Bayh-Dole inventor disclosure summary

Let’s summarize.

Bayh-Dole does not require inventors to disclose inventions arising in federally supported research or development.

It’s just not there. Go look. I’ll wait.

Bayh-Dole does not require inventors to give up rights to their inventions. 

It’s not there. The Supreme Court in Stanford v Roche looked. The justices did not find anything. Bayh-Dole applies only after a contractor has acquired ownership.

Bayh-Dole does not require inventors to use the patent system. 

Nothing in Bayh-Dole compels inventors to file patent applications. Federal patent law does not require inventors to use the patent system. Bayh-Dole is part of federal patent law. If Congress had wanted to upset things this way, they would have had to make their intentions abundantly clear. Not there.

Contractors, if they acquire inventions made under contract, must disclose them. But contractors do not have to acquire any inventions made under contract.

Contractors, if they elect to retain title to the inventions made under contract that they acquire, must file patent applications. But contractors do not have to elect to retain title to inventions made under contract if they have gone and acquired them.

But that’s contractors, not inventors. A difference.

Okay, so you concede that maybe these things are technically true, but what about the implementing regulations and standard patent rights clause? Perhaps Bayh-Dole was designed to make things look technically true but really folks intended something completely different that only the smartest, most well informed, and lawyered-up people are qualified to interpret.

What about these superbly qualified people who should do the reading of Bayh-Dole for us, to overlook the technically true in favor of a technically not true bigger policy picture that must be more desirable and therefore surely was intended? Broadly, if Bayh-Dole does not require inventors to disclose inventions, assign inventions, or file patent applications, then neither can the standard patent rights clause or any regulation deriving it authority from Bayh-Dole. Oops. My bad. That’s still technically true stuff.

Sigh, let’s deal with it.

Disclosure. 37 CFR 401.14(f)(2) requires each contractor to require its employees to make a written agreement to protect the federal government’s interest in inventions owned by the contractor. The written agreement requires inventors to disclose those inventions–ones that the contractor owns and made under contract–in order for the contractor to comply with its obligation to disclose. But the contractor has no obligation to comply with until an inventor discloses to contractor personnel responsible for patent matters. An inventor doesn’t have to disclose and the contractor does not have demand disclosure.

Furthermore, contractors are required to provide instruction to inventors on the importance of timely reporting of inventions. But that is merely instruction about it, not a requirement that inventors actually do it. And further-furthermore, the contractors may use “employee agreements” to comply with the instruction requirement. These employee agreements are not the written agreement–or else the written agreement provision just above would have required it. And these employee agreements aren’t necessarily patent agreements because the patent rights clause does not use “patent agreement” even though the Federal Procurement Regulation patent rights clause approved just four years earlier did use “patent agreement.” And further-further-furthermore, the use by the contrator of an employee agreement to instruct is entirely optional.

Assignment. The written agreement language in 37 CFR 401.14(f)(2) for 35 years had no assignment language at all. Last year NISTwits altered the deal by adding an assignment requirement. But that requirement is directed at subject inventions, not inventions made under contract–that is, NIST changes the patent rights clause requirement so that if a contractor owns an invention made under contract, the inventors must promise to assign that invention, which they obviously must have already done. There’s nothing in Bayh-Dole that requires NIST to be competent about things. Thus, who are we to complain?

There’s no requirement that inventors assign to contractors. As we have already observed, it can’t be, since Bayh-Dole does not apply until after a contractor has acquired title, not before. Bayh-Dole does not require inventors to give up their patent rights, just as the rest of federal patent law does not.

Filing patent applications. Okay, so you want to be fussy. Inventors must have a written agreement to execute papers to permit patent applications to be filed on subject inventions. That’s right, on inventions made under contract that the contractor has acquired. Not inventions owned by the inventors–and Bayh-Dole doesn’t require inventors to assign anything to anyone.

There’s more. Let’s be super fussy, because maybe you really, really want Bayh-Dole to screw over inventors somehow, in some not-true technical way–all it has to be is a way technically not-true just enough to make it expensive for inventors to fight it and just complicated enough that you can snooker a judge.

Okay. Here goes. The written agreement requirement is drafted to make evident that it compels contractors to make inventors parties to the funding agreement. By the definition of funding agreement, any assignment, substitution of parties, or subcontract of any kind adds parties to the funding agreement. That’s just what the written agreement requirement does. The contractor adds employees to the funding agreement. They are, by Bayh-Dole’s definition, contractors. When they invent under contract, they own their inventions, and those inventions then are subject inventions–but not inventions owned by their employer.

Not only are the inventors contractors but they are small business firms, according to the patent rights clause at 37 CFR 401.9 that is specific to inventors who own their inventions. Go back to the fundamental provision of Bayh-Dole–35 USC 202(a). Nonoprofits and small businesses may elect to retain title to any subject invention, provided they disclose. That means inventors may elect to retain title, provided they disclose. They can disclose directly or through their employer. Bayh-Dole has nothing to say about it. Nor does the standard patent rights clause.

But the patent rights clause does forbid contractors from taking an interest in the subject inventions of subcontractors, and inventors when they make the written agreement become subcontractors with regard to inventions made under contract.

It is clear to anyone but a NISTwit that the NIST addition of an assignment requirement for subject inventions in the written agreement can only apply to inventions that the employer-contractor owns, not to inventions owned by inventors. Inventors have the benefit of their own patent rights clause. That clause stipulates that they are to be treated as small business firms. Small business firms–including inventors treated as such–have the benefit of the Bayh-Dole assurance that they can elect to retain title. That is, they can choose not to assign to anyone–not to their employers, not to the federal government.

And just to hammer it home, the inventor patent rights clause does not include any requirement that inventors file patent applications. They can blow patent rights. Only if they disclose, elect to retain title, and file a patent application and then screw up the patenting can a federal agency request title.

There it is. If you want to play sleight of hand, you argue that the NISTwit change in the written agreement to require assignment of subject inventions must mean that despite the Supreme Court’s ruling in Stanford v Roche, inventors must now assign any invention made under contract to their employers–and despite the prohibition on just such requirements by the standard patent rights clause, the assurance of Bayh-Dole that contractors can elect to retain title so long as they disclose, and the presence of a patent rights clause specific to inventors–which NIST claims not to understand. No wonder.

Finally, you are left with the idea that somehow Congress intended to screw over inventors with technically subtle changes to federal patent law. The Supreme Court rejected just such handwaving for vesting of ownership.

Maybe–just maybe–rather than insisting that somehow a dark vision of inventors forced to cough up their patent rights and still be forced to use the patent system was the intended public policy all along but for massive failures of the law to provide any support–maybe, just maybe that’s because that dark vision is not at all the public policy of the law.

Just give it up, you dark lords who want institutional ownership of federally funded research, who want to deal in patent monopolies. Who want to speculate at the public expense, as if–dark lords–that such speculation is the highest form of public interest.

Screw it.

 

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