Bayh-Dole uses “protectable” with respect to inventions 35 USC 201(d). That’s strange. Nothing else in patent law has to do with protecting inventions. What could “protection” have to do with inventions, as a matter of law no less? To get at an answer to this question, we will have to explore the policy scheme that back claims about why the Bayh-Dole Act is necessary.
Let’s talk patent “protection.”
The Bayh-Dole Act is part of federal patent law, Title 35 of the United States Code. Among the strange provisions of Bayh-Dole, we find this at 35 USC 201(d):
The term “invention” means any invention or discovery which is or may be patentable or otherwise protectable under this title or any novel variety of plant which is or may be protectable under the Plant Variety Protection Act (7 U.S.C. 2321 et seq.).
Why strange? First, this is the only definition of invention in federal patent law, and it stipulates–for the Bayh-Dole Act, in Chapter 18, at least–that an invention is any invention that is or may be “patentable or otherwise protectable” under federal patent law. To work the grammatical logic here, an invention is any invention that may be “protectable.” Patentable is just one form of protectable. Not particularly helpful. Perhaps the part that operates is that an invention may also be a plant variety protectable under the Plant Variety Protection Act–but that’s not federal patent law.
But the second strange thing is the use of “protectable” with regard to inventions. Nowhere else in federal patent law is protectable used this way. (There’s really no other use of protect, protection, or protectable in federal patent law but for a header “Patents and Protection of Patent Rights”–not protection of inventions by means of patent law, but protection of patent rights from loss by means of proper registration).
What then is this “protectable” doing here? What does it mean for an invention to be protected by federal patent law? It’s one thing for a patent to be issued for an invention–the patent gives the patent holder an exclusive right for a limited time to (1) prevent others from practicing the invention and (2) to receive compensation as awarded by a court for infringement of the patent. As a result of these two rights, patent holders then have (3) the opportunity to grant licenses under their patent rights to those willing to provide in return consideration for the license without being taken to court. And, according to patent law, patent rights have the attributes of personal property, (4) patent holders may assign their patents and may receive consideration for doing so–indeed, for an assignment to remain effective, the assignor pretty much has to receive something of value in return–see 35 USC 261.
Let’s go through this list again:
(1) exclude others from practicing the claimed invention for a limited time
(2) receive court determined compensation for use
(3) receive negotiated consideration for a license
(4) receive negotiated consideration for assignment
In this list, what does it mean for an invention to be “protected”? Protected from what? “From use by others,” you say? Yes, perhaps that is it! That at least covers (1)–the right to exclude others for a limited time from practicing a claimed invention–including perhaps many, even thousands of instances of the invention covered by various claims. US patent law has–other than Bayh-Dole–no workingt requirement, so for any ordinary invention not subject to Bayh-Dole, the right to exclude others does not depend, expressly, on a patent holder working the invention itself. A patent holder gets the right to exclude others from practicing–making, using, selling, importing–a claimed invention in all its instances and functional equivalents. Thus, a patent holder can, in effect, not use a claimed invention and exclude everyone else from using as well, short of violating antitrust law. All this, in exchange for publishing the invention in an awkward form that those with ordinary skill in the art are judged to be able to understand, even if they cannot practice any instance of the claimed invention for two decades.
In what sense is the exclusion of use of an invention a matter of “protecting” inventions that have been made with public support? Surely, the invention will not be damaged by use. Some but certainly not all business opportunities might be damaged by use–even use of a claimed invention by the patent holder might damage business opportunities that are available only when the claimed invention is not used, such as selling a product that practice of the invention would make obsolete. We might say, then, that a patent “protects” some business opportunities for the patent holder, or “protects” at least some business opportunities that someone–even if not the patent holder–might in the future find desirable. Everything then depends on who–and what–those someones are.
“There are business opportunities here, that if we obtain a patent, will not be available to someone if we do not obtain a patent. That is what it means to “protect” an invention made with federal support.”
In this version of response, “protecting” an invention with a patent is actually “protecting” a future business opportunity on behalf of someone who values that business opportunity. The business opportunity for the patent holder then becomes the opportunity to profit in the future by having preserved–protected–a business opportunity for a perhaps unknown and non-existent someone else who would find that business opportunity desirable and would not if there were no patent.
Thus, to start with, this use in Bayh-Dole of “protectable” points to the use of the patent system to exclude the use of an invention, and that a patent, by granting the right to exclude others, creates business opportunities that are thought to arise through (i) the nonuse of the invention, (ii) use of the invention only by the patent holder, (iii) a trade on patent rights based on the infringing use by others (court-awarded compensation), (iv) licensing (a promise not to enforce a patent for infringing uses, typically for consideration in the form of a contract), and (v) assignment (conveyance of the invention and associated patent rights to another, again typically for consideration).
“Yes,” you might say, “I see all that. That’s what the patent system permits. That’s an inventor’s reward for publishing an invention through the patent system. And that, in turn, is more than an incentive to publish an invention–it is an incentive to invent.”
And here’s where we would, if not careful, part ways with reason and practices in the big wide world. Even if patenting were an incentive to invent, it is not the only incentive to invent and it may well not be the primary one for most people. And for some people, patenting may be a disincentive to invent. Why invent something only to have an employer or worse merely someone who handled research money for you take it way, put it behind a paywall, and prevent anyone–including yourself, the inventor–use the invention without first paying for the right to do so? Why might go so far as to propose that the patent system does not provide an inducement to invent. Inventors invent without the patent system, even in defiance of the patent system. The patent system’s purpose, according to the Constitution, is to promote the progress of the useful arts–to spread those arts around. A patent does this spreading, this promotion, most directly by publishing the invention.
Anyone reading the patent may then learn how the invention works and decide whether to design around the invention, improve on the invention and file a patent to block all others, including the inventor, to use the improvement (without a deal), ignore the invention, seek a license from the inventor, or infringe. If you think a bit about these options, one can see that a patent puts an invention at some risk–to be designed around, to be blocked by improvements made by others, to be undercut by being ignored (if not spoken badly of), to be excluded from standards, and the like. In any of these instances, a patent does nothing to “protect” the invention and by its mere existence creates a great deal of incentive for some people to undermine the patent and to abuse the invention. It is nonsense, in the light of practice, then to think categorically that a patent “protects” an invention. A patent may well also imperil an invention, to put it at risk of not being used. Until a patent holder makes clear just what the patent holder will do with any given invention, it is entirely up to the patent holder to find a use for the invention. There’s no requirement in US patent law that a patent holder must work the claimed invention. Thus, the only reasonable choices one can make in the absence of a clear, reliable indication from a patent holder about how others may be involved in using the claimed invention is to ignore, design around, exclude from standards, invent and patent stuff that will block the development of the invention.
In a sense, then, a patent without a plan focuses the entire responsibility for use and development of a claimed invention–in all of its potentially many instances–on the patent holder. This is the essence of federal research invention policy–that whenever a federal contractor acquires any invention arising from federally supported research or development, then federal policy defaults to allowing that contractor to be entirely responsible–smarts, money, facilities, plan–for using and developing the invention in the public interest, to achieve practical application, to use the invention so that benefits of that use are available to the public on reasonable terms. Without Bayh-Dole, each invention arising from federally supported work would be parsed for public interest–if made by a company with capability and an established commercial position, then the company can roll with the invention as it normally would–except if a federal agency intended to develop the invention to the point of practical application, or the invention was directed at public health or safety, in which case the company would get a non-exclusive license–and so would everyone else.
Even if the patent system were to offer even greater “incentives”–$100,000 to the inventor of every issued patent!–those incentives still would not track the motivations by which inventors invent. “Inventors” then would aim to produce the “least patentable” invention and file many invention applications. Essentially–game the system for the incentive rather than invent for the spark of insight.
One might have a policy purpose–a twisted policy purpose–to so adjust the incentives of the patent system so that there would be no inventors remaining who were not somehow motivated by its rewards (or its sanctions). But even then we would expect that people would find a way to invent covertly and avoid such a system that demanded their participation and demanded furthermore that all acknowledge that the true, and only, motivation to invent was to obtain a reward or avoid a penalty dispensed by the patent system. If you think it’s ridiculous to consider such a system, think again. This twisted system is exactly what university administrators created after Bayh-Dole was passed. They attributed this twisted system to Bayh-Dole, and had at it for thirty years before the Supreme Court caught them out at it and with their decision in Stanford v Roche threw out their false claims about the law–that Bayh-Dole vested ownership of inventions with research hosts not inventors–and by implication that inventors then were required to use the patent system, and that university culture must be changed so that inventors working on projects proposed for government funding in the public interest will be motivated instead by the hope for a share of royalties from university money-seeking licensing efforts.