It would appear that many university patent administrators conflate electing to retain title with having title. They want to do this. They think this is a good thing.
Bayh-Dole makes no express transfer of title from inventors to the employing university. So they make this conflation as a necessary function of the law, so obvious no one thought to state it outright.
That’s the basic issue. Is Bayh-Dole merely sloppy about the SPRC? The retaining of title by inventors in 401.9? The need to involve inventors to protect the government’s interest in (f)(2)? The emphasis on use of the SPRC funding agreements and flowdown of obligations in subcontracts?
The conflation is all wrong. It misreads the plain language of the law, it requires assumptions that forces silent amendment to the patent law that is a part of, it makes a hash of present university practices (including requiring assignments and policies that require inventors to assign to affiliated research foundations), it makes a hash of PTO practices, and it creates an environment that makes uncertain and void after the fact otherwise binding contracts pertaining to invention rights–not just future rights but rights already established.
The clear force of Bayh-Dole is that universities have to take care of their own title interests if they want to hold title. To do obtain title, they must have standing (comply with the SPRC and elect to retain title) and they must have a means by which they go get the title they have elected to retain (some form of agreement here would be nice).
The patent administrators want a law that does not allow them to mess up on this last point. They have repeated it their way so long they really believe it’s true. It is a fact of ubiquitous opinion. It feels good for them to say, Bayh-Dole gives title of federally funded inventions to universities. When it doesn’t.
It’s dismaying not only because the patent administration folks appear to be willfully conflating the language of the law but also because they think this is a better outcome. They do not believe inventors have any choice in the matter, and do not believe they should have any choice, and therefore it makes sense to them for the law to be read so that the inventors (and investigators) indeed don’t have any choice in the matter.
Perhaps the Supreme Court will make it clear: inventors hold title even in subject inventions, universities have to put in place arrangements to obtain that title, and if they fail at it, the Act doesn’t do it for them.
But no matter. There’s a chance that the ubiquitous opinion will win out, that Bayh-Dole can indeed be read as a vesting statute, even though there other, arguably much better ways to read it, and even though the vesting reading makes such slop out of most of the law. Rather the vesting reading may win out only because so many people in positions of responsibility now claim this is what it must be. Even though they never have practiced it that way.
So perhaps also if the vesting argument wins out, Bayh-Dole will be found to be unconstitutional, or in the alternative, universities will be required to show due process and just compensation when they rely on that vesting to take private property for public use.
It would seem no matter how it goes, things are going to be very different soon.