Here is the biggest outcome of Stanford v Roche: Bayh-Dole does not require universities to take ownership of inventions made with federal funds, does not mandate that universities do so, does not restrain the rights of inventors so they can only assign to their university. IP policy statements and information guides that say otherwise are wrong. If left unchanged, it’s negligence, deception, fraud.
This is a huge liberation. It’s really quite frabjous. But we must be clear–federal research innovation policy has been founded on this liberation for thirty years. What we are now liberated from is the attempt to re-impose governmental controls on inventors. Having persuaded the government to limit its claims on inventions made in federally supported research in deference to universities and small companies (and then, nearly everyone), university administrators, for utterly unknowable reasons, turned around and sought to re-impose those very same governmental controls, but now directed at university ownership rather than federal agency ownership.
The legitimate compulsory ownership policy followed by the federal agencies was displaced only to be replaced by a fictional compulsory ownership policy propounded by university patent administrators. This was no mistake on their part. It was deliberate, it was desired, it was endorsed broadly, it was supported by the major groups claiming to represent patent administrators at universities, it was argued in writing all the way to the Supreme Court. It was put out on blogs, in articles, in press releases. This was no little slip up. Perhaps it points to how wonderfully attractive it is to have first dibs on stuff that might turn out to be valuable.
In this blog, I’ve written about how important the early bits of invention (and other research events) can be. First dibs is one of those bits. What if everything you do today is claimed by the IRS, or by the mob, or your ex-spouse’s lawyers. Just how motivated are you to invent today? Yeah, it’s your duty to go ahead and create that valuable thing today, so those with first dibs get the benefit of putting their thumb into your pie, way into your pie, and keeping it there.
Personal freedom is under-valued in innovation studies. It is not, in itself, an unqualified good. But it appears in general to be way better than first dibs compulsion and systematic accumulation. Freedom also does not mean isolated and cut off from resources, as in “do it yourself, all by yourself, Bub”. Nor does it mean breaking at whim commitments one has chosen to make. It does, however, allow a great margin for making commitments and becoming known for the moral choices one makes, and actions one takes, rather than for being the docile performer of duties imposed by others.
When the Supreme Court decided Stanford v Roche and declared Bayh-Dole was not a vesting statute, the Court cleared away a lot of fictional rationalizations for university first dibs claims. However, instead of being shocked into reform, university administrators and their legal advisers appear ready to double down to find another way to make the compulsory claim stick.
Again, the university compulsory claim comes in as a misreading of Bayh-Dole, is implemented in research and IP policy as a condition of federal funding, comes to look formal and official, is expanded for administrative convenience, er, “fairness” to all inventions, and is repeated so often with authority and confidence, even by attorneys, that it starts to sound like the way things should be, with efforts directed at closing any remaining “loopholes” that might give inventors any glimmer of a non-compulsory way of doing things.
Now the misreading has been shown to be totally wrong. Some of us tried to point that out. But the idea of first dibs is incredibly powerful. It’s the rush to the food bowl. It’s deep in the evolutionary brain, along with the lost distant savory smell of mammoth roasting on an open fire that made you drop your rocks and spears and run down the valley, gulping for air, determined to take it away.
Even with the prime cause removed, we are left with an infrastructure of policy claims, agreements, educational materials, and rationalizations regarding compulsory dealings. It is now truly a zombie infrastructure. It acts, it does not know that it is dead, and it wants brains, or, er, intellectual property. The appropriate response would be to dismantle it, from the foundations, and build anew consistent with what Bayh-Dole does require, which is: uniform action by agencies in contracting for inventions made with federal funds, by means of a Standard Patent Rights Clause under which investigators commit to disclose their inventions, assist with patent applications, and establish the government’s rights in inventions. That’s pretty much it.
As we saw in the University of Arkansas IP policy preamble, folks are loath to give up the idea that taking ownership is imposed on the university, if not by federal law, then by a duty to the state. But even in Ohio, the state law does not compel state universities to own–it just authorizes the universities to establish their claims. They could claim nothing and argue that this was in the state’s best interest (and they would be, generally, close to the truth).
Are we going to see crumble this first-dibs compulsory zombie infrastructure built on a fundamentally wrong reading of federal law? I certainly hope so. The reality is, some folks have a lot of pride, and when they smell roasted mammoth, it’s hard to get them to break stride. Some folks, it appears, want to keep the compulsory system, to make it even more compulsory and more broadly applicable than before. That is: even though Stanford v Roche showed that the founding premise of the system was a total distortion of federal law, the new action plan is to *do more on that same premise, as if it were true*!
Okay, so mammoth envy is not rational. Complete the system, take all the meat, make the accumulation process perfectly controlled, orderly. It doesn’t have to be. Folks don’t have to destroy early asset management with first-dibs. Folks in tech transfer don’t have to deal with the bitterness, the fights, the indifference, the silly expectations. They don’t have to impose rules that become themselves more important and complicated than the substance of the research events they were created to deal with.
After Stanford v. Roche, a whole lot of what was put forward as “progress” in creating university IP policies is shown to be an intellectual dead end. When we look as well at the actual outcomes of university licensing operations–not the confirmation bias self-selected “success stories” but a list of inventions disclosed and what has happened to them–it’s clear: while there are more tech transfer offices, and many more positions and specialties in those offices, with all sorts of databases and marketing resources, the approach itself as it is “improved” and “tightened” is failing, regressing, falling back to the federal approach, but with more waste effort, greater provincialism, more accumulation, and less national impact than when the agencies were handling inventions case-by-case, agency-by-agency.
This zombie infrastructure has to go. Not tech transfer offices or databases or marketing stuff. These are still important things. But rather the bindings that make first-dib compulsory claims on inventions and other research events. When a tech transfer office has to compete for work with other agents–then you have folks ready to get at the uncertainties of the world, where innovation lives and does its thing.
Start with freedom, where federal innovation policy starts. This is something clearly available to universities. It is their distinctive role to play in society, that they do not have to answer to “shareholders” looking for “profits”. Their job is to provide society with what governments cannot imagine to require, and companies cannot bring themselves to suggest. Innovation from the outside, from below, from high tech, and even by helping the status quo change along the roadmaps it has set for itself.
To try to create a rationalizing parallel with “stakeholders” as if the public wanted the university, more than anything, to make money from licensing inventions, is just gross transference of desire. It won’t do. Universities are attractive as hosts for research because they support the freedom of their research personnel. It is exactly because university investigators are free that they serve such a compelling role in society: expert, supported, independent. That, in a nutshell, is the university research value proposition. First-dibs ruins it. Not ruining right away, but in degrading the verve of the activity, like being told that someone claiming for years to be your ex-spouse has first dibs on whatever you do, even when it is shown that you have never been married! And as a result of that proof, lawyers for the fake ex-spouse are working to keep the first dibs, because it seems like such a good idea, even if there never was a marriage. It’s just as good to pretend there should have been.
We can go through the list of rationalizations to support first-dibs. Faculty are inept, selfish, gullible. The public deserves a “return on their investment”. Inventors would mostly assign anyway so it’s unfair to them that others won’t. It’s a conflict of interest. It’s a right of employers. Whatever. It’s fighting zombies.
More interesting is the other direction. What happens when the zombies are gone? First, there is free agency. This is huge, and wonderful, frabjous and full of challenges. Pat Riley laid out the case for free agency in science in 2008. The Kauffman Foundation proposed it in 2009. Now we have the Supreme Court making it clear that federal law does not preclude it, and the zombie empire bred to support compulsion is truly dead.
Freedom isn’t just another word, despite the song. And it is not without challenges and responsibilities. But these are personal and group challenges and responsibilities, not institutional ones. We are talking Bill of Rights, not Geneva Convention. The institutional challenge is not to bully its way to take over whatever is being done, and not to be stupidly indifferent and sullen about not being the master.
We are centering innovation at the heart of freedom. We are pushing back on the idea that bureaucrats planning anything on paper, in blue-ribbon committees, dumbed down so that even mid-level bureaucrats can divide the labor and not have to understand exactly what it is they are doing–that any of this promotes the societal transformations that we recognize as innovation. It can be done. Humans are marvelously clever and adaptable, even in adverse conditions, and bureaucracies are in the habit of taking credit where they can. But there’s no way that compulsory, planned, accumulation systems are the way to promote the diffusion of research events into community.
Freedom. That’s the way. We have the opportunity to build a new pattern of dealing among university investigators and community, including the university community, but also industry, and townspeople at large. That way, actually, is an old way, a way that largely existed until the last thirty years. And it’s a very good way–and produced some amazing transformations, and has worked underground, as with open source software, where it found antagonist policies. The internet, the web, WordPress, and this blog are all results of this old way, as is the very idea of technology transfer involving patents held by university investigators. All of this has its roots in freedom, not compulsion.
Rather than trying to complete a distorted shrine to control, a kind of burial ground for invention and opportunity under a rhetoric of promoting innovation, universities must dedicate themselves to exploring personal and group freedoms in all their frabjous wonderment. We know more than we did when Bayh-Dole was passed, and we have missed the opportunity, while breeding an amazing zombie empire, to learn a lot more than we have. Now things are opened out, we have a chance to change direction, to restore direction, to grow accustomed again to the heft of personal and group opportunities, commitments, and responsibilities for research events, and to judge people by the strength of their choices, not by how closely they follow an administrative set of first-dibs rules imposed on them as a condition of their doing what they do for science, for scholarship, for society. In short, we have the chance to have feck.
Down in that valley, there’s mammoth meat. See the dust on the paths? Up on the ridge, we can see another valley, where the race isn’t to the swiftest and the job of universities is not to be there first and take everything they can. I’m headed that other way. I think it is a good side of history to be on. I think it’s got lots of room to work. Not IP heaven, a place where nothing ever happens, but wild, like the West that some tech transfer managers apparently fear, a West with freedom, opportunity, and character. Our best work is ahead of us, being a part of breakthrough networks, imagining futures, and playing changing roles in making some of those futures happen.