We have dived into an old, stinky document once on-line at the University of Rochester that misrepresents Bayh-Dole requirements. The document has since come down, but its shadow remains over Rochester invention policy and practice. Thus, it is worth reading the old and stinkies to gain a sense of perspective on the new and still stinkies.
While we are at it, Rochester misrepresented (and still does) the scope of Bayh-Dole’s claim on inventions:
creation of inventions from federally sponsored grants
Bayh-Dole makes a different claim. Bayh-Dole defines “funding agreement” to include any agreement “for the performance of . . . work funded in whole or in part by the Federal Government.” (I left out the “experimental, developmental, or research” adjectives before “work” so the grammar becomes clear–the noun is work, not “research” or some such thing. The “in part” makes it clear that the “work” involved may not be funded entirely by a federal grant. Parts of the “work” may not be supported with federal funds. Doesn’t matter. What matters is a clear understanding of the “work.” We could capitalize it–Work–it should always be a defined term. One of the greatest failings in Bayh-Dole practice is inattention to the definition of the Work. The definition includes federal objectives in providing funding, specifications of the work, statements made in proposals submitted through organizations and companies, statements made by those organizations and companies with regard to their purposes and practices. If someone wants a narrower definition of Work, they have to be clear about it, express, even to the point of stating what the Work does not include–and they must do this defining as part of their proposal, before any federal award is made.
Inventions that might come within scope of Bayh-Dole, when owned by a contractor, are not just those that were made “from” a federal grant. The inventions that come within scope are any made in the performance of the indicated Work, regardless of whether the inventive activity was paid for with federal funds or with other funds or with no funds at all. All that matters is that some part of the Work received federal funds. Some part of the Work was pitched as worthy of public support. That means, necessarily, that the public (sometimes via Bayh-Dole) should have the benefit of the entirety of the Work’s outputs. As the implementing regulations for Bayh-Dole have it (37 CFR 401.1):
Separate accounting for the two funds used to support the project in this case is not a determining factor.
If separate accounting could be used, then it would be easy to shift work that appeared to be inventive off to a non-federal account and avoid federal claims on any resulting invention. That’s what University of Southern California and its inventors did in the research that led to the Mine Safety Appliances litigation–where the court made clear that USC could not extract work from its federal grant Work, do that work on the side, and then come after the federal government to pay royalties to use that side work. Continue reading