University of Misery’s IP Policy Scam, 15

Posted on October 25, 2017 by Gerald Barnett

In Bayh-Dole, the definition of “subject invention” is not a matter of defining a term in a federal contract. Bayh-Dole is part of federal patent law, so “subject invention” is a definition of patent law. A subject invention is a subject invention because a law defines it that way, not because a federal agency and a “non-federal entity” agree to use “subject invention” in a given way. Here’s the definition of subject invention from Bayh-Dole (omitting the trailer about Plant Variety Protection Act fussiness) (35 USC 201(e)):

The term “subject invention” means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement

The “of the contractor” means, as the Supreme Court ruled, that a subject invention is one that is owned by a contractor–any party to a federal funding agreement for research. Before a contractor owns an invention, it is just that, an invention “arising from federally supported research or development,” or “federally supported invention,” as Bayh-Dole’s statement of policy and objective puts it. Until a federally supported invention is owned by a contractor, it is not a subject invention. It fails the statutory definition. It is clear that “subject invention” in Bayh-Dole is utterly unlike “subject invention” in the IPA. In the IPA, a subject invention is any invention that’s a deliverable in a federal contract. In Bayh-Dole, a subject invention is any invention that a contractor has come to own and which is deliverable in a federal contract.

The implication is that Bayh-Dole requires, as a default contracting provision, federal agencies to have no interest in invention deliverables that are not owned by a contractor. Continue reading →

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University of Misery’s IP Policy Scam, 14

Posted on October 24, 2017 by Gerald Barnett

The use of “subject invention” in federal contracting goes back to at least as early as 1947, when the military used “subject invention” in research contracts. Here’s an instance from a Navy contract (quoted in Mine Safety Appliances Company v. United States):

 “Subject Invention” means each invention, improvement and discovery (whether or not patentable) conceived or first actually reduced to practice (i) in the performance of this contract, . . . or (ii) in the performance of any research or development work relating to the subject matter hereof which was done upon the understanding that this contract or any subcontract hereunder would be awarded . . . .

The military at the time had adopted the “license” approach to inventions made in contract work–all the government required was a non-exclusive license to any inventions made by a contractor’s personnel. The issue that “subject invention” addressed, then, was not ownership but rather whether the government was to have a license to any given invention. Subject invention defined the scope of the government’s licensed rights. That right is defined broadly. Let’s work through it. Continue reading →

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University of Misery’s IP Policy Scam, 13

Posted on October 23, 2017 by Gerald Barnett

In the Institutional Patent Agreement program operated by the NIH, the “conception or first actual reduction to practice” scope gets changed from being only about the scope of what the government does not have to compensate a patent owner for under 28 USC 1498. Now it is also about the scope of what university administrators can claim from inventors. This is hugeness. It may take some work, but you really should try to grasp it.

In an ordinary university workplace of the time (1968 to 1978), faculty members generally had no obligation to assign inventions to the university unless they were assigned work (“official duties”) or made use of university resources beyond what the university ordinarily provided. Since the university committed to provide resources to support federal research work and was fully compensated for doing so, these were not resources that gave rise to a university invention ownership claim. Any inventions were a matter between the inventors and the federal agency. The university’s only interest was to see that the inventors complied with whatever the federal agency required.

But the IPA program changed this. It decreed–by agreement between federal agencies (NIH and NSF) and university patent administrators–that any invention within the scope of federal interest for a license must also be placed within the scope of an assignment claim by the university. This was a sea-change. Again, universities for the most part did not demand faculty inventions unless the faculty members had agreed to work on a special project or requested and received special support–financial or access to special equipment or facilities. Even universities that had an in-house patent program, such as the University of California and Stanford, had voluntary programs for faculty inventions. But the IPA program changed all this for federally supported research at IPA-approved universities. There, the scope of the federal interest in licenses (or ownership, depending on the federal agency practice) was, by federal contract, made to become the university’s interest in ownership of those same inventions–even where under normal federal contracting and their own patent policies universities had no such ownership interest. The universities contracted with the NIH to obtain that ownership interest. Continue reading →

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University of Misery’s IP Policy Scam, 12

Posted on October 21, 2017 by Gerald Barnett

Hah–thought I was out of Misery articles? No, not at all. We have a few more!

The distinction between conception and reduction to practice becomes important in university patent policies such as the University of Missouri’s because university administrators attempt (badly, or self-servingly, or both) to accommodate the Bayh-Dole Act as a matter of policy. Nothing in Bayh-Dole requires a change in any university patent policy. The actual requirements for compliance are to be found in the patent rights clauses placed by federal agencies in federal funding agreement. Those requirements amount to educating personnel on the importance of prompt reporting of inventions, designating personnel for patent matters, reporting inventions to the government that get reported to the university, and requiring research personnel to make a written agreement to protect the government’s interest in inventions made under the funding agreement.

Given that these requirements are a matter of federal contract, there’s not much reason to make them also requirements of university patent policy. The university, by accepting the federal funding agreement, has agreed to the requirements. The policy that’s required is one that states “the university will comply with all requirements in contracts to which it is a party.” The flow down of this requirement to individuals takes the form: “individuals will comply personally with any provisions involving inventions made in the performance of such contracts. But that’s what the written agreement requirement does in the standard patent rights clause authorized by Bayh-Dole. So, again, the university does not need new patent policy language–it just needs to comply with the federal contract that it has agreed to. All this simplicity has overwhelmed university patent administrators, however, and they have rushed to deal with the complexity in their minds by introducing a matching complexity into their patent policies, ruining the policies but satisfying administrative emotional needs for complexity beyond reckoning.

Bayh-Dole introduces a new category of patentable invention into federal patent law, the “subject” invention. Previously, “subject invention” had been a creature confined to federal research contracting, and then to executive branch patent policy under presidents Kennedy and Nixon. But Bayh-Dole is part of patent law, and thus so now is subject invention. It’s a significant change, really. A subject invention is no longer a definition that merely scopes a government license or even an invention deliverable in a federal contract–it’s a new category of patentable invention in patent law. That new category carries the new policy requirements set forth for it in patent law at 35 USC 200. These policy requirements apply to any patent that issues on a subject invention. All of this apparatus is very, very different from that of typical federal contracting with a statement of scope for deliverables–whether inventions or licenses to inventions. Continue reading →

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At least repeal Bayh-Dole for everything other than pharmaceuticals

Posted on October 20, 2017 by Gerald Barnett

No other industry writes fakographics about the glories of Bayh-Dole. Only pharma. No-one in university research writes fakographics about the glories of Bayh-Dole. Only patent bureaucrats and their stooges in front organizations like AUTM, COGR, AAU, and APLU. Oh, maybe there’s some happy support for Bayh-Dole from the agri-bio corporate giants, too. Pharma-bio industry.

Does it take so much to figure out what’s going on? Bayh-Dole, the law for bureaucratic patent stooges. Not a law for research. Not a law for inventors.

Forget the blather about American innovation and the hand-waving about government exclusive licensing rates in 1978. Bayh-Dole came about for one reason only–to supply the pharmaceutical industry with monopoly positions on discoveries made with federal support. To back that objective, Bayh-Dole was placed in federal patent law rather than in federal procurement regulations to make it more difficult to get at. To cover this move, the law was given the appearance of a general approach to innovation, applicable to all federal agencies and all inventions. That’s what the code word “uniform” means. Bayh-Dole is not uniform, any more than the Kennedy and Nixon patent policies were uniform. But Bayh-Dole tries to hide the fact that it exists for the sole purpose of ensuring that pharmaceutical companies get private monopoly positions in discoveries made with federal funds.

Anyone who challenges Bayh-Dole, then, finds themselves accused of attacking the patent system, or attacking innovation, or preventing inventions from being developed for public benefit. It’s all total crap. Continue reading →

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Bayh-Dole, the rotten law for rotten bureaucrats

Posted on October 19, 2017 by Gerald Barnett

You know something has to be rotten with Bayh-Dole when:

  • university administrators never cite the law even close to correctly
  • the statistics used to champion the law are fake and deceptive
  • all reports of invention utilization are government secrets
  • university administrators refuse to comply with the law
  • there’s no enforcement of the parts of the law cited for its “success”
  • key implementing regulations were designed not to operate
  • the ones who most like the law are bureaucrats and patent attorneys
  • major organizations issue fakographics by the ton filled with the same crap

Not all bureaucrats are rotten, of course, but you can tell the rotten ones right away–they do the things in the list of things rotten with Bayh-Dole. Bayh-Dole on its own does little more than establish terms for a default patent clause, make clear that any federal agency can grant exclusive licenses to inventions it owns, and change federal patent law to delineate the patent property rights in such inventions. It’s rotten administrators that have made Bayh-Dole into a rotten mess.

We might posit that Bayh-Dole has attracted rotten administrators to university technology transfer. We might posit that this has been the primary effect of the law, to draw rottenness away from whatever had previously attracted it and brought it sniffing and stinking to university patent administration. The number of clueless, self-congratulatory, pig-headed, officious, litigious, full-on Dunning-Kruger bureaucrats who end up in university patent management is breath-taking. Sorry folks, but it is true. I’ve seen your work with policy, with negotiation, with drafting. It sucks, for the most part. Some of you are brilliant, but you are a minority. As Frankfurt has it, sincerity is just another form of bullshit if you have no regard for the truth. You have created a bozonet and use it to hide from reality, hoping that by repeating your fantasies and bogus statistics from forty years ago you can somehow make the world conform to your confusion. Hasn’t happened. Won’t ever happen.

Bayh-Dole has throttled American university research inventions. These inventions now get held back behind a bureaucratic paywall. Most go unlicensed. Of the few that are licensed, the licenses preserve a private monopoly. Most of those monopolies are merely speculative play for rounds of investors helping later investors lose money. Only a tiny handful of inventions escape this monster system, with a bureaucratic thumb in every inventive pie.

Bayh-Dole, built on fraud, representing aspirations as fact, deathly silent on what is actually happening, the only ones living large being the patent attorneys and university bureaucrats and drug companies.

Shut the thing down. Continue reading →

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Kill Bayh-Dole

Posted on October 18, 2017 by Gerald Barnett

The Bayh-Dole desperation continues. Now Bio has released its very own fakographic, citing impressive-sounding numbers with no foundation in fact, a fake history that exists in the minds of a few pundits, and perpetuates a fraud on the public that is happily convenient for the drug industry. But what of facts?–who needs fact when one has a happy fantasy?

Let’s have a look at this new fakographic. This is getting to be a regular feature. Who next will put out the same stinking thing?

The “Law at a Glance”:

No, Bayh-Dole does not “empower” anyone to “take ownership.” The Supreme Court was crystal clear on this point, not that Bio or AUTM or any of their propagandists could possibly read:

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.

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.

Continue reading →

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University of Misery’s IP Policy Scam, 11

Posted on October 17, 2017 by Gerald Barnett

The introduction of a goofball definition of “invention” into the University of Missouri’s patent policy has a real effect: it transforms the scope of the policy text–especially at D.1 (inventions claimed by the university) and at D.2 (inventions that must be reported to the university)–without changing the text of those sections. There is nothing new in the policy text at these spots to indicate that a definition elsewhere has changed the meaning of the text. In software programming, this is just the sort of practice that gets people into trouble–changing variables globally without local accountability. Where “invention” was used by the 1956 policy to mean, clearly, patentable invention, it now means whatever gets called an “invention” by administrators. As long as there is “conception” of an “idea,” there’s an invention. According to the goofball definition of invention, any idea fully conceived in all its elements is, for purposes of the policy, an invention, regardless of whether that invention is directed at patentable subject matter, is novel, is useful, or anything else that creates a basis for patenting.

The idea behind this move is to get at inventions before they become patentable and disable any inventor involvement in deciding if some flitty thought is patentable or could become patentable; that is, before such thoughts are something to be owned by patent. This is the same driver that leads university administrators to create bespoke definitions of invention to include most anything they can think of in ever-increasing lists of possible assets, many of which can never be reduced to the scope of a patent. The effect, then, of these expanded definitions of invention is to claim for the university an ownership position in ideas before they have been developed to the point of patentability. Any idea, if it is held back from public disclosure, the argument goes, might provide the basis for someone to pay to use the idea. The patent policy gets used to establish an institutional claim to ideas that might become inventions. The university, as it were, is made to claim ownership of ideas so that it might control and direct the development of those ideas toward patentable assets. Continue reading →

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University of Misery’s IP Policy Scam, 10

Posted on October 16, 2017 by Gerald Barnett

Darned! We have not yet dealt with the promised interrelationship between conception and actual reduction to practice as promised by Footnote 1 of the University of Missouri’s patent policy. It’s rather simple, generally, for a university patent policy that wants to distinguish between inventions that the university should own and all other inventions. State the conditions under which it makes sense for university administrators to bargain for ownership of inventions and when it is not. Really, there are no good reasons for university administrators to compel the assignment of inventions, though there may be good reasons in some cases for faculty to agree among themselves not to pursue patenting and there may be good reasons as well for administrators to decide not to accept ownership of inventions even when offered.

The University of Missouri patent policy, as written, gives two conditions under which university administrators may require assignment of inventions–when an invention relates to the general field of an inquiry to which an employee has been assigned, and when an invention has been made or developed in a substantial degree using university facilities, financing, time, or the university’s non-public information. But this isn’t enough for the policy. At some point in the mid-1990s, an administrator felt the need to worry “conceived or first actually reduced to practice,” probably because Bayh-Dole used this phrase and, so the administrative thinking must have gone, to comply with Bayh-Dole the university also had to claim anything that was “conceived or first actually reduced to practice.” It was silly nonsense, of course, because Bayh-Dole doesn’t require federal agencies to require universities to own any invention, and thus university patent policies don’t have to be modified to comply with Bayh-Dole or its standard patent rights clause. Continue reading →

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University of Misery’s IP Policy Scam, 9

Posted on October 13, 2017 by Gerald Barnett

If the University of Missouri patent policy were aiming to provide helpful information to university personnel at a loss to understand what patents are, that would be one thing. In that case, the policy would not need to define invention so much as provide a discussion of what makes an invention patentable and therefore of interest to the policy (assuming that the policy intends to restrict itself to patentable inventions). And if that were the case, then the best place to do that is in a little educational booklet or something. There’s no need for a dissertation–especially a bad one–pressed into policy language.

There is an added complication. The Missouri policy is not merely a statement of institutional interest and delegation of authority. The policy goes out of its way to insist that it is part of the employment contract with each employee:

With respect to Employees, these patent and plant variety regulations form a part of the employment contract. These regulations constitute a condition of employment of all Employees of the University, and shall be effective as to all Inventions and Plant Varieties made during any period of employment from and after the date of their adoption.

There’s a difference between a university expecting employees to follow a policy and making that policy a matter of contract, and especially an employment contract, and especially when those who are employed include university faculty who have tenure. In the first instance–policy as delegation of authority, statement of objectives, and establishment of procedure–if employees fail to follow a policy, the university may take disciplinary action–letter of censure, demotion, demand restitution, termination of employment. In the second instance, however–where a policy statement has been made the subject of a contract–while the university may now take action based in addition on breach of contract if an employee fails to follow the policy, the university is also exposed to a contractual claim for breach if the university fails to follow its own policy. Furthermore, since the policy has been declared part of a contract, the university is not at liberty to change the contract with regard to any given employee without that employee’s concurrence. That’s the upshot of the ruling in the Shaw case: Continue reading →

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