University Patents Aff - Georgetown 2024

Notes
About Bayh-Dole and University Patent Ownership
The Bayh-Dole Act of 1980 did a number of things, a couple of which are central to the story of this Aff. Its purpose was to facilitate innovation by dealing with a perceived problem that federally funded research wasn’t resulting in commercial applications reaching the market. In many scenarios, the federal government ended up owning the patents generated by the research (and they weren’t effective at promoting commercialization), or the technology simply wasn’t patented in the first place. Bayh-Dole aimed to change the incentive structure by allowing universities and small businesses (and eventually corporations as well) to claim the patents for federally funded research. The Aff argues that this eventually resulted in a transformation of the way that universities oversee and manage faculty research, allowing them to take ownership of all patents produced at their institution and denying patent access to the actual inventors of the innovations – something that was relatively rare prior to Bayh-Dole. The affirmative changes things so that the faculty inventors are the owners of the patents of the technology they generate.
Terms
UOM = University Ownership Model
IOM = Inventor Ownership Model
TTO = Technology Transfer Office
TLO = Technology Licensing Office
VC = Venture Capitalist Firm
1AC
Adv – Competitiveness
The Bayh-Dole Act enabled university administrators to claim ownership rights over all academic research
Campbell, director of IP Law Program, 19
[Patricia E., “University Inventions Reconsidered: Debunking the Myth of University Ownership,” 11 WM. & MARY BUS. L. REV. 77 November 2019 acc. 7-17, GDI-LI]
Following the adoption of Bayh-Dole, university administrators continued to amend their IP policies to expand claims of ownership over inventions created on campus, even claiming rights in the inventions of students, visitors, and other members of the university community.130 Some policies justify these broad ownership claims based on the requirements of the Bayh-Dole Act and other federal laws.131 MIT’s Policy Statements relating to patents provide: Research contracts sponsored by the Federal Government are subject to statutes and regulations under which MIT acquires title in inventions conceived or first reduced to practice in the performance of the research. MIT’s ownership is subject to a nonexclusive license to the government and the requirement that MIT retain title and take effective steps to develop the practi- cal applications of the invention by licensing and other means.132 Pennsylvania State University’s policy declares that its requirement that all members of the university (including adminis- trators, faculty, staff, graduate and undergraduate students, and others) sign an intellectual property agreement arises from the university’s “obligations” under the Bayh-Dole Act.133 However, one cannot lose sight of the fact that the Bayh- Dole Act only applies to federally funded research, not to industry- sponsored research or research that is supported by university funds.134 Nevertheless, it appears that many universities seized upon Bayh-Dole as a justification to claim ownership of all research conducted on campus, rather than limiting their ownership claims to federally funded research.135
This created a decades-long drain on US tech innovation – universities are black holes where inventions go to die
Barnett, Director of the Research Technology Enterprise Initiative at the University of Washington, 23
[Gerald, “Inventors would own more, were it not for noncompliant Bayh-Dole practice,” Research Enterprise, 3/10/23, https://researchenterprise.org/2023/03/10/inventors-would-own-more-were-it-not-for-noncompliant-bayh-dole-practice/, accessed 7/17/24, GDI-JCR]
In my over 20 years in tech transfer, inventions of any use don’t go “into a black hole” if a university fails to demand ownership. Sure, they may not get used–but 95% of patented inventions don’t get used anyway. One should not have a shocked face. But even in this context, the university demand to own everything is an even bigger, blacker black hole.
Consider. Universities hold over 120,000 US patents they have acquired in the Bayh-Dole era from over 400,000 inventions they have claimed. Over 50,000 of these patents cite federal funding. These numbers are staggering. But where is the outputs? The new products, the economic development, the innovation? Universities won’t even report these outputs. Instead, they report proxies that just aren’t relevant–the number of inventions reported, the number of patents, the number of licenses. These metrics reflect the activity of licensing offices, but stop short of results. No one reports how many of those university inventions, patented or not, are actually being used. License deals don’t necessarily transfer any technology–they can be just rights speculation, much like a music label buying up rights to some band’s next album–getting those rights doesn’t mean the band is going to record a next album, but there’s money to be made speculating that they will, and it will be a monster if they all pull together as a team, as it were.
The stark reality is that university ownership is where inventions go to die. The black hole, around which swirls–slowly, at an administrative pace–the dust and gases of administrative red tape, patent paywalls, fussy compliance, and distractions about future money.
The effect is economy-wide – university patent thickets and rent-seeking impede innovation
Ryan, et al, Professor of Law at the Indiana University Maurer School of Law, 2024
[Christopher J. Jr., et al. "The Hidden Cost of University Patents." Berkeley Business Law Journal, vol. 21, no. 1, 2024, pp. 203-249. HeinOnline -tm]
Applying a firm behavior approach to analyzing university activity in the patent space, we have discovered evidence that universities act rationally, if inefficiently. That is, they respond to economic incentives, as any firm would. As expected, universities started patenting innovations produced by their researchers and began to license or sell those patents to businesses.159 They also engage in transactions as a firm would. They created technology transfer offices to manage their patent portfolios and policies. Inevitably, those technology transfer offices became institutional fixtures that had to justify their existence by producing revenue or other activities. Most of what they did was require researchers to ensure the patentability of their research and file as many patent applications as possible. These effects are arguably attributable to the passage of the Bayh-Dole Act.
Today, every research university has a technology transfer office that is a putative source of revenue, when in fact, few produce revenue at all.160 In reality, they are another part of the academic enterprise, with the unfortunate addition of reduced access to information. Because technology transfer offices are centered around patents rather than research, they are encouraged to prioritize control rather than openness and sharing.It would be notable if technology transfer offices were wildly profitable because their profits would reflect nothing more than a double tax on innovation. Every time a university patent generates revenue, that's the sound of the public paying twice. But the reality is arguably worse. Only a tiny minority of technology transfer offices are profitable, because many university patents are of little value. Most technology transfer offices are a net cost, and most university patents do nothing but impede future innovation. The majority of university patents are never commercialized. Indeed, many are sold to patent aggregators, which use them to extract rents from actual businesses.
In any case, the premise of the Bayh-Dole Act was always questionable, and its history only makes it look more so. It never made sense for the government to fund research directly, then fund it again indirectly via patents, and the ostensible justification is weak. Businesses exist to make money. Only in limited circumstances would a business decline to implement an innovation because it did not have a patent.
When acting alone, universities behave as any rational firm would. They use their research subsidy to patent and use their patents to litigate. Our research shows that the Bayh-Dole Act created perverse incentives and, in so doing, raised larger problems than previously realized. It was supposed to encourage innovation by imposing transaction costs on innovations, which does not seem especially clever. Unsurprisingly, it did not work. Rather than encouraging innovation, the Bayh-Dole Act created some of the densest patent thickets and gave ammunition to patent trolls.
While innovators have been dealing with patent trolls for a while now and have figured out how to avoid or counter them, the Bayh-Dole Act and university patents introduce an additional problem: rent-seeking.
Our research suggests that the Bayh-Dole Act turns universities into potential rent-seekers, and the problem may be expanding.161 We observe that when universities invest in research (and thus in patents), they invest even more in patent litigation.162 In other words, universities are turning themselves into rent­ seekers. It makes economic sense. They used to outsource these activities (e.g., by assigning patent rights to litigation-happy third parties). Eventually, they realized it was inefficient and brought it in-house.163
This result is not only inefficient from an economic perspective; it is also inconsistent with the charitable purpose of universities. 164 Instead of using government grants to fund research, universities are using government grants to fund litigation.16s And it couldn't have been more predictable, because universities are merely responding to incentives that would cause any firm to make the same decision. Of course, universities are firms, and we increasingly encourage them to act like firms. So, we should not be surprised.
But it is bad innovation policy to encourage universities to pursue patent profits rather than public welfare. And it is wrong. Universities are charitable organizations because we believe their educational purpose benefits the public. The government subsidizes universities directly by giving them grants, but it also subsidizes them indirectly via charitable tax exemptions and deductions. Universities should earn those indirect subsidies and should not act inconsistently with their charitable mission. The entire purpose of the Bayh-Dole Act was to enable universities to reduce access to their innovations by patenting them. It was always a questionable idea, but it has proven to be even worse in practice than in theory. And as discussed throughout this article, there is mounting evidence that we should question the efficacy of the Bayh-Dole Act.
Failure to facilitate commercialization of government-funded research has put US tech leadership on the brink – without action, China will take the lead
Darby, CEO of IQT, & Sewall, Undersecretary of State, 21
[Christopher, Sarah, “The Innovation Wars: America’s Eroding Technological Advantage,” Foreign Affairs 100.2, GDI-JCR]
Since the early days of the Cold War, the United States has led the world in technology. Over the course of the so-called American century, the country conquered space, spearheaded the Internet, and brought the world the iPhone. In recent years, however, China has undertaken an impressive effort to claim the mantle of technological leadership, investing hundreds of billions of dollars in robotics, artiicial intelligence, microelectronics, green energy, and much more. Washington has tended to view Beijing’s massive technology investments primarily in military terms, but defense capabilities are merely one aspect of great-power competition today—little more than table stakes. Beijing is playing a more sophisticated game, using technological innovation as a way of advancing its goals without having to resort to war. Chinese companies are selling 5G wireless infrastructure around the world, harnessing synthetic biology to bolster food supplies, and racing to build smaller and faster microchips, all in a bid to grow China’s power.
In the face of China’s technological drive, U.S. policymakers have called for greater government action to protect the United States’ lead. Much of the conventional wisdom is sensible: boost R & D spending, ease visa restrictions and develop more domestic talent, and build new partnerships with industry at home and with friends and allies abroad. But the real problem for the United States is much deeper: a flawed understanding of which technologies matter and of how to foster their development. As national security assumes new dimensions and great-power competition moves into different domains, the government’s thinking and policies have not kept pace. Nor is the private sector on its own likely to meet every technological need that bears on the country’s security.
In such an environment, Washington needs to broaden its horizons and support a wider range of technologies. It needs to back not only those technologies that have obvious military applications, such as hypersonic light, quantum computing, and artiicial intelligence, but also those traditionally thought of as civilian in nature, such as microelectronics and biotechnology. Washington also needs to help vital nonmilitary technologies make the transition to commercial success, stepping in with financing where the private sector will not.
US tech leadership is key to strategic stability and deterrence – the impact is nuclear escalation
Kroenig, 21 – (Matthew; 2021; PhD, Berkeley, Professor of Government at the Edmund A. Walsh School of Foreign Service at Georgetown University; Air University, “Will Emerging Technology Cause Nuclear War? Bringing Geopolitics Back In,” vol. 15 no. 4)
Will emerging technology cause nuclear war? For more than 70 years, the world has avoided major-power conflict, and many attribute this era of peace to nuclear weapons.1 In situations of mutually assured destruction, neither side has an incentive to launch a nuclear first strike because doing so will only result in self-annihilation. Maintaining secure, second-strike capabilities—the ability to absorb an enemy nuclear attack and respond with a devastating counterattack—is the key to deterrence.2 Recently, analysts have begun to worry, however, that new military technologies may call into question this model of global strategic stability.3
The world is experiencing a fourth industrial revolution (4IR) in which a wave of new and transformative technologies is being developed, including artificial intelligence (AI), additive manufacturing, quantum information technology, hypersonic missiles, biotechnology, and directed energy.4 While these technologies are expected to have profound implications for societies and economies, most are dual use and will also affect national security, including nuclear strategic stability.
According to an emerging conventional wisdom, new technology may upset nuclear strategic stability by calling into question the survivability of nuclear forces.5 The solution, according to some analysts, is for nuclear-armed states to eschew military applications of at least some of these technologies and lead an international effort to control their spread.6 But these studies too often consider new technology and nuclear strategy in the abstract without adequately considering the prevailing geopolitical context into which these new technologies have been introduced.
This article argues understanding the link between new technology and nuclear stability must consider the prevailing geopolitical context. For the past several decades, the United States, its Allies, and like-minded partners have formed the core of the existing international order.7 They have benefited from this system and would like to see it strengthened, revitalized, and defended. If the new technologies of the 4IR are incorporated into US, Ally, and partner militaries, then any advantages they provide will likely reinforce the prevailing distribution of power and existing sources of strategic stability.
In contrast, China and Russia are revisionist powers intent on disrupting or displacing the US-led system, and they would likely employ new technological advantages to pursue revisionist aims. The greatest danger from emerging technology for nuclear stability, therefore, may result from the possibility that new technology provides Russia or China an enhanced military advantage over vulnerable US Allies and partners, leading to a regional conflict with a significant risk of nuclear escalation.
University ownership decks standards development and research collaboration, which massively disrupts tech innovation throughout the economy
Barnett, Director of the Research Technology Enterprise Initiative at the University of Washington, 23
[Gerald, “Inventors would own more, were it not for noncompliant Bayh-Dole practice,” Research Enterprise, 3/10/23, https://researchenterprise.org/2023/03/10/inventors-would-own-more-were-it-not-for-noncompliant-bayh-dole-practice/, accessed 7/17/24, GDI-JCR]
University ownership is a black hole. The black hole. What’s owned by a university will be used by no one. That’s almost generally true. If a university owns, and insists on trying to find an exclusive licensee, then what are all the other companies to do who don’t need or want exclusivity, or don’t expect to be the exclusive licensee? They will have to design around, ignore, obsolesce, obtain patents that disrupt lines of development or application, and generally undermine that exclusive position to the extent that it represents a threat to competition. You see it, don’t you? An exclusive licensing premise drives everyone else away from university collaboration, away from the inventions a university owns. Makes university research even less relevant to industry, prevents platform and standards development, disrupts early adopters, denies graduating students opportunities to work in industry settings (only at the company, if ever, that gets an exclusive license) with what they have learned in their university research. Out of the blue and into the black. My my, hey, hey.
This is uniquely disruptive to the biotech industry – holdups and trolling are common university practice
Eisenberg, Prof of Law at Michigan, & Cook-Deegan, Prof at the School for the Future of Innovation in Society, 18
[Rebecca, Robert, “Universities: The Fallen Angels of Bayh-Dole?” Daedalus 147.4, GDI-JCR]
Universities have, in many cases, pursued patents that they could enforce against product-developing firms for the evident purpose of getting a piece of the action in lucrative technologies that were already being actively developed without the need for university patents. They have sometimes worn their academic halos to court, seeking to adapt patent doctrine to privilege the interests of universities over the competing interests of product-developing firms. This agenda has met with considerable skepticism from the Federal Circuit, which has sometimes explicitly questioned whether university patents are promoting or impeding commercial product development. An early sign that universities were pursuing patents that were unnecessary for commercial development was the involvement of universities in interference proceedings–administrative proceedings within the U.S. Patent and Trademark Office to determine priority of invention–in which the university claimed to have made the invention before a commercial inventor. When a university competes with a near-simultaneous commercial inventor seeking patent rights on the same invention, it is difficult to argue that the university is just trying to preserve incentives for commercialization of an invention that would otherwise fail to attract commercial interest

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