University Confusion Over Bayh-Dole and Copyright, 2

We are working through a recent article posted at Emory University’s technology transfer site [since thankfully removed]. The article claimed that Bayh-Dole has something to do with copyrights and data, asserted that the reporting requirements are complicated, and then fussed around trying to make sense of its muddle. While the article itself is worthless as substance, it does provide an opportunity to work through the regulations and get a reliable understanding of how things work in federal grants to nonprofit organizations.

The article continues its discussion of copyright with another confused, if institutionally self-interested claim:

Grantee institutions may apply for copyright protection for their research results as well as any data that result from a federally funded research study.

A problematic sentence. One does not “apply” for “copyright protection.” “Research results” are not within the scope of copyright anyway, nor are “data.” Gibberish. Spouting. Blistering blue barnacles. Of greater concern is that the article allows the impression that federal regulations somehow provide grantee institutions with the authority to own copyrights and data. They don’t. They simply provide that the federal government won’t demand delivery of that ownership claim as a condition of the federal award. Nothing in the regulations for grants makes it a compliance requirement that a grantee-entity assert an ownership claim in copyrights or research data. The “may” is ambiguous, then: “may” may mean “has the federal government’s permission” or may mean “has the federal government’s mandate.”

The general statement in the regulations on intangible property makes clear that the issue is where title vests when intangible property is acquired by a grantee-entity, not that a grantee-entity has any compliance obligation to acquire intangible property or even a mandate to do so. The article makes it appear that federal regulations give universities a right to take copyrights and data just as they claim such a right under Bayh-Dole–and all of that is total absolute utter nonsense. In a contracting environment, it is fraud. In a statutory environment, it involves a conspiracy to deny citizens of their constitutional and statutory rights (see 18 USC 241). In a legal environment, it is malpractice and unethical. And in an environment in which one provides education to faculty, staff, and students, it is a betrayal of trust–not just a tolerable incompetence. 

Our article then lists as a non-sequitor all the things that the NIH regards as “data,” which we will pass over. The article now attempts to conflate copyrights and data as if they are just other forms of “invention”:

As with any federally funded invention, the grantee is required to disclose any invention to the sponsoring agency, in the case of most agencies this can be done through iEdison.

First, a dangling initial modifier: the grantee is *not* a federally funded invention. But reporting inventions under Bayh-Dole is restricted to inventions that “are or may be patentable.” Whether there happens to be copyrights or data rights around is immaterial.

Bayh-Dole however does not directly address whether the federal government, through the sponsoring agency, is given a right to use non-patentable inventions like those solely consisting of copyrighted or copyrightable works, as the definitions of “invention” and “subject invention” reference inventions protectable under US patent law.

Too crazy! Bayh-Dole has nothing to do with copyrights or data rights. Why would it “directly address” these matters? The fact that a university might define “invention” to include fantasies about flying hippos does not then create any complications in Bayh-Dole with regard to what inventions must be reported. Flying hippo fantasies are not reportable under Bayh-Dole’s standard patent rights clause. Nor are works subject to copyright, even if called inventions by some screwball definition in some screwball university patent policy, like, say, ahem, Emory’s.

Here’s Emory’s definition of intellectual property, extra commas and all:

Intellectual Property shall mean any intangible subject matter for which proprietary rights may be obtained or enforced pursuant to any international, federal, or state law, including, , but not limited to, inventions (whether patentable or not), Copyrightable Works, Trademarks, Service Marks, domain names, trade secrets, trade dress rights, moral rights, formulas, designs, Software, programming code, New Media, intangible rights in machines, compositions of matter and devices, techniques, processes, procedures, systems, formulations, databases and compilations of information.

Briefly, “intangible anything with proprietary rights.” It is always great to have an “including but not limited to” in a list attempting to serve as a definition. Oddly, moral rights in copyright in the U.S. are a right of the author of certain visual works, and cannot be assigned. So much for Emory’s general announcement that it owns the moral rights of its “Emory Personnel.” Emory Personnel includes “Visitors.” So don’t get any ideas while visiting, because Emory policy claims that you have already assigned these ideas to Emory. (Yes, there are definitions for Visitor and for Emory Support, but it all goes down to the same sewer, so I won’t bother.) Emory goes happily to 11 with a definition for “inventor”:

Inventor shall mean any Emory Personnel who is an inventor under applicable United States law of a new and useful process, machine or composition of matter, or any new and useful improvement thereof, whether patentable or not. 

How many ways to cognitive dissonance? If someone is an inventor under patent law, then what they have done is or may be patentable. There cannot be a “not” added. If something is not patentable, then the person inventing it is not an inventor under patent law. The effect of the “or not” in this definition is to define an inventor as anyone who makes anything. “An inventor is any inventor of anything without regard to whether may be patented.” Clearly, under Emory’s fantasy of intellectual property, things can be owned whether they are ownable or not. All one needs is a “proprietary right” that can be “enforced or obtained.” How one gets a “proprietary” right without ownership defies rational thinking. Here’s a typical definition:

As a noun, a proprietor or owner; one
who has the exclusive title to a thing; on
who possesses or holds the title to a thin
in his or her own right; one who
 the dominion or ownership of a
thing in his or her own right.

As an adjective, belonging to ownership; owned by a particular person; belonging
or pertaining to a proprietor; relating to
a certain owner or proprietor.

Yes, something is proprietary because one has ownership or title or exclusive control. But Emory goes further and asserts proprietary rights also in what can’t be owned. Sigh. If the category of dogs includes dogs and non-dogs, what exactly has one done with the definition of dog?

Near the end, the article gets around to 2 CFR 200.315:

Federal regulations do however grant the federal government, through the awarding agency, a royalty-free, irrevocable, and nonexclusive license to utilize “intangible property” including copyrightable works and may authorize others to do so, for Federal purposes. These regulations are outlined in the Code of Federal Regulations, and more specifically in 2 CFR 200.315.

There is no such general license in intangible property in 200.315. The license to copyright works is in 200.315(b). It would be absurd for the government to expect a license in all intangible property, as the definition includes loans, leases, and stock, among other things. So the account here in the article is bungled. The regulations are not “outlined” in the CFR–that is the statement of the regulations. Perhaps “set forth” is what was meant.

Reading this article involves a lot of charitable guessing. The problem is, one has to already know what the article is attempting to discuss to be able to read it charitably. Anyone else will be deceived or confused rather than astounded.

The article cannot sort out the difference between (i) Bayh-Dole, (ii) the standard patent rights clause Bayh-Dole authorizes, and (iii) the regulatory construction of a federal funding agreement for grants to nonprofit organizations that incorporates the patent rights clause, along with other clauses pertaining to works subject to copyright and to data.

The reporting of works subject to copyright and of data is not set out in the grant regulations specific to intangible property. Inventions which are or may be patentable and which are owned by the grantee-entity (because the grantee-entity has acquired them) are reportable under the standard patent rights clause, which is incorporated by reference into the intangible property regulation. But the other things–copyright and data–are a matter of performance reporting and any other reports that are otherwise required by the funding agreement. There doesn’t appear to much at all about reporting copyrights and data that is “complex, time-dependent, and highly detailed.”

If we want to get into complexities, we would look at the layers of regulations and statutes that are manipulated to provide ways for grantee-entities to avoid public disclosure of their work–invention use, works of authorship, data. Bayh-Dole has two separate clauses attempting to exclude reporting from FOIA. 2 CFR 200.337 insists that nothing in the regulations exposes a grantee-entity’s records to FOIA disclosure. And the data disclosure section of 2 CFR 200.315(e) gets at records that cannot be withheld:

In response to a Freedom of Information Act (FOIA) request for research data relating to published research findings produced under a Federal award that were used by the Federal Government in developing an agency action that has the force and effect of law, the Federal awarding agency must request, and the non-Federal entity must provide, within a reasonable time, the research data so that they can be made available to the public through the procedures established under the FOIA.

Even there, the requirement is clear. The burden of the regulation that follows is to define publication and research data. It’s that definition of “data” that matters, for reporting purposes:

Research data means the recorded factual material commonly accepted in the scientific community as necessary to validate research findings, . . .

Even here, the primary emphasis of the regulation is to disclaim everything else that otherwise might be considered data (such as in NIH expansive definitions of data in other contexts)–not drafts, plans, reviews, communications, physical objects, commercial information, personal information. Even this stuff is pretty clear.

The Emory article is a mixed-up mess. Things could be improved somewhat by changing the title from “Bayh-Dole Reporting for Copyrights” to “No Bayh-Dole Reporting for Copyrights.” At least then the primary point would be up front and the fact that the article cannot punch its way out of a paper bag would be mostly harmless. The title might also be “Federal Reporting for Copyrights and Research Data” and then the part about Bayh-Dole could be reduced to a sentence: “Bayh-Dole does not concern copyrights or research data reporting.” As for the reporting for copyrights, the answer would be–there is no regulatory requirement to report copyrights. And for research data, the regulatory requirement is restricted to research data requested under FOIA and which is “related” to “published research findings” that have been made the subject of an agency action having the force and effect of law. The practice tip for researchers, then, is to secure such data for possible release when publishing findings that might influence a federal agency’s rule-making. Many journals now require data deposit along with published articles, so even this practice tip is rather late to the party at this point.

Overall, though, and rather sadly, the thing we learn from this article is another datum on the sorry confusion that exists in many university technology transfer offices with regard to the core federal regulations that shape much of their daily practice. They don’t actually know Bayh-Dole, don’t comply with Bayh-Dole’s statement of policy nor with key provisions of the standard patent rights clause, and misrepresent Bayh-Dole to enable compulsory assignment policies and a fixation on commercialization (especially enabled by trade in patent monopolies that support monopoly pricing and a suppression of competition and enterprise). And they get away with it. And call it virtuous that they do. What’s not to like about Bayh-Dole?

The article ends with a strange conflation:

These obligations regarding copyrightable works are in line with the requirements for patentable technologies under the Bayh-Dole Act which sets forth “the policy and objective of the Congress to use the patent system to,” among other things, “ensure that the Government obtains sufficient rights in federally-supported inventions to meet the needs of the Government and protect the public against nonuse or unreasonable use of inventions.”

The article has not provided any account of actual regulatory obligations regarding works subject to copyright. Those would be in 2 CFR 200.315(b)–except there we find only a permissive statement–that grantee-entities may “copyright” works that they develop or acquire under a federal award, provided that the federal government “reserves” a license to otherwise use those works and authorize others to do so as well. It’s true, though–the article gets this point more fully that perhaps the author realizes–that the copyright regulation concerning ownership is indeed parallel with Bayh-Dole’s stipulation for the patent rights clause. Bayh-Dole, like the regulation on intangible property generally, does not require or mandate or encourage a grantee-licensee to obtain ownership of any invention made under a federal funding agreement. And if a grantee-entity does not acquire ownership, then the regulations are amazingly simple: there’s nothing to do, at all.

Even reporting of inventions under Bayh-Dole is restricted to subject inventions–inventions that the contractor (the grantee-entity) has acquired and so owns. Whatever complications that do arise, arise because a university administration has wallowed willfully into acquiring ownership of an invention or work subject to copyright or data. The complications of the regulations arise when an organization gets involved in matters of ownership of intangible property and therefore has the opportunity to prevent public disclosure, or access, or use, or benefit–or to subordinate that public face of research to its own organizational self-interest and convenience.

But the rest of this closing prayer to the consistency of federal regulations is silliness, quoting from 35 USC 200:

“ensure that the Government obtains sufficient rights in federally-supported inventions to meet the needs of the Government and protect the public against nonuse or unreasonable use of inventions.”

There’s nothing in the copyright and data regulations at 2 CFR 200.315 that concerns federal government rights to police private exploitation of original works of authorship or research data–just a license (in the case of copyrights) and a right to disclose under FOIA (in the case of research data relating to published findings that an agency has acted upon in its rule-making). There’s nothing about nonuse or unreasonable use of such non-patentable, non-invention “technologies.” In fact, the regulations assure grantee-entities that if they don’t want to disclose their findings to the public, or release their copyright interest, or share their research data, nothing in the grant regulations makes them do so. That’s utterly unlike Bayh-Dole, which does–as the article properly points out–insist upon for patentable inventions.

We might point out here–again–that the statement of “policy” at 35 USC 200 is a fundamental addition to federal patent law that shapes the scope of patent property rights in subject inventions. If an invention is a subject invention, then 35 USC 200 imposes a working requirement on the patented invention–that’s the “nonuse” element. But it also imposes a proper use covenant on the patent–and that involves promoting “free competition and enterprise” and meeting Bayh-Dole’s definition of “practical application”–which includes “benefits available to the public on reasonable terms.” There is nothing in federal grant regulations like these statutory shapers of patent property rights for copyright and research data. If university administrators chose to comply with the law and its implementing regulations, what a different invention management regime we would have!

While Bayh-Dole is indeed a mess of a law–and there are good reasons that the casual reader would get confused–it’s also not that difficult to work through, especially if one puts oneself out as the local campus expert in such matters. After all, the rule book for pro football runs to 92 pages (4.6 megabytes), but every high school kid in the country who plays learns the rules that affect their positions in sufficient detail to play the game. If kids can learn to play football (a game that more than likely damages their brains), then surely big people can learn to play Bayh-Dole (even if the law is such a mess that spending any time with it may also be damaging).

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