That last post was no fun at all. I hope you skipped it. It just documents how bad stuff is so no one can feign that it looks pretty good, really. No matter. Perhaps long IP policies are doomed. If they are long and consistent, they are too complicated and there are too many ways to mess up. If they are long and a mess, then they are already messed up.
If we want to keep it simple, here are model policies that any university may adopt. I’m pretty sure these really work! Continue reading
11. The present assignment is so incompetently constructed it boggles the mind.
In a prior post, I included the above in a list of problems with UW’s implementation of present assignments. I added this one because, well, UW’s “goes to 11“.
The post is a longish one, and not for the weak of heart.
It’s here not for fun reading but to document just how defective the UW present assignment implementation is, and how defective the UW policy statements are behind it. At least things are consistent. If it’s going to be a turkey of a movie, it should have turkey acting in every scene. I didn’t enjoy writing this, and I’m rather pissed that I had to spend so much time documenting how bad things are. And this is just the tip of this big, cold thing.
The short of it is, the present assignment text in the outside work approval form is fatally flawed and inappropriate to the policy requirements for consulting. Continue reading
There has been some discussion going on about the recent UC UW requirement that everyone sign a new patent acknowledgement outside work request form, this one with a present assignment in it, with the claim that this change is needed to respond to the Stanford v Roche decision and that it is not a change in policy. Here are seven points about all this. I can elaborate, but why?
It would look like this:
You have chosen to join a project supported by the Federal government. As required by the patent rights clause in the funding agreement, the University requires you to make the following agreement to protect the government’s interest in subject inventions, that is, inventions that you may make within the planned and committed activities of the government-funded work:
I agree to disclose promptly in writing to my campus technology transfer office using the provided disclosure form each subject invention made under this contract in order that the University can comply with the disclosure provisions of the patent rights clause of the funding agreement, and to execute all papers necessary to file patent applications on subject inventions and to establish the government’s rights in the subject inventions.
Signed: __________________
Did you see this story in the New York Times yesterday? ”Sloan-Kettering Chief Is Accused of Taking Research”. Craig Thompson, who worked at a research institute affiliated with University of Pennsylvania, starts a company, Agios, and now is being sued for “taking research”. Apparently there are no specific claims–not patent infringement or removal of materials. It looks like Thompson did a lot of research, realized where new work could go in the area of cancer metabolism–what the company calls “metabolic rewiring“, and started a company to go after his ideas.
Universities do not own ideas–at least not yet, thank goodness. They do not have trade secret claims on faculty. They do not have non-compete claims for research (except sometimes limitations on being a PI for another organization on grants that could come through the university). They do not “own” “research”. Continue reading
Here’s a typical slide deck (it opens in PowerPoint–sorry non-’Softies) talking about Stanford v Roche and offering lessons learned. It looks like it was prepared by the University of Rochester’s Office of General Counsel. It does a nice job on the chronology, ignores Stanford’s policies and practices, and constructs a strange hypothetical that leads to a wonderful set of “lessons” that may be useful to keep in mind but have next to nothing to do with Stanford’s practice. I would go so far as to say it is talks like this that do more to obscure the lessons that should be learned than they help anyone understand practice. And this is a thoroughly typical, serviceable talk.
Here are some things the talk leaves out. Maybe the first lesson is to avoid abstracting a situation to a set of facts that mislead folks to a simplistic lesson about being careful about signing documents when they should be taking a hard look at their attitudes about collaboration, money, and innovation.
1) Stanford’s policy allowed inventors to own “whenever possible.” Continue reading
SB 6542 will force universities to a voluntary IP program, and is being opposed by administrators who believe it is a virtue to place institutional self-interest ahead of individual liberty…. Translated into Star Trek (TOS), it’s something like this: Continue reading
Global University Venturing has published an essay that explores yet another aspect of the present assignment situation, exploring the effect of institutional claims on the dynamics of innovation. In the essay I try to put in the context the arguments for central control that allow folks to justify public universities’ introduction of present assignments as a condition of employment.
For an example of how this new policy at Washington is affecting a lab, take a look at this post from the now not-so-Open 3d Printing site. The problem is, if you the outsider teach UW folks how to do something, and if the UW folks have signed the outside work approval form, then UW insists that they own your “know how” automatically, by present assignment. Of course, if the UW folks don’t sign, then they are apparently committing an ethics violation by not being complicit in baiting you to turn your ideas over, at least jointly, to the University for possible “commercialization”.
Is the approval form enforceable? Dunno. Continue reading
I have been emphasizing organizational conflict of interest. Most universities have no policy on such things, and therefore technology transfer has been allowed to make a transition from a broadly faculty-led activity with a diversity of practices reflecting the range of inquiry and personal insights that characterize a university to an institutionally narrow endeavor focused first on championing patent licensing, then bringing it in-house, then requiring it for some inventions, then requiring it for all inventions, and then seeking to force all inventions to happen in-house by requiring ownership for everything, and calling anything done outside a personal conflict of interest.
In essence, technology transfer operations got fixated on the money, and then because there was no check on organizational conflict of interest, made the equation public mission = money.
That, of course, is the same thing as saying, “run more like a business”. Put another way, it says, “to heck with the public mission, this is about institutional self interest. Because the institution is “public” then anything it does by definition must be in the “public interest”. Therefore making money is in the public interest. On with it! Continue reading
Senator Maralyn Chase has introduced a bill in the Washington State senate that would prohibit public universities from making compulsory claims of ownership of intellectual property based on employment or use of facilities unless required by a sponsor of research.
The text of the law is available here.
The University of Washington and Washington State University are, in a reflex action, opposing the bill, though it is in their best interests. The bill is motivated by a recognition that it is time to free up the creative capabilities of faculty, staff, and students to get out into the community and develop their ideas. They cannot do this if they have to wait for bureaucrats (however specialized, however well-meaning) to decide what to do with their ideas. Nor can the community–industry included–wait for a patent attorney to muscle up 35 pages of technical text that pushes all the risk and financial obligation onto a poor “licensee” just so that someone can read a scholarly publication and expect to be able to practice what they learn there. Continue reading
I have a perspective piece on ownership, stewardship, and Bayh-Dole after Stanford v Roche that has been published in Genetic Engineering & Biotechnology News. I thought I would put a link here if folks wanted to see it.
Everyone talks about IP ownership. It’s the big word on campus. The first thing you have to loot if your are going to be in the patent arbitrage game. Stewardship is the weak rhetoric. No university has an IP stewardship policy. Yet that is what they desperately need. When a university implements a present assignment policy–self-executing, compulsory assignment lacking specificity–and commits IP first to a unit dedicated to making money from IP for institutional self-interest and calls that a virtue, you have the makings for organizational conflict of interest. Not the personal stuff, but the stuff where the institution itself has compromised its impartial attention to the public interest and governing its affairs so it can dip in and take a little–or a lot–for itself. No university I know dedicates a share of its licensing income to the poor, or to other nonprofits, or to industry. Imagine, setting aside a million dollars a year for small companies to use for scientific research. ”Just ask, folks–that’s why we worked so hard to close deals.” Imagine the attention such a fund would half among entrepreneurs and second stage companies looking to grow through innovation. But no. It won’t happen because of institutional self-interest. The stewards would be kings.
And in that, there is a moral failing. Continue reading
