Are copyrights considered inventions under Bayh-Dole?

I saw a search show up here at Research Enterprise–“Are copyrights considered inventions under Bayh-Dole?”

Simple answer.


Brief answer.

Copyright is a form of intellectual property. At one time, perhaps, the idea of copyright was itself a social invention. Something neat during the reign of Queen Anne. Copyright, then, could never be considered inventive now, so wouldn’t be an invention under Bayh-Dole.

Longer answer. Just because.

But what about the subject matter of copyright–original works of authorship fixed in any tangible medium of expression? Can an original work of authorship also be inventive? Yes, of course. Consider, for instance, software. The Copyright Office classifies software source and object code as a “literary work.” Thus, source code is a work of authorship and can even be original in part. It is not that expression of original work can be inventive, but rather that that expression may also be a mode of implementing an inventive idea. Thus, one can author code (expression, copyright) that when executed performs a new, useful, and otherwise non-obvious function (inventive, patent).

But owning a right in the expression has nothing to do with owning a right to an invention to which the expression is attached. Software code may have many features that are expressive (such as a user interface) and yet have nothing at all to do with a component of the code that is inventive (the implementation of a given algorithm to perform an unanticipated function) that may be invoked by the operation of the code. 

Just as it does not matter whether you call your invention by a distinctive name and use that name in commerce–and thus create a trademark–it does not matter whether elements of an invention are also a matter of copyright. Similarly, a contractor could own the physical materials by which an invention has been actually reduced to practice and still have no ownership whatsoever in the invention. A new, useful, and non-obvious invention, because it is by definition unanticipated, cannot be equitably claimed by an employer based on use of materials or resources or even employment.

And just for extravagant measure.

Bayh-Dole’s scope is three-fold:

Inventions arising from federally supported research or development (35 USC 20o)

This scope is the most general. It applies regardless of whether there’s a funding agreement with a contractor or the work is done by a federal employee. It applies regardless of who owns such an invention–inventor, contractor assignee, federal government assignee, anyone else as assignee, any exclusive licensee.

Subject inventions (35 USC 201(e), 35 USC 202-204)

Subject inventions are ones (i) acquired by a contractor and (ii) which are or may be patentable or are protectable under the Plant Variety Protection Act and (iii) which have been made in the performance of work under a federal funding agreement.

This scope is specific to inventions acquired by contractors. There’s a bunch of technical (and broad) scope going on in “made” and “in the performance” and “work” and “under” and “funding agreement.”  We don’t need to get into it all here, but the scope is very broad, a funding agreement can be extended in all sorts of ways, and the number of contractors can be multiplied to include assignees, subcontractors, and substituted parties.

Federally owned inventions (35 USC 207-209)

Federally owned inventions are ones which have been acquired by the federal government and which are or may be patentable, except those acquired by the Tennessee Valley Authority.

This scope is specific to inventions acquired by the federal government, including inventions acquired from federal employees and from federal contractors. In implementation, the scope includes federal agencies and corporations (such as the US Postal Service), but does not include the legislative or judicial branches of government.

Inventions acquired by federal government from contractors are still subject inventions, but Bayh-Dole ignores this. Inventions acquired by the federal government from its employees and from inventors working under federal contract who do not assign their inventions to a federal contractor are not subject inventions.

If an invention comes within Bayh-Dole’s scope, then Bayh-Dole applies–otherwise, it does not. It does not matter that the expression of the invention–its actual reduction to practice, its best mode of practice, a prototype, or form of implementation also may have elements to which copyright applies–the only thing that matters is that the inventive elements come within the scope of Bayh-Dole.

Thus, if a contractor does not own an inventive element, that element cannot be a subject invention, and the part of Bayh-Dole specific to subject inventions cannot apply. It does not even matter if a contractor owns the copyright in an element of an invention. That element–that original work of authorship–is not the invention. Copyright and patent are distinct. An invention may involve original works of authorship, but ownership of the copyrights in those works of authorship does not give any right of ownership to the invention itself. Bayh-Dole does not care if there are claims to ownership of copyrights, trademarks, trade secrets, tangible materials, technical information.

Specify the invention. Has it been acquired by a contractor or by the federal government but for the Tennessee Valley Authority? Is it or may it be patentable or a plant variety? Did it arise in a research, development, or experimental project receiving at least partial support from the federal government? Yes all the way down–Bayh-Dole preempts other federal laws and regulations on the matter (except for Stevenson-Wydler and any law that expressly cites Bayh-Dole and takes precedence over it). If there’s a “no” anywhere in the chain, then Bayh-Dole does not preempt other federal laws and regulations. So if Bayh-Dole doesn’t apply, then if no special statute (such as the Space Act) doesn’t apply, neither does executive branch patent policy, which has been modified to require Bayh-Dole, which doesn’t apply, which requires Bayh-Dole . . . . Okay–lesson learned. Good question. Stupid law.


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