Fifth Layer: practice
On to the next layer of Bayh-Dole, actual practice. We will restrict our discussion here to university practice, but things are much the same for other nonprofits. Small business practice has its own peculiarities, including the oddness of the SBIR/STTR IP agreements, but we will not work through those issues here.
It’s one thing to read the law and follow through the implementing regulations to the patent rights clauses. It’s another thing to assume that universities and other contractors actually comply with the patent rights clauses. The reality is that much of the time they don’t. Whatever is happening under Bayh-Dole does not result from contractors complying with the patent rights clauses. Something else is happening. And that something is not Bayh-Dole or its patent rights clauses.
We have worked through the statute, the implementing regulations, the various patent rights clauses, and how those clauses end up in federal funding agreements surrounded by other requirements on intangible assets. Now let’s look at another characteristic of Bayh-Dole that’s essential to any account of how the law operates or its outcomes.
Bayh-Dole operates through patent rights clauses placed in federal contracts. The enforcement of “Bayh-Dole” really involves the enforcement of the patent rights clauses in the federal contracts. But Bayh-Dole provides no provisions for enforcement. Federal agencies are not tasked with enforcement, nor is the Secretary of Commerce. As a GAO report from 1998 repeatedly observed, Bayh-Dole is not enforced: Continue reading