Supreme Court: Bayh-Dole applies only to subject inventions. Subject inventions are ones owned by a contractor. Congress did not intend a sea-change in initial invention ownership. Bayh-Dole does not apply to inventions made in projects with federal support until contractors own them. There’s no vesting. There’s no special right under Bayh-Dole for a contractor to acquire title. Bayh-Dole deals only with the priority of title between a contractor and a federal agency after the contractor has acquired title. Nothing more.
NIST: Now, suddenly, inventors must be made to agree to assign subject inventions to the contractor.
Research Enterprise: Total hash!
Subject inventions are *only* those inventions already owned by the contractor. NIST makes an empty requirement. There’s no authority under Bayh-Dole to make inventors assign inventions to make those inventions “subject” inventions. Thus, the revised rule states that inventors must agree to assign to contractors inventions that the contractors already own. Big whoop.
But bet on it–NIST and university patent administrators and their legal advisors will insist that the new rule requires universities to require inventors to assign inventions made with federal support to their university–even though Bayh-Dole does not provide any authority for NIST to make this requirement, and even though the wording itself makes a hash of the requirement. Faux Bayh-Dole.
If one works through the logic documented here at Research Enterprise, that (f)(2) compliance requires research host contractors to turn their inventors into small business contractors for the purpose of Bayh-Dole’s patent rights clauses, then the new rule is utterly ambiguous–inventors now apparently are required to agree to assign inventions either to themselves or to their research host or to whatever other “contractor” is added by any assignment, substitution of parties, or subcontract of any type. There’s no authority in the new rule that permits a university (say) to substitute its own name for “contractor” in the (f)(2) agreement. There may well be a number of entities that become parties to the funding agreement and therefore are also “the contractor.”
Remember, (f)(2) is placed under the heading “Contractor Action to Protect the Government’s Interest.” According to NIST, the government’s interest is now that inventions made with federal support must become owned by the organizations that host the research, and not simply that inventors have a direct relationship with each federal agency that funds their work with regard to reporting inventions, signing papers for patent applications, and signing papers to establish the government’s rights. There are no papers there to sign if the same agreement requires the inventors to sign papers to establish the contractor’s rights.
Think about it this way–imagine (for the sake of thinking) that there are still organizations around that do not require their personnel to assign every invention they make to the organization for exploitation as a patent monopoly. The new NIST rule requires those organizations–ones that apparently value the freedom of their personnel to invent and choose what to do with their inventions–to require those inventors to assign their inventions to the organization–when doing so runs against the organization’s own policies and practices. Moloch state, bureaucrat’s dream.