the research–what the sponsor or the public should receive: again, technical information (reports, data), software, publications, inventions, prototypes. Continue reading →

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Thinking about projects, small and big–0

Posted on November 28, 2017 by Gerald Barnett

People talk about creating patent rights from inventions. That’s a way of creating an IP position from a NIPIA position. An invention is not IP–it’s NIPIA. But in this talk, people are generally oblivious to the importance of creating projects from ideas about what to study or what to make. An invention, taken large, may be the basis for creating a project. A person may already have in their mind’s eye what might be possible. But it will take a project–persistent effort, often with help–to document, build, collect, demonstrate the object of the effort or (all the more likely) anything found or created in the process.

The project is the crucial research enterprise asset. An invention can make a project all the more valuable. Or a university can make both an invention and the project that might otherwise host that invention less valuable by putting the invention behind a patent paywall and disrupting the power of the project in which the invention was made or to which the invention might be contributed.

Conventional technology transfer has imagined for decades that patentable inventions can be extracted from projects and managed independently from research activity. That conventional imagination is, in general, not effective. But despite the reality, administrators continue to circulate the proposition that projects are expendable and patents are the critical asset by which the public benefits from university research. It is not so. Continue reading →

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Thinking about projects, small and big– (-1)

Posted on November 27, 2017 by Gerald Barnett

A fundamental concept in university research enterprise is the project.

In management-speak, the project is the key intangible asset created in research enterprise, the key form of NIPIA–“non-IP intangible asset.” A project is the soil in which the tubers of discovery get planted. A project persists and provides a point of collaboration in addition to that of personal relationships. A project as it drifts and bounces spins out new projects, unexpected ideas, gifts. A project is a form of NIPIA and an aggregator of NIPIA and IP alike. To have projects is to have a basis to consider an institutional role for technology transfer.

If I had the choice between a project and a patent, I would take the project any day. A project is like a lake. A patent is a dead fish.

Let’s then consider projects. Where does the idea to explore something come from? What recommends that someone work on something with diligence, attention, determination? That’s a key starting point, if not the key starting point. It’s not just that people make a show of exploring or experimenting. It’s that they find something to explore that carries insight. How to describe it? How to differentiate someone willing to take money to go through the motions, even fervently, even sincerely, because someone else approves from someone who decides that some endeavor is worth it, for the doing of it? Continue reading →

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Thanksgiving 2017

Posted on November 23, 2017 by Gerald Barnett

To all those who seek to discover, invent, collect, develop, create, author, realize, and do something with any of that–thank you for your efforts, your insights, your inspiration.

For those who build administrative systems to support such work–thank you, too. You have an important role to play, if you choose your work wisely.

We must keep in mind that institutions that become voracious in consuming the work of discovery to feed their own administrative vision of “innovation” systems reduce the research creativity available to a community. A determination to make all creative work conform to an an administrative system in the service of an institution may–despite the claimed intentions–work against creativity, against research volatility, against opportunity for change.

To work in research enterprise necessarily involves an optimism that the world yet contains amazing mysteries that can become knowable, and that we will become better for that knowing.

Thank you to those of you who have visited the articles at Research Enterprise, and thank you to those who have commented (on-line and off). Research enterprise, too, has its mysteries yet to be made known.

 

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