Here’s 37 CFR 401.14(a)(f) under the heading “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. This disclosure format should require, as a minimum, the information required by (c)(1), above. The contractor shall instruct such employees through employee agreements or other suitable educational programs on the importance of reporting inventions in sufficient time to permit the filing of patent applications prior to U.S. or foreign statutory bars.
Here’s the 1984 University of Wisconsin policy write up of it:
Let’s see how these match up. Wisconsin gets the first part of it right, but then they misread a coordinating conjunction and make it appear that it’s the university’s deal to file applications and establish the Government’s rights.
Let’s simplify 37 CFR to show the grammar: The contractor agrees to require, by written agreement, its employees . . . (1) to disclose promptly in writing . . . in order that the contractor can comply with the disclosure provisions of paragraph (c), above, and (2) to execute all papers necessary (2A) to file patent applications on subject inventions and (2B) to establish the Government’s rights in the subject inventions.
Wisconsin doesn’t read it this way. They want it to read like this:
The contractor agrees to require, by written agreement, its employees . . . to disclose promptly in writing . . . in order that (1) the contractor can comply with the disclosure provisions of paragraph (c), above, and (2) to execute all papers necessary to file patent applications on subject inventions and (3) to establish the Government’s rights in the subject inventions.
There are problems with the Wisconsin reading. First, it breaks up a parallelism of the infinitives–“to disclose, to execute, to establish”. Second, it is grammatically wrong to have a construction “in order that contractor can A and to B”. Third, there’s no sense to the logic of requiring disclosure for the purpose of executing papers and establishing the government’s rights, as these do not follow from disclosure, but from license or assignment (in the case of establishing anyone’s rights). It is the inventor that holds rights, and it is the inventor who has to sign paperwork to permit patent applications to be filed and it is the inventor who can establish the Government’s rights in an invention by assigning to the government or granting a license. It would be necessary for the inventor to do this things if the university did not obtain title from the inventor (by whatever arrangements) and the federal agency wanted to file a patent or obtain a license (if the agency agrees that the inventor can retain title). There is, beyond all this, the idea that Wisconsin *wants* this reading–that the idea of this new federal law was to strip inventors of property, rights, and choices, and universities of options, all so that some folks could make money licensing patents to industry or suing industry if it refused the offer.
For all the technicalities, the nub of this problem is in the hearts of the folk who advocate for this. As Burke would have it, “People never give up their liberties but under some delusion.” Some delusion crept in to research enterprise, to the dream of Vannevar Bush that a country supporting research would discover and benefit from the most amazing and unimaginable things, and nobody caught it. The 1984 Wisconsin reading of the Act has got it simply wrong–for want of being able to read coordinating conjunctions and a predisposition to invoke federal law to strip personal property rights–and worse that that, it happily establishes this wrong reading in policy, and it then compels its employees to follow the policy rather than the law.
It is this kind of early reading of Bayh-Dole, from a leading research university, placed into policy, that has propagated and persisted in university technology transfer offices, been explained as truth to senior administrators, faculty, and the public, and has been rationalized to the point that the rest of the Act has been made out to be a federal mandate for universities to take rights away from inventors as expeditiously as possible. It’s not. This leaves us with the sticky question: If Bayh-Dole has nothing to do with the university administration move to compel ownership of inventions, and if prior to Bayh-Dole most universities took a hands-off approach to IP, and it was those circumstances that made the transfer of university inventions appear so attractive, then what is the compelling reason to replace that situation with a compulsory ownership approach staffed by administrators?
To my way of thinking, it smacks of folks who have lost the vision or never had it in the first place, or don’t care, or generally like the semblance of order and power that comes from autocratic control. Perhaps it is that folks who are aloof from innovation practice like pretty, clean understandable diagrams about process (research -> patents -> licenses -> money, er, public benefit) and simply substitute the pretty but hopelessly naive diagrams for reality and tell eager-to-please administrators to make it so, or at least, make it appear so. When they can’t do it–and they generally can’t–we get reorganizations, hirings and firings, and pleas for more money from the state for “gap funding”. Maybe there is a compelling reason. I sure haven’t heard it.
Here’s my premise: Innovation arises predominantly from freedom, not process. We should start with the premise that faculty inventors have wisdom and virtue, and that we will see these qualities revealed as they pursue their work. Those that do not show these qualities can be held to account. But taking away the freedom of all to preclude worrying about some few is simply a suppression of innovation. It just takes one research university to make the break from this misreading of Bayh-Dole to get things back on track. Who will take the lead, grab the spotlight, and undo 30 years of foolishness? It’s a ready-made signature moment for any university president or chancellor with the insight and courage to get things right.