The University of Pittsburgh’s Fake News Summary of Bayh-Dole, 2

Posted on September 15, 2017 by Gerald Barnett

We are working through the University of Pittsburgh’s account of the Bayh-Dole Act since AUTM has called it out as worth reading. We need to pause and consider some real history to work out of our imaginations the fake history implied by Pittsburgh’s account.

The government’s position on the use of patents is captured by this Congressional report by the National Patent Commission in 1945:

The Commission recommends that the Government as a general rule continue to pursue the historic policy of not exercising the right to exclude conferred by patents which it owns; of not attempting to exclude its own citizens from engaging in any enterprise; of not seeking to derive revenue from patents, and of not undertaking control by means of patents. Inventions covered by patents owned by the Government should be available for commercial and industrial exploitation by anyone, with, however, the recourse open to the Government to take different action in exceptional cases.

The National Patent Commission then goes on to discuss exceptional cases, such as where general access is not sufficient to attract the investment necessary to move an invention from its initial condition to a form from which the public can benefit. Much of what then becomes a quest for a “uniform” patent policy is one of debating whether the default should be open innovation, with some few things controlled by patent by the government (and its contractors), or whether the default should be monopolies in inventions, with only those things judged absolutely worthless permitted to fall into the public domain. The Kennedy patent policy describes the conditions under which the government should allow contractors to pursue monopoly positions–namely where private risk capital is necessary to bring an invention to the point of practical application, and then for only so long as is reasonable for that contractor to recover that risk capital from the practical application of the invention. Continue reading →

Posted in Bayh-Dole, Bozonet, History, Policy, Technology Transfer | Comments Off on The University of Pittsburgh’s Fake News Summary of Bayh-Dole, 2

The University of Pittsburgh’s Fake News Summary of Bayh-Dole, 1

Posted on September 14, 2017 by Gerald Barnett

AUTM a few weeks ago pointed favorably to a description of the Bayh-Dole Act posted by the University of Pittsburgh. Let’s have a look, then.

The post is titled “What It Means for Technology Commercialization.” While “It” is ominous in these Steven King days, let’s say “It” is the clownish Bayh-Dole Act and not something yet more horrible. We will take Pittsburgh’s AUTM-endorsed account of Bayh-Dole section by section.

The Bayh-Dole Act is a federal law enacted in 1980.  This legislation, cosponsored by Senators Birch Bayh and Robert Dole, enables universities, nonprofit research institutions, and small businesses to own, patent, and commercialize inventions developed under federally funded research programs within their organizations.

So far, pretty good. Bayh-Dole was enacted in 1980–into effect in mid 1981. And Bayh and Dole did co-sponsor the bill in the Senate. And Bayh-Dole does, indirectly, “enable” universities and others to own inventions made with federal research funds. It’s an odd use of “enable,” however, and one has to know just enough fake history to have the courage to use “enables.” The fake history is that prior to Bayh-Dole the federal government in its contracting claimed ownership of all patentable inventions made with federal support FAKE. If a university got assignment of an invention, then the government made the university assign the invention to the government anyway IT HAPPENED A FEW TIMES. The government stockpiled patents and refused to license them to anyone FAKE, ensuring that the public would not benefit from any of the great research universities were otherwise doing FAKE. Bayh-Dole came along and reversed all this FAKE, by “enabling” universities to own inventions made with federal support. Continue reading →

Posted in Bayh-Dole, Bozonet, History, Policy, Technology Transfer | Comments Off on The University of Pittsburgh’s Fake News Summary of Bayh-Dole, 1

A Brief History of “Of” in Federal Invention Regulations

Posted on September 13, 2017 by Gerald Barnett

In Stanford v Roche, the Supreme Court ruled that “of the contractor” in the definition of “Subject Invention” meant “owned by the contractor” and not “made by employees with the use of federal funds.” Here’s the Court:

Stanford asserts that the phrase “invention of the contractor” in this provision “is naturally read to include all inventions made by the contractor’s employees with the aid of federal funding.” That reading assumes that Congress subtly set aside two centuries of patent law in a statutory definition. . . .

In fact, this is what the universities, led by Bremer and Latker, were trying to do–induce Congress to set aside two centuries of patent law, and to get there, things had to be done subtly. More from the Supremes:

Construing the phrase to refer instead to a particular category of inventions conceived or reduced to practice under a funding agreement—inventions “of the contractor,” that is, those owned by or belonging to the contractor—makes the phrase meaningful in the statutory definition. And “invention owned by the contractor” or “invention belonging to the contractor” are natural readings of the phrase “invention of the contractor.” As we have explained, “[t]he use of the word ‘of’ denotes ownership.”

There’s a good argument that this little “of” ruined the whole cleverly crafted scheme by patent brokers to take from university inventors ownership rights in their inventions. Of course, the patent brokers couldn’t bear the thought of all those inventions going to the federal government, to be lost from the opportunity to profit from monopoly positions. So where did things go so wrong? Continue reading →

Posted in Bayh-Dole | Comments Off on A Brief History of “Of” in Federal Invention Regulations

Getting off your UFRDA

Posted on September 12, 2017 by Gerald Barnett

In 1981, Senator Harrison Schmidt introduced a bill to replace Bayh-Dole with a more general law regarding inventions made with federal support, the “Uniform Federal Research and Development Act of 1981.” It doesn’t appear that the university patent brokers had much fondness for the bill, and it failed to pass, despite being co-sponsored by a number of senators.

Much of the UFRDA is plucked from Bayh-Dole, but often with a slight twist, and sometimes the slight twists are rather significant. The strategy of the law is to state those situations in which the federal government can require assignment of inventions, and for all other situations allow the contractor to own inventions made with federal support. Thus, here are some situations in which the government can require title:

(2) the restriction or elimination of the right to retain title to any subject invention is necessary to protect the national security nature of such activities;
(3) because of exceptional circumstances, acquisition of title by the Government is necessary to assure the adequate protection of the public health, safety, or welfare, recombinant DNA research being considered an exceptional circumstance;
(4) the principal purpose of the contract is to develop or improve products, processes, or methods which will be required for compliance with Government regulations;

This set does not show up in Bayh-Dole. Continue reading →

Posted in Bayh-Dole, History, Technology Transfer | Tagged , | Comments Off on Getting off your UFRDA

Nolo Press Still Confused About Bayh-Dole, 2

Posted on September 11, 2017 by Gerald Barnett

Now the Nolo page turns to Stanford v Roche. Given how Nolo can’t seem to get much at all right about Bayh-Dole, what do you think the odds are with Stanford v Roche?

Stanford v. Roche (2011): The Supreme Court Weighs in on Bayh-Dole

A 2011 Supreme Court case illuminated the power of the Bayh-Dole Act and cleared up some issues regarding assignments: specifically, the difference between a promise to assign a patent, and an actual assignment. (Board of Trustees of the Leland Stanford University v. Roche Molecular).

Totally inaccurate, other than the link to the case.

The Supreme Court did not discuss promise to assign vs present assignment. That was decided by the CAFC. The Supreme Court held that Bayh-Dole does not automatically vest title to federally funded inventions in federal contractors or authorizes contractors to unilaterally take title to such inventions. Justice Breyer’s dissent complained that the Court did not address the CAFC’s distinction between a promise to assign and a present assignment of a future invention. Breyer argued there should not be so great a distinction. Breyer’s point is a good one, but it runs to just the opposite of what is put here. If one follows Breyer’s opinion, it does not matter whether one promises to assign or makes a present assignment of an invention that hasn’t been made yet. Breyer’s argument is that the wording should not make a difference. It is the CAFC’s distinction that causes people to change the wording of their patent agreements. Continue reading →

Posted in Bayh-Dole, Present Assignment, Stanford v Roche | Comments Off on Nolo Press Still Confused About Bayh-Dole, 2

Nolo Press Still Confused About Bayh-Dole, 1

Posted on September 8, 2017 by Gerald Barnett

A couple of years ago, I worked through a Nolo Press excerpt on the Bayh-Dole Act, showing how dreadfully wrong it is. That bit is still up at the Nolo Press site, and still dreadful as ever. I came back across it yesterday while looking for something else. That it remains up is testimony to how deeply unmindful university officials and writers about the topic remain. It’s not just that they get complicated stuff wrong (that’s bad enough, if they consider themselves experts), but it is also that they just don’t seem to care that they get things wrong.

I have worked through the Nolo page again, providing more detail for the problems and suggesting alternative language that accurately restates Bayh-Dole and Stanford v Roche. The most rotten part of the Nolo account is that, although it appears addressed to university employees who might invent, it does little to show those employees what they ought to consider in dealing with inventions arising in and around federally funded research. It’s worse than useless–it’s in many places outright wrong, and the advice it offers is awful. Other than that, it’s nicely edited. Continue reading →

Posted in Bayh-Dole | 1 Comment

Discovery and Discovery Management, 2

Posted on September 7, 2017 by Gerald Barnett

University administrators, too, have oriented their institutions to take advantage of federal funding. Somehow, federal funding increases (to the administrative mind) a university’s prestige, and that prestige then can support raising tuition or getting more funding from state sources and donors (after all, having a lot of money ought to inspire people to give the university even more money). But what’s not reported is that most universities lose money on their federal research programs. That is, they have to spend more money than they receive in order to spend the money they do receive. That other money comes from somewhere in a university’s budget–but generally not as an “allocation to make up for the losses in federally supported research.” In a recent year, the University of California’s loss in its research program was on the order of 20%–over $600m on a $3b budget that had to come from other sources, not from the research sponsors.

Technology transfer comes into this account, too. To the extent that IP management marks discoveries and inventions and new materials and data sets and software, it serves as an index into the outputs of research (and sometimes other creative activities). The measure of these outputs–distinct from publications, students with training, faculty and staff with training, and the like–is that they get used. Not that they are patented or “protected”; not that they are licensed or commercialized; not that anyone makes money or earns a royalty or attracts investment money–but that the outcomes get used, whether for an intended purpose or otherwise, whether for further research or DIY activity or industrial work or preparation of consumer product.

Technology transfer serves a political function as well, signalling to the general public that the outputs of all this institutional research are about to become important, or at least that people are trying really hard with all sorts of complicated and sophisticated efforts to place research outputs for use–even if that is by creating monopolies behind institutional paywalls and then selling these paywalls to companies on the condition they prepare and sell commercial products (or at least sue anyone else who tries to use inventions covered by the monopoly). That so few such products have emerged is rationalized as a sign that technology transfer is so very difficult or that industry refuses to cooperate or that the people hired aren’t sufficiently well trained, or that the office they work in has the wrong name or the wrong organizational structure or lacks adequate funding or needs to expand to include the latest trend in entrepreneurship or securitization of royalty streams, or university people just don’t have rich or powerful enough friends. One problem is how universities handle invention, discovery, software and other “research assets.” That’s been a recurring theme here at Research Enterprise. Continue reading →

Posted in Freedom, Social Science, Sponsored Research, Technology Transfer | Comments Off on Discovery and Discovery Management, 2

Discovery and Discovery Management, 1

Posted on September 6, 2017 by Gerald Barnett

How do we discover? That’s a question that keeps coming up in my mind. There are books around that work at this point–to point to some recent examples, Ashton’s How to Fly a Horse, Kauffman’s Investigations, Johnson’s Where Good Ideas Come From. I thought it might be helpful to make a list of ways discovery happens, in no particular order–

  1. random observation
  2. accident
  3. failure
  4. exploration
  5. systematic study
  6. experiment
  7. solve a problem
  8. create a problem and solve it
  9. adapt something known in another context
  10. recognition by a prepared mind
  11. intuition/hunch/epiphany
  12. play
  13. attempt to build/prototype
  14. careful observation and documentation
  15. inspiration/madness/vision/leap
  16. allow to mature or develop without intervention
  17. become expert at something to realize what otherwise isn’t evident
  18. messing around
  19. conversation
  20. thinking about stuff
  21. serendipity
  22. theorizing
  23. copying/imitating

Of these, perhaps 4, 5, and 6 might be called “research.” But exploration can involve simply traveling to places that haven’t been visited before. We discover by going to Mars (or at least sending a probe)–hey, those aren’t canals built by Martians after all! Travel is not research, though one might say one is doing “research” by looking around once one has gotten somewhere new. Continue reading →

Posted in Freedom, Policy, Social Science, Sponsored Research, Technology Transfer | Comments Off on Discovery and Discovery Management, 1

The Implication of the APLU’s Nonsense on Technology Transfer

Posted on September 5, 2017 by Gerald Barnett

The APLU’s fakographic keeps giving. I’ve discussed it previously. The basic idea behind the APLU graphic is that there is a set process by which research discoveries move from the laboratory to public use. This process sure sounds great, and the APLU intends that. But the process is fantasy, at best aspiration with random instances taken as confirmation; at worst, the process is something in the nature of fraud or coercion.

When a colleague of mine went through our university’s licenses, he found only a handful of inventions that had followed our published “process,” which resembled what APLU describes. Everything else–scores–of licenses had followed other pathways. The process was an aspiration. It was a goal to someday make happen, to cajole or coerce inventors to attempt; to get industry to adopt. There was something of an evangelical fervor in providing “training” for those involved. Except that things rarely happen that way.

Compliance with a university’s intellectual property policy is largely an exercise in being made to participate in an administrative fantasy or face the ruination of one’s career.  Continue reading →

Posted in Bozonet | Comments Off on The Implication of the APLU’s Nonsense on Technology Transfer

Penn State’s Protection Racket, End

Posted on September 4, 2017 by Gerald Barnett

Well, that has been quite the trip through Penn State’s IP apparatus. I worked through it briefly a few years ago, and then again last year, but never did the deep dive to see all the strange creatures that pass for policy.

The short form is that the policy creates a rather useless loop–policy insisting that the IP Agreement assigns inventions and whatnot to the university, and the IP Agreement insisting that any assignment is limited “to the extent specified in policy”–which is, nothing. Other than that, the apparatus is a convoluted exercise in trying to force people to agree to the policy by contract, all the while creating goofball definitions, making unfounded assertions and wildly expansive claims, misrepresenting federal law, and operating outside of formal policy. Okay, so typical for a university IP policy drafted by the clueless, the negligent, and/or the corrupt. What a needless mess to sort out. And this, this is what it means to be “expert” in university intellectual property management?

Let’s discuss, now, the role of “protection” in Penn State’s policy apparatus. Here’s a bit from Penn State’s “An Inventor’s Guide to Technology Transfer“:

Look at what’s communicated. “Protect Your Invention.” “Filing an invention disclosure with the Office of Technology Management is the first step in protecting your intellectual property.” “Your” is silly, because the whole point of Penn State’s patent policy is to ensure that no inventor ever owns any invention made in or around the university. Continue reading →

Posted in Bozonet, Policy | Comments Off on Penn State’s Protection Racket, End