The “fix” in Bayh-Dole

People worry at times that there is a “gap” or “flaw” in Bayh-Dole. They see the problem to be that Bayh-Dole doesn’t out and decree that all inventions made with federal support are owned (or to be owned) by the institutions that host the research. They think (or assert) that it is a really great idea, in terms of practice, research, innovation, economic development, making money for institutions, and public benefit, for institutions to own such inventions outright, or at least as expeditiously as possible. So they want to fix what they take to be this gaping flaw by inserting an assignment requirement in the default patent rights clause because the IPA program had such a requirement. That’s now NIST’s approach–and no doubt it will “work” as a cheat around Bayh-Dole.

But here are the problems with the “put an assignment requirement in Bayh-Dole” approach:

  1. Bayh-Dole does not authorize it. Bayh-Dole preempts all other statutes on the matter of subject inventions, but for Stevenson-Wydler. And Bayh-Dole kicks in only *after* a contractor has acquired an invention. If there’s to be a Bayh-Dole requirement of assignment of inventions to a contractor, then it has to go through Bayh-Dole’s “extraordinary circumstances” procedure for each proposed funding agreement. There has to be some reason to vary from Bayh-Dole’s default. NIST cannot simply make assignment by inventors a default without any authority to do so. Follow the law, NIST–don’t just pull things from your posterior cortex.
  2. The Supreme Court ruled that Bayh-Dole does not affect initial ownership of inventions, that Bayh-Dole was not a vesting statute. To change the patent rights clause to force inventions to vest with the organizations that host federally supported research turns Bayh-Dole into a vesting statute–which it does not authorize–and which the Supreme Court said it does not do and was not Congress’s intent to do. Any method of forcing assignment–vesting, right to take, requirement to assign–falls outside Bayh-Dole’s authority.
  3. Federal patent law derives from the US Constitution, which grants to the federal government the right to reserve for inventors exclusive rights to their inventions. Bayh-Dole is part of federal patent law. To make inventors give up ownership of their inventions amounts to forcing inventors to use the patent system–but now on behalf of non-inventors that happen to have handled money for federally sponsored work. Nothing in patent law gives the federal government the right to force inventors to use the patent system.
  4. It’s a crappy idea. Historically, forcing inventors to assign to institutions hasn’t resulted in any great outpouring of public innovation. The IPA program was shut down for being ineffective. Bayh-Dole replicates much of the IPA program with enough differences to be crappy in new ways as well as well established ways. The Harbridge House report–the basis strangely enough for the restart of the IPA program by the NIH–found that inventions held by inexperienced owners or licensed to companies had the least chance of reaching practical application. And under the faux Bayh-Dole claim that inventors must assign, the results have been terrible–it’s just that you will have to work hard to find anything about actual results. Bayh-Dole makes inventions use reports optional for federal agencies, and whatever reports agencies do require are required to be held as government secrets. Universities don’t report their Bayh-Dole-based activity and don’t report the metrics that Bayh-Dole identifies–utilization of inventions, practical application of inventions, benefits to the public on reasonable terms, date of first commercial sale or use.

The effort to force inventors to assign their inventions is just the next attempt to “fix” Bayh-Dole, given that the attempt to use Stanford v Roche to create a judicial interpretation of the law that vested ownership of inventions outright with universities failed miserably, despite scores of university lawyers weighing in with their poorly reasoned, metric-switching, inventor-loathing arguments.

I know, illogic and deception are mere technicalities for those with a never-ending quest to suck all the private value they can from federally supported research. And it’s an empty gesture to say, “But we share part of our loot with the inventors!” There’s loot perhaps 1 in 200 inventions, and even then, it really is loot–mostly the result of speculation on the future value of research findings. “We steal from inventors, but from time to time we return some of what we have stolen to a handful of inventors, so it’s all good for all of them.” Why would university inventors want to be forced to be complicit with such a thing? It sounds like a protection racket–“Nice research career ya got there, buddy. Pity if something should happen to it.”

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