I while ago I wrote an article on some suggestions for changing Bayh-Dole. The first suggestion was to add a research “exemption.” The authors–one a former senior university patent administrator from a very big university–were well meaning, and perhaps there ought to be such an exemption, perhaps added to 35 USC 287 as a limitation on the right to sue for infringement. But there’s a bigger problem than that, and without the bigger problem solved, no one will go for a limitation on the rights of patent holders, not even university administrators. And if the bigger problem is solved, then there really isn’t any need to amend Bayh-Dole because, well, the amendment would address a problem that no longer exists.
University ownership of inventions combined with an insistence on “commercialization” is the Jonah on the ship. In Madey v Duke, the court reasoned that university research was commercial in nature given the university interest in making money from research contracts and commercializing the results. Given the court’s observations regarding university “commercial” interest, even if there were a new research exemption in patent law (including Bayh-Dole) for “noncommercial” research, it could not apply to universities that owned inventions and sought to commercialize them or make money from them. You see why. So it is fantasy for university administrators to insist on ownership and commercialization of inventions and then beg to be released from obligations to other patent owners. Continue reading