Fact Checking A NASA Spinoff Claim
NASA Technology Programs Looking To Create Economic Development, KRWG
“The camera in your cell phone we invented that,” [NASA Technology Transfer Program Executive David] Lockney said. “It’s a lightweight, high resolution camera, doesn’t draw a lot of power, we used it for space applications on a satellite. That same exact camera on a chip, is the same is the same exact camera that you have in your cell phone today.”
Keith’s note: This is a rather interesting claim that Lockney is making (assuming that he was quoted correctly). So I sent a request to him and PAO: “Can you tell me, specifically, where/when NASA invented this camera? What mission did it first fly on? Did NASA or a contractor file a patent claim for this camera technology? If so what is the patent number? Did NASA sign a technology transfer agreement or license with a company – if so what is the company’s name and when was this agreement signed? Does NASA still own any intellectual property associated with this camera technology?”
Keith’s update: I got a quick answer back from Lockney: the guy who invented the technology was Eric Fossum. “While Fossum was at NASA Jet Propulsion Laboratory, then-NASA Administrator Daniel Goldin invoked a plan of “Faster, Better, Cheaper” for NASA Space Science missions. One of the instrument goals was to miniaturize charge-coupled device (CCD) camera systems onboard interplanetary spacecraft. In response, Fossum invented a new CMOS active pixel sensor (APS) with intra-pixel charge transfer camera-on-a-chip technology, now just called the CMOS Image Sensor or CIS …” I learned something new today.
Alas, NASA paid for the work (NASA pays Caltech to operate JPL) but does not actually own the technology – and it never did so … I may be splitting hairs but its a little hard to say that NASA invented something when it never even owned it to begin with. Too bad it did not try and hang onto what taxpayers paid for – think of the royalties NASA could have reaped from something that is used in a zillion cellphones. See patents 5471515
and 5841126.
This is not what happened to me, maybe. When I ‘invented’ some technology, it was at one point reviewed by Caltech for patenting, and I think a provisional patent was applied for. Caltech turned it down, and I believe that NASA then reviewed it, and also passed, and if I remember correctly, the told me that I could patent it in my name. I didn’t patent the idea either, but as I remember the process, Caltech and NASA had first call on the potential patent, even though I developed the idea on my own time, I also received some money for a few months too.
I think this was all consistent with the patent agreement I signed when I was hired.
JPL is part of CalTech, and the Bayh-Dole act says that for government funded research at educational institutions, the institution gets first crack at the intellectual property rights (the government gets a free, perpetual “government purposes” license). Then NASA gets a crack at it. Finally, the inventor(s) can do something with it.
Everyone who is on a government contract has to file “invention disclosures” as part of the government contract (I think it’s in the FAR) that discloses what new technology was developed (patentable or not) as a result of their work for the government. At JPL, that’s a “new technology report”, and what triggers the process of review for potential patenting.
The decision about whether to seek a patent is a non-trivial one. It costs a fair amount to prepare the application, prosecute the patent, etc. (A provisional is easy, and gives you a year to make up your mind, while preserving “first to file” date), and you have to ask whether it’s worth it.
What are the rules for an employee working i his basement after he’s off work? On devices that aren’t attributable to his day job?
Or what happens if the guy develops an idea that was discarded by JPL/ NASA? Is there an official “sign-off”?
That partly depends on whether you are a non-exempt or exempt employee. If you’re non-exempt (hourly), when you’re not at work, your time is your own. When you’re exempt, there’s no concept of “at work hours”, although in general, toiling in your garage on something unrelated to your work, in California, would be the property of the employee, not the employer (it’s complicated in the details)
There are a *LOT* of lawsuits out there about where the boundary line is.
If you use any of your employer’s resources or information, and you do something on your own, your employer has what’s called “shop rights” – you can patent it or do whatever with it, but they get the right to use it without paying a license fee. They can’t sell it onward or transfer it though.
At JPL (and, I assume, most other FFRDCs, since this stuff is mostly set by federal law and regulation), you get an official notice from both Caltech and NASA that they’re not interested. You can then ask for a formal release of interest.
If JPL and NASA don’t care, the inventor can patent it on his own. Some paperwork is required, essentially an official statement that you have something worth patenting, an official opportunity for the institutions to consider it, and a formal statement that they aren’t interested.
As for something you invent in your free time, I don’t think the laws and regulations cover that in a meaningful way. You may have caught me in an unusually cynical moment, but the policies I’ve seen appear to assume people’s minds turn off between 5 PM and 9 AM. If you aren’t at work, you aren’t assumed to be doing anything which would result in an invention. Unless you have a second job. Existing rules and policies cover that.
As is often the case in a competitive field, the situation is complicated.
There are a large number of patents by at least a dozen companies from both before and after the Caltech patents. In a few cases Cal Tech alleged patent infringement by manufacturers, in others it did not. Digital cameras were already in wide use before the patent and the technology was rapidly advancing.
It’s fair to say that Cal Tech was the first to patent a significant advance in CCD sensor design. However it was not necessarily a unique solution to the problem as digital cameras were already in wide use using designs that preceded the patent and other companies subsequently patented alternative approaches that claimed advantages over it.
I’m all for NASA taking credit for an advance in the field. I think it’s a stretch to say we would not have digital cameras without NASA. I would like to see more technology development at NASA but funding in this important area seems to have declined considerably in recent years.
It’s ambiguous, but this particular case is the active pixel sensor. That’s what let’s you make a digital camera the size of a fingernail and put them on a cell phone. CCD based cameras, which are still better for most scientific applications, are much larger.
Having read some of the documents, I agree. However if NASA is going to justify its budget by technology development, then developing technology of practical value on Earth should be a primary goal of the agency, not an inadvertent byproduct.
That isn’t so easy. If a technology is clearly worth developing, private companies and investors will do so without government help. If the value isn’t obvious, then supporting it is a high risk, high benefit proposition. It’s hard to fund that as a primary goal, rather that an inadvertent benefit. But it does end up being a benefit.
The spinoff argument is flawed economically and rhetorically. It naively claims that it doesn’t matter what one does, valuable things will spinoff anyway. So the question is, why have a NASA at all? Why not use the spinoff theory and do something completely unrelated (like digging holes in the desert and filling them up again) and wait for spaceflight to spinoff from that? The spinoffers literally say that space exploration has no use, it is only good because it can lead to unrelated good things, like kitchen utensils with teflon. That’s why we should go to Mars, they argue unconvincingly.
“So the question is, why have a NASA at all?”
Because necessity is the mother of invention?
I disagree. If you look at many, now-common technologies, there was no real market initially. At least not a big one. No one ever thought of getting rich by inventing the CCD, back around 1970. It wasn’t as if millions of people didn’t like film and wanted digital cameras, so they could email the images or download them to their computers. The technology development involved a small market (primarily astronomers) with specialized needs and a willingness to pay a high price per item. That’s typical. The result was very gradual improvement in the technology (including the associated computers) until a big, profitable market became possible and obvious. Then things really took off. Sometimes that doesn’t happen. I can’t see a mass market for a FPGA, for example. The spin off idea is about supporting technology development during that initial, slow phase where the commercial market is unclear and the customers are a small group with a specialized application.
“You can’t create progress for all by taking money from everyone and giving it to a small group with no requirement that they respond to the demands of the many. If you try, not only do you rob people of short term value by taking away their first-best spending option, you mess with the signals and incentives in the system ensuring that less of what people value will be produced in the long run.”
http://isaacmorehouse.com/2…
Oh dear. “Let’s put our economist hats on!”
As if everything done by government (or anyone else for that matter) is appropriately measured while looking through an economist’s hat (or any hat one supposes).
Your self-quote is equally silly. My “first-best spending option”, as you term it, is best served by hiring smart people to build space ships. Also to pave roads.
I could raise a ruckus searching for millions of others wanting to build a rocket. Or pave a road. On the other hand we could elect a bunch of folks to do organize both activities (which has the chief disadvantage of being arms-length, true).
That’s because spinoffs is an ethos argument, not a logos argument. All it is saying is that one would literally die without NASA. It connects the audience with spaceflight and build on it.
Where do royalty’s go? to the federal agency or back to the Treasury?
Under the Bayh-Dole Act, license fees and royalties go to the educational institution that did the work: Caltech in the case of JPL. After recovering the cost of doing the patenting, etc., some fraction gets distributed to the inventors and the remainder stays with Caltech.
That’s if Caltech decides to keep the Intellectual Property rights. If they decide not to keep the rights (the case with the VAST majority of new technology developed at JPL), then NASA (or other Government agency that funded the work) can decide whether they want to keep the rights (in which case, I guess the fees, if any, would go to the government). And if both Caltech and NASA decide to pass on the rights, then the original inventors have the option of securing a patent or otherwise using the IP.
For the most part, technology developed at JPL just gets published and is free for anyone to use. And for what it’s worth, if you’re interested in using technology for which Caltech has retained rights, and you want it for research, non-commercial type uses, there’s typically no license fee.
Thanks
The invention and development of the CMOS image sensor (as it is commonly called now) is discussed in this open-access article: Camera-on-a-Chip: Technology Transfer from Saturn to your Cell Phone available at: http://www.ingentaconnect.c…
In my opinion it is certainly a NASA technology. Of course, an organization never invents something, it is always individual inventors. But this work was inspired and funded by NASA for future NASA requirements. JPL, managed by Caltech, was (and still is) a great place to work. I miss it in many ways.
It is NASA technology if you look at who paid for it. But NASA has gotten absolutely nothing directly in return from the commercial value of its discovery since it was never allowed to own the IP. To be certain NASA is all about spurring the development of new technologies – regardless of how that happens – and innovation is a rising tide that lifts all boats. I just wish that some of these inventions – including yours – could have a much more direct financial / budgetary benefit to NASA itself such that it can spur even more cool things. As it stands now individuals make money off of inventions that taxpayers paid them to create.
The Federal Government has not been good at monetizing inventions and discoveries, and typically left them to collect dust. I think that is why the Bayh–Dole Act was passed in 1980. You can read about it on Wikipedia if you are not familiar with it.
I am quite familiar with Bayh-Dole. I just do not think that you or Caltech should be preferentially profiting financially from research that taxpayers paid you to do. My opinion.
OK, Keith, you make sense, to a point. Do you feel the same about, say, some arrangement where both the inventor and NASA profit in some way?
That is the reason taxpayers fund it. So the technology gets shoveled into the private sector and the let market drive the innovations afterwards. NASA doesn’t have a profit motive to drive them.
You are getting into over 400 years of constitutional debate and tradition. What you suggest would give a government agency an independent source of funding. That’s been considered a dangerous idea since the “personal rule” of Charles I in the 1620s and 30s. Funding is supposed to be controled by elected officials, to make sure the voters have some control over the agency in question.
Then create one of those quasi-governmental things like Export/Import Bank, the original INTELSAT, FEC matching funds, etc. and have established rules for oversight in place to prevent abuse and facilitate creative use.