Free Agency Angst

First thing, I’ve meant to be more consistent with posting, but got caught up in launching a small “idea pitch” competition for students.  It was a good experience, and fun was had by all of course, but I didn’t see daylight for the past couple of months.  However, as my schedule has returned to normal in the past week, I noted increased discussion in technology transfer circles on the subject of “free agency” and the rise of a more concerted “just say no” campaign. Ordinarily, I would steer clear of the subject—for me, it falls into the cateogry of a subject better left alone if there isn’t a good chance to have a calm and reasoned discussion. On the other hand, I’m not ever clear that the subject truly is “free agency” (whatever most people mean by that) or if it gets back to the “Stanford v Roche” questions on ownership of inventions made by university researchers. The two are, of course, linked.  But ownership of intellectual property should be a question that can be answered factually.

I won’t make any attempt to revisit Bayh-Dole legislation, or the Stanford v Roche decision, and interpret those in any way–Gerald Barnett  is doing this with much more rigor than I would be willing to devote to the effort.  I would just say the answer is along the lines of “in a particular case, figure out who owns the intellectual property.”  The owner of the intellectual property—whether by right of inventorship, by contract or voluntary assignment, or by any other means of acquiring ownership which you might imagine—is entitled to make decisions on how to manage the rights. Free agency is actually the default option when the inventor(s) own(s) intellectual property.  But so what?

In the end, you simply have to ask, what are the real goals of university technology transfer?  Intellectual property protection is really meant to help market investment, to develop innovations more quickly and efficiently.  The party who makes the product/market development investment does so with some assurance that an enforceable patent will allow for at least a moderate period of uncontested market share—at least in theory. Since universities generally cannot take products directly into the market, and since an inventor rarely has the experience or resources to do so, licensing of patents is the default mechanism for inventions originating from university research. In my experience, the primary reason that faculty researchers are interested in technology transfer is to see that their knowledge is transformed into a real world solution to a problem.  They choose to work with any licensing agent (whether internal or external) only if it seems there will be more benefit than bother associated with the activity–that is, when they feel strongly about getting a product developed and on the market.   This may. or may not, include an expectation of significant financial rewards as well.

I’m very supportive of the licensing staff at most universities; after all, that is the role I’ve served for over sixteen years.  I know all about the constraints and obstacles facing technology transfer efforts. I understand that a lot of the so-called “failure” there is rooted in circumstances that can’t easily be addressed (such as lack of funds to staff the office, or for prosecution of patents). Thus, it isn’t obvious that free agency will solve specific issues and problems with commercialization of university inventions, anymore than salads at fast food places solve the so-called epidemic of obesity.  However, as much as we might hate to admit it, there are too many problems with management of intellectual property in a university setting to ignore. There may be lots of arguments against current proposals for so-called “free agency” but I find it difficult to oppose considering the model, at least in some form.

Even  if free agency is an option, faculty would need to be motivated by other considerations to take advantage of their “freedom.” Since many of the free agency models are only dimly conceived—Who, exactly, are these “agents”? And how would they engage with faculty?–it would be necessary to think through the consequences of how a particular model was implemented. Many of the free agency proposals seem to assume that the “successful” university systems would be open to managing the patents for others. On that front, I cannot imagine that a university would allow their technology transfer office to work with another university’s intellectual property on a regular basis.  Of course, joint ownership is an exception, but even then I’ve known it to work both ways. There are multiple cases where I was perfectly content to allow another university to “take the lead” but was met with resistance from the other side, where my counterpart was hoping my office would manage the intellectual property.  It can be a great temptation to have someone else bear the expense, and be the bearer of bad tidings when a decision is made not to file a patent, etc..  Thus, it wouldn’t seem that free agency is always a bad deal for the technology transfer office.

So why not take a serious look at the model and see how it might be implemented to advantage in a particular situation? I doubt that this means a complete shutdown of the technology transfer offices. There are many facets of intellectual property management that the university will still want to deal with directly, and until there are more examples of specific routes for faculty to pursue, the existing licensing office will be the first stop–how else will faculty know where to go? It might not be a very attractive option for faculty when such a system is implemented at first, due to simple inconvenience and lack of other options. Of course, there are a few independent licensing groups, and sometimes attorneys can freelance this sort of work, but these aren’t simple options for the average faculty member to find and evaluate. Even if you work in this arena for many years, it can be difficult to engage with a suitable partner. Further, the terms of such a relationship might be a significant barrier—exactly how much does this option cost faculty?

Honestly though, I think it is worth the experiment. If the benefits of this kind of arrangement do outweigh the “free” option of the local university licensing office, how can you argue with this? I won’t, however, hazard a guess at this stage on how effective the free-agency model will be in practice.  After all, if the primary and most obvious “agent” available is still the university’s own technology transfer office, or at least the closest “bigger” university office,  it’s not clear this will result in great change.  Still, I think there is room for innovation in technology transfer itself, not just in the research results from the university laboratories.