The Party Boat

Here’s a bit from the Rice University Invention and Patent Policy:

In the case of Government-supported research, the Bayh-Dole Act and subsequent amendments and federal regulations provide the basis for current University technology transfer practices. Accordingly, while the University is assigned the rights to intellectual property generated during the course of federally-sponsored research activities, the Government retains the option to claim ownership under certain circumstances. In the event that the Government does not exercise its option (the usual circumstance) and regardless of ownership, the Government retains a non-exclusive, non-transferable, irrevocable, royalty-free, worldwide license to the invention or to copyrightable material produced under Government sponsorship.

It should be clear that the policy misrepresents Bayh-Dole.  Rights to inventions are not assigned to the university by the Act. Furthermore, “intellectual property” is not the subject of Bayh-Dole–only patentable inventions.  For copyright, one has to go to the FARs or to 2 CFR 215.36 (the old Circular A-110).  In 2 CFR 215, copyright does not vest with the recipient.  The recipient “may copyright” any work developed under an award, and if so, the government requires its non-exclusive license.  But the recipient does not have to “copyright” the work.

(Yes, the whole thing is screwed up, because since 1989, copyright vests in original works of authorship when they are fixed in any tangible medium of expression–one does not “copyright” stuff anymore.   The issue then is, where does the copyright vest?–and the law is pretty clear–with the author, and that could be an individual or in the case of work made for hire, with the employer or commissioning party.  If with an individual, then the university would get title via a written assignment signed by the author, and a statement in policy wouldn’t suffice.  Universities are snarky about all this, however, because they cannot decide whether scholarly works created in association with sponsored research are within the scope of employment (for copyright) or not.  Does the university assert authorial control over the work?  or merely want to have a piece of the financial action and remove the authors from making decisions about publication?)

The use of the word “retains” in association with government rights is odd and points to a fundamental misunderstanding of what is going on with intellectual property in a funding agreement.  The policy makes it sound like research IP vests with the government on creation, is assigned by law to the university, with the government “retaining” some rights in the process.  The IP is totally detached from its inventors and authors and floats around, sans Constitution, sans federal law, sans funding agreement, until it settles in the university, which appears very much to be happy with this result.

Later in the same policy, we get this explanation in a discussion of “Assignment of Right of Ownership to Inventor(s)”, once the university has decided it does not want to pursue patent protection:

It is important to recognize that under current law, ownership does not automatically revert to the inventors if the Federal Government is the sponsor. In such cases, the Government retains the option to claim ownership of the invention. In the event the Government does not exercise its option, ownership will revert to the inventors. However, regardless of ownership status, the Government will retain a non-exclusive, non-transferable, irrevocable, royalty-free, worldwide license to practice the invention.

This makes it clear folks writing the policy think that ownership is with the university, and it gets there by law, but oddly, it can’t get back the same way.  Before the university can assign title “back” to the inventor(s), the government could ask the university to assign title to the government.  Yes, this can happen if inventors assign to the university, and the university then decides not to elect to retain title.  But it’s a different mental geography, a different set of pathways, a different working reality.   The government does not retain an option to claim ownership if there’s no assignment from the inventors to the university.  Instead, it has to rely on the (f)(2) agreement, assuming the university has required one, as it is supposed to do.  It would appear that if a university demands title immediately, obtains assignments, and then punts on the invention, for the government to get to the 401.9 situation with inventors, it will have to obtain assignment of title from the university, then assign that title to the inventors, and with that assignment work out the 401.9 details.  This is a lot of administrative paperwork that does not need to happen.  Going to a present assignment strategy will only create a lot more of it–something that runs against the objective stated in 35 USC 200 to minimize the cost of administrating research invention policy.

The automagical moving about of title when it appears favorable to the university, but not when it’s a bother, appears more like a rationalization, a make-believe story to stand in place of some unknowns, and which sounds good to everyone involved, and that’s enough to get it into policy that way.  But we know better–that title to an invention is with its inventors, and title to a work of authorship is with its authors, and for that title to move requires something formal (and socially magical in its way, too) and that is a written instrument signed by the inventor or author that conveys title.   That’s the convention, not just anything we might think up. It would be a good discipline for university administrators to master.

What we are looking at is sophisticated, seriously intended expression, in the form of formal policy statements that become part of employment agreements and purport to deal with some of the most significant outcomes of university research, funded by billions of federal dollars, attributed to motives of “public benefit” and “broadest possible dissemination” but built on naive, uninformed, unchecked assumptions about intellectual property, federal research policy, and public deployment of results.  We have created a huge, sophisticated mistake.  There are folks who want to improve that mistake, make it more efficient, streamlined, polished, funded, staffed, and celebrated.  They want to build a party boat but have left off the bottom.  It won’t float, but wow, there’s a good time going on up topside, where it sure looks like a boat.

The Rice policy is another instance of the misunderstanding of Bayh-Dole.  Here we have one of the most sparkly best bits of legislation, and many university administrators cannot wrap their minds around it.   What I’m wondering is whether the faculty really care one way or another.  Maybe the party boat sounds pretty good.

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