Another question on RE: When does Bayh-Dole not apply?–2

Let’s get into the details–dance with devils, reveal Bayh-Dole’s true character. Get some sympathy.

Let’s consider again that heading of Title 35 USC, Chapter 18:

“Patent Rights in Inventions Made with Federal Assistance.”

In Bayh-Dole, “patent rights” are restricted, relative to ordinary patents, “patent rights” includes contractor “rights to patent” relative to federal claims on that right, “patent rights” also includes the federal government’s right to grant exclusive licenses to inventions owned by the federal government; “invention” is broadened in weird ways to include non-patentable stuff, and “federal assistance” is really, really broad.

Bayh-Dole does four things:

authorizes as a default that nonprofit and small business federal contractors, if they acquire a covered invention, may, by timely disclosure and notice, preempt any claim of federal ownership to that invention.

establishes procedures by which federal agencies and new statutes can vary from this default.

authorizes federal agencies the right to grant exclusive licenses in inventions owned by the federal government and establishes procedures for federal licensing.

establishes the patent property rights in covered inventions, including imposing a working requirement for those inventions, whether owned by a contractor or by the federal government.

establishes the conditions upon which the federal government may receive a license to or ownership of a subject invention or require the licensing of a subject invention.

Bayh-Dole applies generally to inventions arising in federally supported research or development (35 USC 200), applies to rights to subject inventions acquired by nonprofit and small business contractors (35 USC 202(a)), applies to other federal statutes (35 USC 210), and applies to federal agencies (most everything else). Not in this list? Bayh-Dole doesn’t apply.

“Federal agencies” is broad (there’s a cascade of definitions within definitions starting at 35 USC 201(a))–including agencies and military departments, and within agencies, executive departments, government corporations, and “independent establishments.” Executive agencies also include the Panama Canal service and the Smithsonian Institution. There are skew definitions of government corporation. 5 USC 103(a) defines a government corporation as “a corporation owned or controlled by the Government of the United States.” Well, that’s helpful in a tail-biting sort of way. Government corporations include the US Postal Service, Amtrak, the Export-Import Bank, and Federal Prison Industries.

Oddly, depending on one’s definitional whim, corporations established by an act of Congress, such as Research Corporation or the Washington Research Foundation, may come within the scope of Bayh-Dole’s raucous definition of “federal agency”–depending on whether in their establishment Congress expressly conveyed title to the corporation to a non-federal entity.

“Independent establishment” receives no supplemental guidance. “Independent agencies” are established by Congress and may act outside the executive branch. The Environmental Protection Agency, for instance, or the Federal Communications Commission, or the Federal Trade Commission. There’s a wide range of such independent establishments, and their funding agreements involving research, development, or experimental work come within the scope of Bayh-Dole.

Let’s point out, then, some things that are outside of Bayh-Dole’s scope.

Bayh-Dole does not apply to work done under federal funding agreements that do not involve a federal agency or that involve the Tennesee Valley Authority. (35 USC 201(a))

Bayh-Dole does not apply to work done in funding agreements that are not for research, experimental, or development work. (35 USC 200, 201(b))

Bayh-Dole does not apply to anything outside its definition of “invention.” (35 USC 201(d))

Bayh-Dole does not apply, in the case of contracted research, experimental, or developmental work, to anything–inventive or otherwise–that a contractor does not own. (35 USC 201(e)) and Stanford v Roche (2011)

Bayh-Dole does not apply to inventions made by personnel who are not employees of a contractor. (37 CFR 401.14(f)(2))

Bayh-Dole does not apply to inventions made by contractor employees who are clerical or non-technical workers. (37 CFR 401.14(f)(2))

Bayh-Dole does not apply to inventions that the federal government does not own or otherwise have an interest in. (35 USC 205)

Bayh-Doe does not apply to any disposition of rights for which it is in conflict with the Stevenson-Wydler Act or any statute later than Bayh-Dole that cites Bayh-Dole and expressly takes precedent over Bayh-Dole. (35 USC 210)

Bayh-Dole mostly (but for 35 USC 200) does not apply to inventions owned by the Tennessee Valley Authority. (35 USC 201(b), 37 CFR 404.1).

There. Perhaps you are not TL;DR but needed to see some red tails and horns. Satisfied?

No, say it isn’t so–you want more? Crap. We are going to need bigger devils!

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