Two Key Moves in IPA to Bayh-Dole

The short form on IPAs vs Bayh-Dole.  Two big changes:

1.  Bayh-Dole removes the requirement for university ownership

The IPAs forced university ownership of inventions made by anyone working on a federally funded project–faculty, subcontractors, volunteers.  Bayh-Dole and its CFR rejects this approach in favor of requiring employees and subcontractors to make a commitment to establish government rights.  Universities are forbidden from seeking an ownership interest in subcontractor inventions as a condition of the subcontract.  Pity the same was not made express for university faculty.

2.  Bayh-Dole guts public accountability

Bayh-Dole guts the gestures in the IPAs to protect the public interest.  It eliminates the public interest mandate (by displacing it to a statement of objectives that does not find its way to the standard patent rights clause), default non-exclusive licensing (gone), the time limits on exclusive licenses (gone), and mandatory reporting (made optional, and any reports are made secret).  Bayh-Dole shifts the burden to the government for showing why a monopoly should not be maintained rather than following the IPA’s requirement that a university “show cause” why it should keep its monopoly.  The march-in procedures in the CFR for Bayh-Dole are so convoluted it is clear they were intended never to operate.  Under the IPA, there is a simple determination that the monopoly should end, and a 30 day period in which a hearing can be requested.

Bayh-Dole leaves university inventors exposed to institutional invention ownership claims and tosses public oversight of university patent dealings.

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