“Protection” of inventions in Bayh-Dole

Twitter thread:

Federal patent law uses “protect” with respect to inventions only in Bayh-Dole’s strange definition of invention at 35 USC 201(d): “is or may be patentable or otherwise protectable under this title” What does it mean to “protect” an invention?

“otherwise protectable” implies that “patent” as a matter of law is a form of “protection” A patent grants the patent holder with respect to practicing an invention (i) the right to exclude others and (ii) the right to require compensation. So what is the *protection*?

But wait, there’s more! Bayh-Dole’s policy requires the patent system to be used to *promote the utilization* of inventions arising from federally supported research or development. 35 USC 200. This is a working requirement that applies only to Bayh-Dole inventions.

The patent system also publishes inventions. Doing so promotes the *progress* (dissemination) of the useful arts, but not necessarily the *utilization* of any given published invention.

So how does excluding or threatening to exclude others from using an invention promote the use of the invention? How does demanding compensation for use promote the use of the invention? Put this way, it’s not all that obvious how the patent system is to be used.

Ah, you say–the protection is of the opportunity to exclude others so that a single “thing”–person, company, whatever–can justify the cost of “development” of the invention into a commercial product. But how is that protecting the *invention*?

Is an invention damaged by use? Does use abuse an invention? Will use make an invention unusable? Will use of an invention ruin the opportunity for anyone to “develop” the invention? Really? Isn’t it often the other way around–use motivates development and standards.

*Everything* in Bayh-Dole refutes the idea that patents on Bayh-Dole inventions should “protect” speculative patent monopoly profit-seeking from the evils of general use and public benefit arising from that use.

The policy statement: promote use, promote free competition The government license to practice and have practiced = make, use, and sell The march-in for failure to achieve use with benefits available to the public on reasonable terms.

The nonprofit restrictions: (i) use of all income earned with respect to a subject invention less administrative expenses for managing subject inventions must be used to support scientific research or education.

(ii) subject invention assignment (even if by exclusive license) of a subject invention must carry the nonprofit restrictions–even if the assignee is a for-profit company. The for-profit must act in the public interest–income goes to scientific research or education.

In the nonprofit patent rights clause–35 USC 202(c)(7)–sharing royalty with inventors is an *expense*. So a for-profit assignee (by exclusive license, say) of a nonprofit subject invention can’t merely pay a 1% royalty and avoid the nonprofit restriction on income earned.

All of these things point to Bayh-Dole limiting speculative profit-seeking using patent monopoly positions, especially when those patent positions are secured on inventions covered by the nonprofit patent rights clause.

Subject inventions have a working requirement. Patents on subject inventions are not ordinary patents. Whatever that’s “protected,” it is not the opportunity to use patent monopoly rights to trade on the future value of excluding others or demanding payment for use.

And–given the practical application standard–use with benefits available to the public on *reasonable terms*, and the nonprofit restriction on income earned extended across all assignments no matter what the document is named–

–what has to be “protected” in an invention by means of the patent system, in Bayh-Dole’s usage, is

THE PUBLIC INTEREST.

Every gesture in Bayh-Dole makes the argument that using the patent system to exclude use or (for nonprofits and exclusive licensees = assignees of nonprofits) to seek profits by suppressing competition is

NOT in the PUBLIC INTEREST.

If it’s only by not enforcing Bayh-Dole and its patent rights clauses that somehow Bayh-Dole “works” is equivalent to renouncing Bayh-Dole’s policy requirements to use the patent system protect the public interest: Use with benefits available to the public on reasonable terms.

There’s no need for Bayh-Dole if the purpose of federal contracted research is to subsidize speculation on the future value of patents on inventions made in that work. Just stipulate that the federal government can’t have any interest in inventions made with its funding.

If any public interest requirement with regard to inventions would “chill” patent speculation and therefore “chill” the participation of nonprofits and small companies in federally contracted research, then federal funding cannot include public interest requirements.

The public interest apparatus in Bayh-Dole apparently exists to make it appear that there are public protections, and these protections in turn make it possible to allow contractors to retain ownership of inventions with no showing of capability, purpose, or effectiveness.

But no one complies and no one enforces and the govt does not act on its rights. So there are no public protections. Most everyone involved in practice renounces Bayh-Dole’s public protections. Lip service only. Bureaucratic paperwork only.

Protecting the public interest would “have a chilling effect” on patent speculation:

Govt practice = chilling

Promote use = chilling

Free competition = chilling

Exceptional circumstances = chilling

March-in = chilling

Reasonable terms = chilling

Publish use reports = chilling

Clearly those presently involved reject Bayh-Dole’s policy on public interest and have better ideas about how they should behave: without accountability, with no public right of appeal, in secret, trying to make money by speculating on the future value of patent monopolies.

So, is there a problem with “the public interest” as used to justify federally supported research and invention management? Or does Bayh-Dole, unenforced, attract the wrong researchers and organizations?

We paid people to search for water for our town. We gave them guns to protect any water they found, to ensure our town would get it. Now they have their guns aimed at us, saying that when they figure out a way to make piles of money from their claims, we might get our water.

They say our ideas about just bringing the water to town for all to have are “chilling.” We don’t know whether they have found water, but they want us to keep paying them to look. They claim that we really want the satisfaction of knowing that they are looking for water.

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