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.

Technology Transfer…Taking the High Road?

Creative Commons Attribution-Share Alike 2.0 Generic license, photo by Patrick Mackie

The Bonnie Banks o’ Loch Lomond, From Wikipedia, the free encyclopedia


O ye’ll tak’ the high road, and Ah’ll tak’ the low (road)

 And Ah’ll be in Scotlan’ afore ye

Fir me an’ my true love will ne-er meet again

On the bonnie, bonnie banks o’ Loch Lomon’.

In the course of any particular day, I am often approached with very general questions on topics related to technology transfer.  I am expected to serve faculty, staff, and students as a resource for information. In particular, this is meant to ensure that they fully understand the issues and processes, and can more effectively engage in commercialization activities. Unfortunately, this means that the questions posed may range from the legal/technical “what is meant by ‘prior art’?” to the more esoteric issues associated with policy and decision-making, such as “how can we become more successful in spinning out new ventures?”

Of course, the latter sorts  are the ones that keep spinning around in my head, since in many cases even I have difficulty with a clear, concise, answer.  In large part, this is because I recognize the inherent problems with decision making in these situations.  The real question being asked in some of the situations is “what is the RIGHT thing to do?”

At the heart of any decision is an effort being made to choose an action in pursuit of some goal.  In order to do so successfully, the decision maker must:

  1. Clearly articulate the goal
  2. Identify options available for some active choice
  3. Understand the consequences of those alternative choices
  4. Evaluate other factors which might impact the final decision process

In this general sense, many decisions are conceptualized as a “cost-benefit” analysis, with the decision-making process focusing on the relative gain attendant upon a choice relative to the loss or “expense” involved.

Obviously, some decisions can be made using much simpler processes, such as a coin toss. Such decisions are often made by single person, on matters with little impact on either that individual or anyone else (yes, I would like iced tea to drink), and no complications.

Australian Rules Football match at Hyde Park, London, on 8 January 1944. Source:  Australian War Memorial

 This image is of Australian origin and is now in the public domain because its term of copyright has expired.

Other decisions, however, require extraordinary efforts directed toward fact-finding and analysis, along with multiple meetings of large groups of people who must conform to a formal structure for coming to a decision.  This sort of decision is likely to impact larger groups, or have potential consequences that justifies investment of time and energy into making the best choice possible. Furthermore, this may involve individuals or groups with widely divergent opinions on what constitutes the “best” choice.  Frequently, the decision is couched in terms of “right” and “wrong” such that there is an unfortunate attribution of possible fault and blame attendant upon the choice.

For decisions related to technology transfer, the process can be extremely complex.  Choices may be constrained in various ways that are uncomfortable for those involved. The culture of academia can also play a larger role than is typically appreciated—this may amount to a set of “almost sacred” values held by some of the people involved. Frequently cited values in academia include “academic freedom” and “dissemination of knowledge,” but there are many variations along these lines, attributing a sort of “purity” of thought and intentions to the academic world.  If technology transfer decisions are subjected to this sort of “good vs. evil” analysis, there will be individuals on both sides of the question claiming the moral “high ground” as it were.   Suddenly, it becomes difficult to decide which position constitutes the “high road” and which the “low road.”

This is further complicated when you realize that perhaps no one knows which road—the “high” or the “low” one—is “better” in some absolute sense.  As the Wikipedia article points out, there may be different interpretations brought to the imagery.  The low road is sometimes equated with death, the soul of the departed Scotsman returning home, so the traveler on the “high road” may be making a more expeditious choice, but not necessarily a “better” one.  There is a sort of moral judgment implied of course, but there remains room for speculation on the relative values demonstrated.

A recently published study [Philosophical Transactions of the Royal Society B: Biological Sciences, Vol. 367, No. 1589. (5 March 2012), pp. 754-762] confirms that the brain actually processes decisions differently if the choices involve “sacred” values held by a particular person.

Economic, foreign and military policies are typically based on utilitarian considerations. More specifically, it is believed that those who challenge a functioning social contract should concede if an adequate trade-off is provided (e.g. sanctions or other incentives). However, when individuals hold some values to be sacred, they fail to make trade-offs, rendering positive or negative incentives ineffective at best.

Obviously, this is true for university policy as well.  As the authors in the study point out, policy decisions are seldom made with any degree of introspection on the possible difference in value judgments on the subject in question. The study concludes that there is a problem encountered when attempting to evaluate certain choices when viewed against deeply held convictions–the brain simply doesn’t process this sort of decision well.  The entire process takes a different track so to speak.

Given this understanding, it’s easy to see how difficult the choices might be for university technology transfer.  In fact, there may be surprisingly little effort made to analyze some of the “defacto” decisions made, under guidance of existing policies. In worst case scenarios, policy is wielded as a weapon (either against a faculty member or a potential licensee!) and the university (technology transfer) agents are derided for being “inflexible.”  The university representatives feel it is a matter of taking a stand, holding positions consistent with their understanding of their institutional policy. They are held to this standard for making the decision. No matter how “reasonable” the tech transfer office might wish to be, university administrators can be hostile to suggestions that policies provide for flexibility—after all, what would be the point in having a policy then?

Thus, when I am posed a question that has at its heart, a possible conflict with the deeply held values inherent to the academic world, I tend to hesitate in providing answers. While not  “sacred” on par with belief in a deity, there is sometimes an undercurrent of feeling that technology transfer involves something “not right” in the context of the presumed mission of the university. For some researchers, a decision has already been made that commercialization is “good” for the university, and much of the decision-making process defaults to typical “cost-benefit” categories.   But there will be faculty for whom this kind of answer is insufficient.  In order to work with them, to give real answers to their questions, it is important to realize that technology transfer is perceived as putting a price tag on something that isn’t even on the market.  I do try to respect this position and in the course of doing my job, attempt to bring clarity and consensus to the decision-making process in technology transfer.  Even when I’m tempted to just toss a coin!

University Technology Transfer and Unintended Consequences

In the social sciences, unintended consequences (sometimes unanticipated consequences or unforeseen consequences) are outcomes that are not the outcomes intended by a purposeful action. The concept has long existed but was named and popularised in the 20th century by American sociologist Robert K. Merton.

Unintended consequences, From Wikipedia, the free encyclopedia

In popular discourse, people often refer to “the law of unintended consequences” when debating the merits or shortcomings of a particular decision, or course of action.  Like any sufficiently interesting and yet complicated subject, it can be difficult to fully grasp what is really at the heart of such references.  It recently struck me that this is, in part, at the center of the many debates on the proper role of the university in commercialization of scientific research.  The initial inspiration for this post comes from a blog posting by Gerald Barnett (Research Enterprise, Oh, to be the happy dog again–side note, I try to read Gerry’s blog as often as possible and recommend it highly). In my experience the technology transfer office may be trying to accomplish goals that are not clearly defined or, as highlighted by this posting, are actually in conflict with some of the other goals of both the university administration and the faculty researchers.

It is all too easy to get swept up into the rhetoric on how the Bayh-Dole Act allows universities to “benefit” financially by licensing patents arising from federally sponsored research. From that basic premise arises a series of decisions and actions with consequences, both intentional and unintentional.  As the Wikipedia article summarizes the concept, unintended consequences can be roughly grouped into three types:

  • A positive, unexpected benefit (usually referred to as luck, serendipity or a windfall).
  • A negative, unexpected detriment occurring in addition to the desired effect of the policy (e.g., while irrigation schemes provide people with water for agriculture, they can increase waterborne diseases that have devastating health effects, such as schistosomiasis).
  • A perverse effect contrary to what was originally intended (when an intended solution makes a problem worse), such as when a policy has a perverse incentive that causes actions opposite to what was intended.

Note, this summary presupposes that not all “unintended consequences” are negative.  However, these tend to be the consequences that are eventually cited as unintended—nearly every positive outcome of a particular decision or action has someone claiming it as his or her own particular intention. Unfortunately, many perceive this as a challenge to make “better” choices, and so to avoid the negative consequences.

Thus, the technology transfer offices confidently point to “success stories” from the cannon of technology transfer gospel as a model for their particular University to embrace—whether that is actually a viable alternative or not.  Various University officials or administrators then look to the tech transfer “operation” as a source of alternative income, one that is desperately needed, and begin to expect ever-improving “metrics” in terms of licensing performance.  If your office realized licensing income of $10M last year, what are the projections for the following year?  What is the projection for next year, and the years after that? Why was there a drop of $2M this year versus the prior year?

If the technology transfer office produces alternative metrics—numbers of licenses, startups founded, patent applications filed, or issued patents—they are likewise put on a track to reproduce or improve those metrics year after year.  Often, these become a level of baseline performance for a university versus the performance of “peer institutions” or “aspirational” peers.  If your office can’t easily produce the metrics (and some of these are “easy” to produce, such as number of invention disclosures) what then? This can lead to an implied commitment to invest in the metrics—it’s important to remember that these decisions and actions are done at some cost.  This might include an annual patent budget, aimed at filing a respectable number of patent applications each year. After all, so the argument goes, you can’t expect home runs if you don’t get a nice number of “at bats” or base hits.  If you can produce enough cash, then you can produce patent applications, even issued patents. Funding a technology transfer office with a director, along with some support staff and maybe a couple of technology licensing managers, can represent a sizeable commitment of “overhead” funding.

This is when the tail might begin to wag the dog, and you learn, as Gerry points out, this doesn’t mean a happy dog.  A lot of investment and effort is being put into producing a pot of gold at the end of the research rainbow, which means dealing with troublesome leprechauns and associated tricky business.  Meanwhile everyone is still expecting those “smiles and fluffiness and public purpose, stardust and unicorns and glitter“ as it is nicely summed up in the original blog posting.  While I’ve pointed out the limitations of analogies in a earlier posting (here) this does get a couple of points across! You’ve got to remember, not every fairy tale has a happy ending, and there is always at least one character that is on the losing side.  This means someone gets stuck with the role of evil stepmother or nasty fire-breathing dragon.

It’s easy to keep with the script, stick with the stock characters and plots, rather than trying to put together a unique story. But this gets us back to that “law” of unintended consequences.  For all practical purposes, it’s impossible that positive consequences will be presented as “unintentional” and so there are no orphans in that part of the fairy tale. As for the rest, you might get some grudging acknowledgement of partial responsibility for negative twists in the story, but mostly you get rationalizations from the parties involved.  I like to think that we can work out some new plots for technology transfer tales, and maybe even endings with a few happy dogs.  You may still have a lot of those unintended consequences of course, but hopefully the “intended” consequences will make those worthwhile.

Giant Slaying and Patent Reform

Last week, I attended a local seminar on the America Invents Act. Much of the discussion at the seminar was centered on arguments supporting the nature of the changes made. There were recitals of “what was wrong” with the old U.S. patent code, and so forth; then arguments were advanced justifying the principal changes (although the presenters almost implied these might be “principle” changes!).Without getting into a detailed discussion on the virtues or failings of the AIA (such as “first to file” and whether this will hurt, or help, any particular party) the gist of the seminar was that the U.S. patent system was unbalanced and no longer served the original purpose of protecting “inventions” in a coherent fashion.

Following the AIA seminar, I was doing some online research, to support drafting of some funding proposals. Since I like to slip in the occasional “true confession” here, I confess that in the course of such research I often follow a wild goose “link” and wind up reading interesting bits of history or trivia. Thus, I came across a discussion of AIA on another blog, from the Hoover Institution at Stanford University–Patently Bad Policy by F. Scott Kieff. Toward the end of the post, Kieff writes: “To paraphrase Judge Jerome Frank writing in the 1942 case of Picard v. United Aircraft: predictable enforcement of patents helps give the Davids the vital slingshots they need to take on the Goliaths.”

I felt compelled to search out this reference and read exactly what Judge Frank had written. So, I wound up reading some case law –OK, I don’t get out much. I was amused to find a somewhat familiar discussion of the problems inherent in the patent system (and enforcement of patents). The opinion in this case (Picard v. United Aircraft Corporation, 128 F. 2d 632 – Circuit Court of Appeals, 2nd Circuit 1942) was written by Judge Learned Hand, with Judge Frank writing to concur. As I understood the ruling, two key claims of the patent were held to be invalid, but otherwise a prior opinion was upheld.

Judge Frank does agree with the opinion of Judge Hand in this case, but is not entirely comfortable. He took the time to discuss how some of the patent claims might “seem” valid until you looked closely. But in the end, the subject matter was a mere “improvement” not rising to the level of “patent worthiness.” He summarizes, quoting an earlier ruling from Judge Hand:

Nothing is an invention which is the product of “the slow but inevitable progress…through trial and error” and of “the exercise of persistent and intelligent search for improvement.”

Nevertheless, he seems to feel that the patent disclosed something of value and that the patent system wasn’t able to capture or protect this properly. He is concerned that all “modern” research (back in 1942) is conducted such that “trial and error” is the name of the game, and that the “exercise of persistent and intelligent search for improvement” will result in many ideas being “unpatentable.”

If that means that every kind of patent system is outworn, the idea is disturbing. For, as I see it, there seems still to be room for some kind of patent monopoly which, through hope of rewards to be gained through such a monopoly, will induce venturesome investors to risk large sums needed to bring to the commercially useful stage those new ideas which require immense expenditures for that purpose.

Obviously, since patent law is expressly intended to offer incentive and rewards to inventors, not investors, Judge Frank goes on to suggest that we “may not need patents as rewards to inventors” since:

Modern industrialism owes much to the ideas of Faraday, who cared nothing for money. Kaempffert writes: “To be sure, inventors long for wealth. So do poets. But the patent laws are no more responsible for great inventions than are copyright laws for great poems. Watt was no more impelled by the desire to make money when he invented the separate condenser than Milton was impelled to earn the equivalent of twenty-five dollars by writing Paradise Lost.”

He also suggests that what might be needed is something “patent like” to protect investment in research and development:

And so patent monopolies may still be socially useful; they may, indeed, as I have said, foster competition. The David Co. v. Goliath, Inc. kind of competition is dependent on investment in David Co. — the small new competitor. And few men will invest in such a competitor unless they think it has a potential patent monopoly as a slingshot.

It seems to me that this is at the heart of all the hand wringing about patents today—and even about similar difficulties facing copyright law. Thus, there are those who honestly believe that certain advancements in technology are not proper candidates for patent protection(such as software) or that there are too many examples of “incremental improvements” being passed off as inventions (as for many biotech patents). Likewise, there are those who see no reason to limit patentable subject unduly, since their primary goal is to offer incentive for investment in the development of products.

Many times in a meeting with faculty I’ve observed that while we certainly can file a patent application to protect software they have developed, it might not be the best way to protect it. Then again, I can’t say that copyright law is a very satisfying alternative, and I’ve always wondered why someone can’t come up with an innovative mechanism that allows for proper protection of this sort of work. Obviously there are many people who agree that these were NOT intended to be included in the realm of patentable inventions. Further, modern business practices essentially defeat the intended purpose of a patent. If software is going to obsolete in 3-5 years, of what possible use is a 20 year “limited monopoly”?

In the end I agree with Judge Frank when he states that “[the] problem is not whether there should be monopolies, but, rather, what monopolies there should be, and whether and how much they should be regulated.” How many “slingshots” should be put into the hands of how many “Davids”? Which “Davids” should get a particular slingshot?  And don’t giants get to have slingshots too? Remember, Goliath can’t have been too happy about the outcome of that mythical encounter with his David. But then, if the slingshot was used effectively, maybe it would deter a modern Goliath from interfering in the business of the David holding it, and there would be no cause to actually slay any giants, just back them off a bit!

For now it seems, the only answer to the problem is offered by the current AIA legislation, about sixty years after Judge Frank’s comments. Only experience will prove whether AIA achieves some of the desired goals, but hopefully, it is a move in the right direction.

Patenting the Doodle…

 To invent, you need a good imagination and a pile of junk.

Thomas Edison

In the course of a normal work day, most of us find ourselves online and we often use the website. The entry page of the website is famous for being almost entirely clear of the usual webpage clutter.  The page is a simple white background dominated by a banner header Google, with just a handful of links to specific sections of the information services also offered by the company (such as, Maps, to search Google maps).  The banner heading, also famously, is sometimes used for a bit of fun–to commemorate holidays or historical events, the word/logo Google is enhanced–with artwork and sometimes interactive effects. This is called a “doodle” by the company–my all-time favorite being the Pac Man Doodle game that was actually a mini-version of the arcade game.

For those who might have missed it, filed a patent application for the “method” of their “doodle” and that application has been reviewed by the U.S. Patent & Trademark Office, resulting in the issuance of U.S. Patent No.7,912,915 entitled “Systems and methods for enticing users to use a website.” The abstract for the patent is included below:

A system provides a periodically changing story line and/or a special event company logo to entice users to access a web page. For the story line, the system may receive objects that tell a story according to the story line and successively provide the objects on the web page for predetermined or random amounts of time. For the special event company logo, the system may modify a standard company logo for a special event to create a special event logo, associate one or more search terms with the special event logo, and upload the special event logo to the web page. The system may then receive a user selection of the special event logo and provide search results relating to the special event.

I call attention to this particular patent as an interesting example of a patent filed to protect an “invention” that is embodied as a software/information product.

First, I predict there will be many commentaries on the folly of the USPTO in allowing the patent to issue (similar to the older “1-click” patent issued to back in 1999, U.S. Patent No. 5,960,411). I will leave that sort of commentary to others, since I as a rule do not comment on the patent strategy elected by others unless that is of immediate concern to my patent strategy.  However, I do want to use it as an example of the kind of intellectual property strategy decision that can be extremely confusing.

What, exactly, does the patent allow Google to do now?  The answer, directly from the USPTO website, is that the patent owner is enabled legally “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.”  That is, so long as the USPTO recognizes the issued patent as still valid.

Without going into a lot of detail on the patent approval process, this key element of the patent system is at the heart of every decision to file a patent application.  You must ask yourself “what” is it about the invention that you would be able to control?  How important is it that this be something you can control? In order to evaluate this, the invention elements that are described in the Claims section of the patent document must be consulted—the claims describe the essential elements that must be present in any “product” that would infringe the patent.

This patent includes only four claims (less than 250 words) describing the “essence” of the Google doodle. By virtue of the patent, Google wishes to “preclude” others from constructing their version of the doodle, and the associated fun or “enticement” value that the doodle provides to the webpage.  The pundits will have a great deal to say about whether this is “patentable” subject matter.  In my case, I think the overarching concern would be is it “patent worthy” subject matter?

For most companies, I predict the answer would be “no” in the sense that they would only be “copycats” of Google if they attempted the same dedicated program of a modified banner logo as part of their own website development.  In that, the doodle patent is likely an attempt by Google to warn off such “counterfeiting” more akin to the use of a trademark.  Trademark law, however, cannot be used effectively because the logo is “changing” and trademark protection assumes that the marks protected be very specific words or images.  Note that this highights perhaps the limitations of current intellectual property law in general–companies are looking for ways to protect their assets, and modern technology has outpaced the ability of the legal system to “protect” certain elements of competitive advantage .

While no other reputable company would be well served by “copying” Google in this fashion, these companies also would not care to be unreasonably “precluded” from going about their own business by Google. I saw a passing reference (can’t recall where!)  from someone who felt this patent could be used to prevent other companies from making simple changes to their own banner logos (e.g., near the 4th of July holiday, adding a picture of a fireworks display next to the company logo/name).  However, if you read the claims carefully, there is a further element required—that the modified logo be linked to information related to the special event or holiday, so that this information can be delivered to the user when they click on the modified image. Note, this is very specific functionality, directly tied to Google’s core business—allowing users to find information on topics of interest to them.

So I think that for their purposes, the “invention” described is perhaps patent worthy to the company, so long as that worth is taken in proper context.  But, like any patent, it might lend an element of “power” to the company, and issuance of this sort of patent triggers a good deal of fear-fear of misuse of patent infringement claims against others.  Most companies would find that limited budgets for intellectual property litigation render “use” of the patent impractical. Google, with fewer limitations on budget, will likely be limited only by requirements of the legal system itself, and by common sense as it were.  Thus, many will bemoan the poor judgment of the patent examiner in “allowing” the patent, since there is always a chance that a well-heeled company with a “patent stick” can use it to torment smaller competitors.

Google, however, might see the question in a different light—without this patent, someone else might have attempted to file a very similar patent, and “come after” the assets of the company for infringement. Like many large companies with a lot to lose, they will bear the financial burden of the patent prosecution to build an IP “fence” around their product. The patent itself can also be useful for promotional purposes, even if it is not directly useful for enforcement against competitors.  Unlike Google, smaller companies have little incentive to pursue such indulgent intellectual property strategies. Truly key innovative concepts and elements must be prioritized in the decision-making process. Thus, whether or not this “doodle patent” represents an example of how the patent system is broken, it is at the very least illustrative of how the patent filing strategy must be evaluated in making the decision to file. No two organizations will face the same set of considerations, and so will pursue different strategies. Only later will the results show whether the strategic direction was successful.

Getting to Innovation

A journey of a thousand miles begins with a single step. Lao-tzu

In my career thus far, I have been in engaged in a variety of negotiations, and thus was always on the lookout for any kind of advice on how to improve my negotiation skills. One of the first books I read on the subject was “Getting to Yes: Negotiating Agreement Without Giving In” written by Roger Fisher, William L. Ury, and Bruce M. Patton. The title speaks for itself, and the book outlined a process for guiding a negotiation by first identifying the mutual interests of the two parties to the negotiation process, and building on that such that the parties would be able to reach an agreement. I’ve read a few others since that time, but found that I rarely executed the suggestions exactly as “prescribed” in the books. Like so many people, negotiation is a skill that everyone has engaged in at some level, and I tended to stick with the methods I had always employed in everyday negotiations–such as buying a home or car.

Likewise, a significant aspect of my career has been involved in the innovation process, but I did not consider myself as part of that process. I worked with people who were “doing” innovation, and saw my role as stepping in only “after” the innovation. I would add the “legal” and business components–the legal work for protection of intellectual property, and the contract negotiation. Recently, I have come to realize I might play a larger role, and so have done a good deal of reading on the concept of innovation. What is innovation? Who does “it”? How is “it” done? In the process I have begun to connect with others who are asking the same questions, and who are coming up with answers.

It’s still a bit early for me to confidently assert any insights of my own on the subject, but I am beginning to find some key resources that are quite helpful to me, including the following blogs I now read regularly for insight, advice, and inspiration. Some of these are more directly related to the concept of innovation and technology transfer within the university setting, but others are directed more generally to innovation in business.  Listed below are three of these that I find most interesting and helpful.

Research Technology Enterprise Initiative (Gerald Barnett, University of Washington)

Tech Transfer 2.0 Blog (Melba Kurman, Triple Helix Innovation)

Innovate on Purpose  (Jeffrey Phillips, OVO Innovation)

At this stage, I have learned enough to realize that I can be more than a bystander in the innovation process, and I believe that others face a similar problem. Even those more directly involved with “innovation” (in particular, scientists and engineers) may not have a good sense of how they fit into the bigger picture. As I move forward on this path, my goal is twofold–to learn from others with more experience, and then to apply some of the ideas. So far, it promises to be an interesting journey, and I’ve at least taken the proverbial “first step.”

The Trouble with Technology Transfer

For, quarreling, each to his view they cling. Such folk see only one side of a thing.

      Jainism and Buddhism.


    68-69:Parable of the Blind Men and the Elephant

I’ve spent the better part of two weeks pondering some basic questions on the subject of “technology transfer”  at public univerisities–with the primary question being “is the system broken?” Of course, there is an assumption that it IS broken, since so many people seem to think it so.  Thus, assuming the technology transfer “system” needs fixed, the question becomes “how should it be fixed?” As always, I wanted to look for data, and wasn’t quite clear what data would be pertinent.  I also wanted input and thoughts from others, since as my mom sometimes reminded me “remember, you’re not always the smartest one in the room.”

So I met with a few of my colleagues, I called a few others, and did some reading (for those who don’t know me, when in doubt, I often look to a book).  I read “The Innovator’s Solution” by Clay Christensen and Michael Raynor. On my way to work, I listened to the audio version of one of Seth Godin’s books, Lynchpin for inspiration (audio versions of his books always seem better than the text version).  I skimmed mutliple blogs on the subjects of innovation, invention, and technology transfer.  A lot of the input I received from all sources seemed to confirm the assumption that the system wasn’t working. There were also a lot of opinions on how to improve the system, some best characterized as proposing an entirely new system. I began to sense that the “problem” was overwhelming in the complexity of the thing…so many moving pieces!

Recognizing that one can only gain so much from reading, I then asked myself some of the same questions. After all, I’ve been “doing” technology transfer for over fifteen years now, and I’ve run into more than a couple of instances where the conventional system didn’t seem to “work.” It seems that maybe technology transfer DOES work for certain parties, but not for others?  Or maybe the conclusion should be derived from The Innovator’s Solution–it works under certain circumstances, and not in others?  The insights lead to more questions.

On the other hand, there is one simple answer–technology transfer does work when the parties to a particular transaction or project agree that it will work.  Naturally, this means that each party recognizes or acknowledges the interests of the other parties, and thus, they are able to reach a common ground.  They agree on the roles each will take, and the “value” associated with those (e.g., the royalty rate). The trouble creeps in when one or more of the parties insists on a different view of the roles or the value (or both). It can be terribly difficult work to find an “answer” that will satisfy everyone. 

For example, a faculty member might insist on a higher share of the income, or  maybe the prospective corporate licensee insists on a lower than expected royalty rate (one that allows for more benefit to accrue to the bottom line of the company).  In these cases, the licensing  office, the party who is “doing” the transaction, may be frozen.  Perhaps the university administration insists that policy or legal restrictions are more important than reaching a deal–what can the technology transfer group do? They don’t have the authority to override policy.  Even if they attempt to raise the issue for discussion, the administration might resist–they don’t see the need for an “exception” in this case.  Further, how much time do they really want to devote to make an alternate decision?

Everyone probably remembers hearing in school, a poem about  several blind men asked to describe an elephant, and each attempts to do so by touching the part of the animal which is closest.  While there are several versions of the story, this is often used as a parable to illustrate how a group of people can approach a question ostensibly on the same subject, and come away with different answers.  If each party is too focused on those issues most critical in their own view,the group may be unable to reach consensus on how to proceed.  At that stage, there is no way to reach agreement. Or if an agreement it is reached, it might represent too many concessions by one of the parties. 

However, in most of the instances I have encountered, the problems did not seem insurmountable at heart.  Rather, it was more often the case that one or more of the parties appears to have little incentive to work through the issues raised.  Like the blind men in the Buddhist version of the story, they are reduced to “quarrelling” and not negotiating. If  each party to a technology transfer deal approaches it with the intention of truly “understanding” the proverbial elephant, it doesn’t guarantee success, but at least success is an option.