Inventor ownership solves trolling – inventors are far less likely or incentivized to abuse patents

[Gerald, “How can universities demonstrate they aren’t patent trolls,” Research Enterprise, 12/06/16, https://researchenterprise.org/2016/12/06/working-through-an-old-oped-on-university-ownership-of-inventions/, accessed 7/17/24, GDI-JCR]

If this scenario–which plays itself out repeatedly–is not what a university administration wants, then what might a university do to make it crystal clear that it won’t play the troll, that the troll operating model is not available to it, not even as a threat to leverage a deal?

Disavow Infringement as a Primary Cause of Action

There’s of course, an easy way–renounce patent troll practices. If industry adopts, that’s success. Patent or no patent. In fact, getting companies to report their use of a university invention is way, way, way more important than making them pay a price for use. There are reasons to invoke infringement, such as when the infringer is harming the public (not the university)–by producing defective product, or claiming to conform to a standard when they are not, or asserting a patent claim against a commons. One might also consider infringement when licensees have product on the market, having invested in doing so, and a free rider shows up unwilling to acknowledge the investment. Of course, when it comes to federally supported research, the university taking ownership of patents on subject inventions is the ultimate free rider, having contributed nothing and taking no market risks of its own. Perhaps universities ought to cut free riders a little slack, given their own lives in glass houses.

What, not sue? “We have to sue to show we are serious about our patents.” (I have heard this claim from university administrators in the wild.) “If we just give things away, then it is a race to the bottom.” (Also heard often.) The thinking behind such thinking is that the role of the patent is to drive up royalty income, not to “call forth risk capital” where none otherwise would show up on its own. All this fuzzes the brains of many monopoly-loving university patent administrators. Sorry, I can’t help that some of you are unsuited for the job. You do it, I know, for the money. Perhaps you don’t feel the need to think things through. All the worse.

Make University Ownership Voluntary (Again)

Make university ownership of inventions voluntary. That cuts both ways–inventors are not obligated to assign to the university and the university is not obligated to take ownership if offered. Most universities now have patent policies that demand ownership of inventions upfront, often using quirky present assignment language and yet more goofball (but deadly serious) language that insists that everyone has agreed to the policy. But this kind of thing is verbal trickery bordering on bad faith and doesn’t actually assign title to anything.

The starting point then is to offer inventors the right to keep their inventions, subject to any commitments they have already made involving the university or its sponsors or to a colleague (such as a principal investigator). Such an offer can be easily folded into practice. Add a check box on an invention disclosure form with the line: “I prefer to retain ownership of this invention.” If someone at the university won’t let you change the form, then ask the question directly. Offer to waive if you can. Most patent policies are written so badly that there is a way.

Some people find this suggestion horrible. “Why reject good TNT when you can make a big patent bomb with it for only $10K? Someone will pay for the opportunity to threaten to set it off. Don’t allow inventors to profit by finding that someone first. And don’t allow inventors to waste all the support they have been given by the university by not finding someone willing to explode that patent bomb. And don’t allow those inventors to profit in any other way–especially not in a way that isn’t part of our profit-seeking model.”

Please, get over it. Inventing is not a faculty obligation. Faculty get university support whether they invent or not, whether they have good ideas or not, whether they have good business ideas or not. If faculty want to profit from university support, they can do so a hundred ways that don’t involve patents. University authors also profit from university support. So do students getting an education–all those CS and MBA folks walking into six-digit salaries giving up only an address for the alumni association to try to hit them up for donations.

More so–the track record of university inventors, left to their own interests, is that they give back to the university and to the community over and over again. Inventors indeed might profit, but university inventors in particular are generous folks. Unlike some university patent administrators with their hardened consciences. Consider that if you are horrified by university inventors owning their inventions.