Posted on November 28, 2010 by Gerry Barnett
University patent administrators are proposing a distorted reading of federal regulations in an effort to ensure that you never own your own inventions, even when you make them on your own time, outside of the use of university facilities. They think it makes for a great national innovation policy for university bureaucrats to confiscate inventions, under the guise of defending the public from university researchers who otherwise might want to have a say in how their inventions are made available to the public.
The patent administrators are so sure of this that they are making the case right now to the US Supreme Court over a law case called Stanford v. Roche. If they win, it is lights out for all private agreements involving inventions until there's an actual reduction to practice. If even one federal research dollar at a university touches the work, then university bureaucrats will not even have to ask you to assign ownership of your inventions-they will already own them! And it may even be an ethics offense for you to resist, or even try to have a say in what happens.
The patent administrators who set up to support faculty with patent resources now aim to take over the show. They argue they know more about inventions and innovation than anyone else at a university-more, certainly, than the investigators who propose research, hire the people, do the work, get results, recognize inventions, and decide where and when to publish. No, none of this counts anymore. University patent administrators claim that holding up industry for money is the best route to innovation. In essence, they propose to become the next wave of patent trolls, ensuring that American innovation arising from university research will be driven by demands for payment rather than collaboration, standards formation, exchange of rights, and open innovation.
As it stands, universities already have become dedicated patent accumulators, obtaining many more patents than they are able to license. As patents age, they become ever more likely to be used to troll industry and entrepreneurs than to inspire the next round of innovation. Accumulated research patents become a liability to innovation, not its source. Patent accumulation fails university inventors and investigators, and also fails the communities they serve. University patent administrators, however, want to make their patent accumulation more efficient rather than trying to diversify the available resources by which innovation comes about. Their objective is to make more money threatening industry and entrepreneurs by making short work of acquiring ownership of inventions. They don't want to have to even ask for rights, and certainly they do not want to negotiate arrangements with university inventors.
What the patent administrators propose is unconstitutional. They intend to use federal law to acquire private property without due process or just compensation. Invention rights are private property under the Constitution. The patent administrators invoke the Bayh-Dole Act to take those rights, yet their own portfolios show that most of the inventions they take are never licensed. Inventions go to university bureaucrats to die. The bureaucrats say these inventions have no commercial value, and inventors should pipe down. If that's the case, why did the bureaucrats take them in the first place? Whatever value research inventions might have is consistently destroyed by bureaucrats taking ownership without any capability to add value. There is no just compensation for the great majority of university inventors. Worse, their inventions never contribute to community-not to products, not to research, not to collaborations with industry, not to the lives of any of us.
Oh, and what the patent administrators propose is also lousy social policy regarding innovation. The innovation they propose-using patent rights to entice future monopolists to invest-merely entrenches the status quo and pits one part of it against others for money positions. It's the most dull and uncreative use for university inventions one could imagine-and it is the only one that these patent administrators think is worth their effort. Which says much about their collectively level of creativity.
There is hope. The Supreme Court may rule that what the university patent administrators claim to be doing is unconstitutional and throw out their practices, or perhaps even the Bayh-Dole Act itself. That would give the creative part of the university a chance for a reset. University-based inventors would then have an opportunity to make a case for the importance of personal freedom and choice in the development of inventions, just as there is overwhelming support for a university faculty's right to publish.
Universities taking outright ownership of research inventions amounts to a huge restriction on the right to publish. What is the point of publishing inventive research results if no one is permitted to use those results? Universities will not even grant outright research use of inventions to which they claim title. They would rather create the uncertainty that their exclusive licensees could threaten to sue other universities for infringement, since this uncertainty would add value to the license they hope to grant.
If the patent administrators win, graduate students will not be able to practice anything inventive that they learn-or even what they invent-in their research without the permission of university bureaucrats. They cannot take jobs in industry to practice what they know without that permission. Similarly, faculty will not be able to consult on inventive work outside of their university work. Companies will rightly fear that some part of the work will be claimed by the university after the fact. A prototype gets built with federal funds, or another university employee contributes an idea in conversation-and oops! title passes to the bureaucrats.
Whatever the outcome of the complicated case between Stanford and Roche, the university patent administrators, supported by their university presidents, are poised to turn the creative university researcher into another form of corporate drone working for a bureaucracy that values compliance, consistency, and avoidance of risk. University inventors will be unable to give away their inventions, unable to commit their personal efforts to development, unable to choose those people who they prefer to work with, unable to pick company partners, unable to plan strategy. Everything will be with the bureaucrats!
Isn't that the vision we all have of research innovation? There's a research breakthrough! But no, first university bureaucrats have to swarm over it, take it, put it through proper procedures, and then figure out how to hit up industry for money. Is that how it should be done? And made more efficient every day? Should it be that university inventors can be involved only if they are docile, deferential, and willing to assist when that big shakedown of industry happens-if ever?
The outcome that university administrators propose is to accumulate inventions into little mortuaries of research creativity. Here's to waiting 20 years to practice anything inventive from a university unless you are a monopolist investor willing to pay. The great innovation bouncing around among patent administrators now is that the monopolists don't even have to pay very much!
If university research and the inventions that come from it are to have a life, patent administrators have to be deeply discomforted of the notion that they are more important than the researcher teams they serve. For that, university inventors and investigators need to speak out. They must insist that they be respected for the early, important role they have in the life of innovation. While not every university inventor knows all the details of patent applications and licensing, they often know a heck of a lot more about what will happen next and who might play a role than any university administrator, no matter how well meaning.
University inventors do not need kind-hearted prison guards for their inventions. The effort to commercialize university inventions has become a bureaucratic wall designed to keep inventors from working with community. Faculty, students, and staff scientists alike are being walled in, not by malicious corporate investors, but by something far worse, bureaucratic policies and administrators who learn to say all the right things but in practice can do startlingly little of what they say. If they get outright ownership of university inventions under Bayh-Dole, we can kiss the role of federally funded American research innovation good bye.
If you don't like that idea, then this is the time to make known your position. Ask faculty investigators to take up the issue. If you are a patent administrator and don't like what your university and patent administration organizations are doing, others need to understand why you have to keep silent. Anything you say in public may be a cause for administrative retaliation, costing you your job if not your career. But you can withdraw from organizations that do not support your values and beliefs. No one forces you to spend your time and money there.
It is time to break the invention stranglehold that patent bureaucrats aim to put on university research-an engine of creativity and economic development that became that way through no forced involvement of university bureaucrats, and which will continue to play a valuable role if the services that support inventors and investigators are the ones the inventors and investigators choose.