University patent administrators and patent policies make a fetish out of compliance with Bayh-Dole. What’s funny is how this fetish is about selective compliance–compliance that advances the power and freedom from accountability for administrators, at the expense of faculty and students, and in defiance of the Bayh-Dole Act. It’s as if Bayh-Dole was only half a law, a law to establish a well paid administrative class that can operate with impunity when it comes to federally supported inventions–inventions, one would think, that are near the heart of desirable federal research outcomes.
Here’s a list of seven areas in which university administrators routinely thumb their noses at Bayh-Dole, sometimes out of ignorance, sometimes with disregard, and sometimes just because they can. In all cases, however, non-compliance points to a failure to respect the law as well as to an institutional incompetence, or negligence, or even malpractice in managing inventions and invention policy.
1 Fail to implement the (f)(2) agreement
The (f)(2) agreement is not in Bayh-Dole itself, but rather is in the standard patent rights clause authorized by Bayh-Dole:
(f) Contractor Action to Protect the Government’s Interest
(2) The contractor agrees to require, by written agreement, its employees, other than clerical and nontechnical employees, to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the contractor each subject invention made under contract in order that the contractor can comply with the disclosure provisions of paragraph (c), above, and to execute all papers necessary to file patent applications on subject inventions and to establish the government’s rights in the subject inventions.
The fundamental action of Bayh-Dole is to require federal agencies to use a standard patent rights clause by default in all their grants for research, development, and experimental work at nonprofits and small businesses. This standard patent rights clause forms the agreement between the federal government and a university with regard patent rights in inventions made by investigators hosted by the university. The (f)(2) agreement is an, if not the, essential element of this agreement regarding the government’s interest in these patent rights. When a university requires its research personnel to make a written agreement to protect the government’s interests, the university necessarily includes those personnel as conditional parties to the funding agreement–when they invent with federal support, they become contractors, and as they own their patentable inventions, those inventions become subject inventions–inventions subject to the standard patent rights clause.
Here are the core properties of the (f)(2) agreement. Continue reading