What is and what should never be

Posted on April 28, 2012 by Gerald Barnett

I have a special regard for the Bayh-Dole Act from spending so much time working with it. I am impressed with the way that it balances uniform agency policy regarding federally supported inventions with the diversity of practices potentially available to promote the use of inventions in the private sector.  I am fascinated by the way in which the Act advances an agent model to deal with the competition between personal and institutional interests in ownership of inventions.

Especially interesting is the way in which the Act mandates a patent rights clause that in turn, when incorporated into funding agreements, requires university administrations to release their inventors from institutional claims based on employment or use of facilities and in their place require university investigators to make an agreement with the government to protect the government’s interest, however the inventors decide to go with choice of agent.  I like the way this arrangement–if it were ever practiced–would permit faculty investigators (and inventors) to establish contractual relationships with invention management agents that made the agents accountable to the inventors for the approach taken to licensing, the money made, and the outcomes.   Bayh-Dole proposes a new kind of patent agreement for any invention management agent, led by faculty inventors rather than by their employers, that is to be used in the context of federally supported research.

These gestures are important ones.   Continue reading →

Posted in Bayh-Dole, Stanford v Roche, Technology Transfer | Comments Off

A map of the Atlantic

Posted on April 22, 2012 by Gerald Barnett

The Atlantic has published yet another retrenchment piece by Allen and Bayh.  At least there is no question where they stand on the matter:  comprehensive, compulsory stripping of faculty rights to inventions is the way to prosperity and should be adopted by any self-respecting administrator, not because it will make the institution a lot of money, but because, well, it’s just the right thing to do for America.   Some university administrators are passing around these articles by Allen and Bayh, going, see–if Allen and Bayh make an argument lacking substance and ignoring Stanford v Roche, then they must be right about present assignments, too.  How very reassuring.

There will be time to discuss issues in concisely in other forums. Here I work through their Atlantic piece paragraph by paragraph.  Take this as a map of possible responses. I expect to update this piece from time to time, and add more links to document my points.

Summary:  A&B’s arguments repeatedly don’t hold up.  They mischaracterize Bayh-Dole in defiance of the Stanford v Roche decision, they get the technical details of Bayh-Dole wrong, they show a decided lack of knowledge of IP practice, and they appeal to a bent for administrative order over personal initiative.  They appear to be advocating for Stanford, MIT, and WARF to continue to dominate public discussion of ways to innovate, when it is these very institutions that raised these same A&B arguments in Stanford v Roche and lost at both the CAFC and the Supreme Court. Continue reading →

Posted in Bayh-Dole, Policy, Technology Transfer | Comments Off

The Dumbest Possible Model

Posted on April 18, 2012 by Gerald Barnett

It’s hard to describe how devastating the Stanford v Roche decision is to autocracy-minded university bureaucrats.  They claimed Bayh-Dole requires university ownership. So they instituted policies that require university ownership, “to comply with Bayh-Dole”. Then they argued in Stanford v Roche that Bayh-Dole vests title with universities, so they don’t really have to have ownership policies in place at all.  But the Supreme Court rejects their arguments and rules that Bayh-Dole is about relationships between universities and agencies, not a secret change in patent law regarding initial ownership of inventions.   Anyone who works through the law, the implementing regulations, the standard patent rights clauses, and the regulatory framework for federal grants to universities will see that the Supreme Court got things pretty close to perfect with their reading of Bayh-Dole.

Now the bureaucrats are trying to salvage the policy architecture they have created—terribly flawed and unreasoned as it is– and are seeking any way they can to pin down institutional ownership of inventions.

How did this situation develop?  Continue reading →

Posted in Bayh-Dole, Bozonet, Commons, Policy, Present Assignment, Sponsored Research, Stanford v Roche, Technology Transfer | Comments Off

How Bayh-Dole was used to expand university IP claims

Posted on April 16, 2012 by Gerald Barnett

I’ve put together a graphic that shows a cascade of possible places where a university and faculty might consider the matter of ownership of inventions and works of authorship.


I’ve arranged things into various rows, each with a corresponding letter for reference.   Continue reading →

Posted in Bayh-Dole, history, Policy, Present Assignment, Stanford v Roche, Technology Transfer | Comments Off

A carefully crafted scheme

Posted on April 14, 2012 by Gerald Barnett

How should a federal government deal with ownership of inventions made at universities with federal support?  Consider the situation that existed at the time the Bayh-Dole Act was being implemented.  Many universities did not have technology transfer offices of the form we have today.   A number used research foundations.  Many others had deals with invention management agents such as Research Corporation.  Research Corporation, facing logistics challenges in dealing with many universities, advocated creating local technology transfer offices to work with inventors, obtain disclosures, and then send these along to RC for review and possible management.

The technology transfer office was a finder, not a keeper.  Ownership and licensing were matters for the invention management company.   At the University of Washington, for instance, that’s how the Office of Technology Transfer was originally conceived, with the Washington Research Foundation, modeled in part on Research Corporation, serving as the licensing agent. Very few universities–notably MIT and Stanford–had internal licensing offices.

For those working on implementing the Bayh-Dole Act, the challenge was dealing with this existing diversity of practices.  Continue reading →

Posted in Bayh-Dole, history, Policy, Technology Transfer | Comments Off

A present assignment wouldn’t have saved Stanford claim

Posted on April 13, 2012 by Gerald Barnett

Since the topic keeps coming up, let’s look again at Stanford v Roche.   The standard analysis is that the case teaches universities that they have to make their invention assignment agreements “tighter”.  The argument goes, in Stanford v Roche a promise to assign was trumped by a later present assignment, hence the interest in the dissenting discussion of FilmTec in the Supreme Court decision and the importance of distinctions between equitable title and legal title.  This analysis is simply incorrect.

The present assignment is a non-issue.  Yes, it was the means by which Cetus (and then Roche) expected to have an ownership interest in inventions made by the post-doc.  Yes, it was found to be a valid assignment.  But it did not trump an earlier promise to assign.  It trumped a later attempt to obtain assignment.  Any valid assignment, however made, would have trumped the later attempt to obtain assignment, given that Stanford was on notice of the assignment.  The important part in “present assignment” is assignment, not present.

In reviewing Stanford’s patent policy, the CAFC quotes this section:

Unlike industry and many other universities, Stanford’s invention rights policy allows all rights to remain with the inventor if possible.

This language is consistent with the idea that obligations to sponsors may require a university to take title to inventions, or to require inventors to assign title to sponsors of research.   Continue reading →

Posted in Bayh-Dole, Policy, Present Assignment, Stanford v Roche, Technology Transfer | Comments Off

A serious flaw in a paper about a serious flaw in Bayh-Dole that isn’t a flaw

Posted on April 12, 2012 by Gerald Barnett

A recent paper argues that there’s a hole in Bayh-Dole’s treatment of assignments.  I thought that for a while, but then I went and read the law and the implementing regulations and realized that there was no hole.

In Stanford v. Roche, the Supreme Court took a very “textualism” approach and refused to read the text of the Bayh-Dole Act guaranteeing ownership of federally funded inventions for contractors of the federal government through an automatic transfer from the contractors‟ employees. This interpretation effectively eliminated the federal government‟s rights under the Act in federally funded inventions if its contractors fail to secure ownership of invention from their employees because these rights are provided through the contractors’ ownership of such inventions.

This is an excellent example of how easy it is to fail to understand how Bayh-Dole operates. (Sorry, Toshiko–I hope you’ll modify your paper–I have always respected your insights).

For those new to this blog, I’ll reprise the way the law works.   Continue reading →

Posted in Bayh-Dole, Innovation, Policy, Technology Transfer | Comments Off

The Retrenchment Movement

Posted on April 12, 2012 by Gerald Barnett

The Stanford v. Roche case was about how universities get ownership of inventions under Bayh-Dole.  Stanford argued vesting.  The Solicitor General argued voiding all other alternatives.  WARF argued faculty were gullible, inept, and selfish.  AUTM threw sticks and dirt in the air.  Well, something like that anyway.  Irrelevant stuff about how technology transfer was built on assumptions that had to be in the law, and how it would all come crashing down, dooming America, if somehow it was any other way.  The Supreme Court didn’t buy any of it, and made a remarkably clear and insightful decision.

Now the retrenchment movement is in full swing.  First we get the present assignment advice, which says, basically, strip faculty of invention rights at employment, it’s for their own good and for any trendy words that come to mind–national competitiveness, economic development, innovation, commercialization, wealth creation.  Whatever.   Next we get a rewriting of history so that the law is imputed with the assumptions and intentions of some of the folks who worked on it, and that they rather than the courts should have the last word on the matter.   While it is interesting to hear what folks say their intentions were, those intentions are not legislative intent, and it’s irksome, to say the least, to have folks conflating their personal desires with the law to claim that anyone pointing out how things actually are set up to work under Bayh-Dole must be wrong.

No one in the retrenchment movement apparently has bothered to work through Bayh-Dole after the Supreme Court ruling to figure out what went wrong for them.   Continue reading →

Posted in Bayh-Dole, Policy, Stanford v Roche, Technology Transfer | Comments Off

Penn State gets innovative

Posted on April 11, 2012 by Gerald Barnett

Penn State has for years been one of the leaders in industry sponsored research.  In the past few months, they have also changed their IP policies on ownership.  Penn State has announced that it will no longer claim ownership of all inventions sponsored by industry grants.  The internal committee recommendations are here.

Hank Foley, the Penn State Vice President for Research, explains the backing thinking on the policy change in a story in Centredaily.com

“With this decision, the university will see increased revenues, because successful start-ups will repatriate the funds to a much greater extent than with the old ironclad licensing agreements that Penn State used to employ,” he said.

The Penn State thinking is, the university does not have to own and then license to get inventions into the hands of companies.   Continue reading →

Posted in Policy, Sponsored Research, Technology Transfer | Comments Off

It’s a dead parrot, guys

Posted on April 11, 2012 by Gerald Barnett

Joe Allen, whom I respect a great deal for his work on Bayh-Dole, won’t give up after the ruling on Stanford v Roche.  He has published a piece that aims to undermine the arguments I made in a commentary published in GEN.

Joe, however much you want to reconstruct the history of the legislation, and however much Sen. Bayh wants the legislation to reflect his present, personal intent for the law, Bayh-Dole reads as it does, and is implemented by the Department of Commerce as it is.  Law isn’t the whim of one person who worked on it, but is held in common, to be read and understood by citizens and interpreted by the courts.  That’s what has happened in Stanford v Roche, and the level thing to do would be to respect the judgment of the court on the matter.

It’s a dead parrot, Joe.  It’s not pining for the fjords any longer.  Your commentaries only serve to delay necessary change–change that would be a tremendous boon to the university technology transfer movement that you played a pivotal role in transforming.

For anyone with doubts about Stanford v Roche, read this. Continue reading →

Posted in Bayh-Dole, Policy, Stanford v Roche, Technology Transfer | Comments Off