Blasts from the Past

Here is the University of Arizona invention policy statement from 1939.  Simple voluntary approach with a breakout for expressly set out positions, with inventors owing 10% of their proceeds to the University if they are not using Research Corporation and the terms under which that agent operates.

Here is the University of Texas policy from 1945:

Texas adds a tiering system so that the University’s interest in becomes 20% when royalty income exceeds $5K.  At a doubling every 24 years, say, the $1K limit would be $12K, and the $5K limit would translate into about $60K in present dollars.

MIT and Stanford at the time both had compulsory policies.  MIT’s asserts ownership outright in its 1932 policy, with a reversion of some or all rights back to the inventor “after a reasonable period” if MIT does not choose to acquire rights.

Stanford requires a review of inventions by a “Patent Committee” that reviews.   that reaches to the president of the university, but if the president decides for Stanford, then assignment of the invention is required.

Stanford’s policy is all-or-none.  If the University wants the patent rights, it goes through two levels of review.  If the University wants the rights, it then commits to filing and paying for the patent work.   If the University declines the rights, then it has no further interest in the invention.  I get the sense from the way the policy is written that the drafters believe that a University decision to pay for the patent work is seen as something of a valuable gesture to the inventor.

Penn State’s policy, from 1931, distinguishes inventive work based on whether there is a contract.  If no contract, then patent law prevails.  The policy then restates its expectations under patent law–title with inventor unless the inventor was hired to invent, was directed by the administration, or on “College time” or with its facilities.  ”College time” is interesting in this regard.  The usage would parallel the idea of employment by the university to conduct investigations at the direction of the College, not simply any time that the employee happened to be “on campus” or “at work”.

These elements here parallel many later statements of the claim, but not as restatements of patent law but rather as claims in their own right, on the premise that the policy *is* the contract.   The policy goes on to consider issues under a contract–which appears to be akin to a sponsored research agreement–and provides for College ownership unless there’s a different arrangement with the sponsor.

California in 1943 had perhaps the simplest statement of all:

Note, however, in its simplicity this policy statement distinguishes ownership and agent. Both are established as “optional” for the inventor.  One can imagine a situation in which the inventor desires the university to own an invention, but wishes to appoint an outside firm as the agent to manage licensing.

While the discussion today regarding ownership of university-based inventions is front and center, the issues go back a long time.  We can see that Stanford and MIT early on asserted ownership positions in inventions, while a number of public universities went the other way and took at most a limited financial interest in the exploitation of patents.

This diversity of positions awaited those drafting the Bayh-Dole Act.  I have found nothing to indicate that a purpose of the Act was to force universities into a single way of handling ownership of inventions.  Indeed, the implementing regulations and the standard patent rights clause appear to be as sophisticated as they are precisely to accommodate multiple university approaches to ownership.  The only stipulations that the government requires university administrations to flow down to potential inventors are to report inventions, to sign paperwork to support patent applications, and to sign paperwork establishing the government’s rights in inventions.   These, while appearing as requirements with regard to the *government* act as releases with regard to any contract or policy between the university administration and its potential inventors–that is, the reason for disclosure and assistance in filing applications is not university policy but rather the commitment that potential inventors make *to the government*.   Similarly, as a condition of federal funding, the university administration is to release its potential inventors from obligations to the university so that they may fulfill their obligations to the government by way of  ”establishing the government’s rights”.

It’s much easier, I know, simply to assert a uniform ownership position–that universities own all invention rights made with federal support.  One might even follow the MIT and Stanford lead on this and say it is only natural and right that institutions should own such inventions.  Yet we find in the record universities with quite the contrary view, that it is only natural and right that inventors should own their scholarship, and any arrangement with the university should be voluntary or optional.  The area in these policies that matter appear rather to concern a financial interest, not an ownership interest.

At the heart of it all, one might ask:  Does a diversity of policies regarding ownership create a more advantageous environment for everyone?  Is it necessarily a goal to harmonize all university policies?  And if so, what recommends the compulsory approach pioneered by MIT and Stanford?

It should be clear that federal policy did not, with the Bayh-Dole Act, demand such a harmonization, and in fact went out of its way to avoid doing so.  But it is also now very clear that Stanford and MIT went a long way in Stanford v Roche to rally as many universities as they could to prop up their compulsory model by arguing that federal law preempted any defects in their attempts to take ownership, enshrining institutional ownership as a precept of federal funding of university research.

Given the examples from the past, my thought is that diversity is good, that having a number of universities with voluntary approaches to intellectual property is also good, and that a harmonization of such policies to any one standard is not so good, especially where that standard would be the compulsory institutional ownership of all inventions as a condition of employment.   It is one thing to argue for the successes of a given pattern of approach, but quite another to attempt the case that this one approach, if adopted by all, will provide the best results for a national approach to research-based innovation.

I for one am fine with Stanford and MIT hanging on to their compulsory approaches forever.  What I want to do is *compete* with them by demonstrating other approaches that work better–way better–for smaller schools, public universities, colleges in rural areas, schools that want to collaborate with each other (again, unlike the stated positions of Stanford and MIT), and for faculty with commitments to others that won’t be expressed in terms of the money an institutionalized patent licensing office can make.   In such an environment, as in music, harmony comes from singing different but related notes to achieve an overall effect, not from a monotone that follows Stanford and MIT down the road to institutional control over matters of research innovation.

It is time for many university administrators to stop trying to imitate Stanford and MIT. Those institutions have their ways and their importance, but there is no mandate to be like them in innovation policy and there are many reasons to pursue approaches to research, collaboration, and innovation that they will never consider.

About Gerald Barnett

I have worked in intellectual property management since 1991. I presently consult for various universities in the US and elsewhere, and for companies working with research innovation.
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