Though it’s rather useless to do so, let’s consider then the steps required by a Bayh-Dole compliant disclosure. I say it’s useless because no one complies with Bayh-Dole and federal agencies don’t care. The law doesn’t operate but enables something else to operate. It’s like using the rule of law to avoid the rule of law. If you follow this recursion, then you see the cleverness of Bayh-Dole. It’s the flip of “copyleft.” Rather than use copyright to require others to “share alike,” Bayh-Dole posits using patents to “defect on the commons that justifies the use of public resources” to justify the use of public resources. “We must prevent stuff that is publicly funded because it should be public to become public because if it became public then the public would not benefit from it not becoming public.”
Let’s put it in terms you may recognize: the public won’t benefit from publicly funded research unless that research is secured as patent monopolies and conveyed to single companies for their exclusive use, because no company will develop any such invention without a patent monopoly and freedom to exploit that monopoly–and that, my friends, is the only path to public benefit arising from publicly funded research. Any enforcement of Bayh-Dole would sour the whole enterprise and drive away these companies that are essential to the public benefit that may arise from publicly supported research.
Or, in its politically effective form: “what is available to all will be used by none.” Absurd? Yes, of course. Crazy? Yes, beyond simple lunacy. Inspired? Yes, but only if you are a BDCBF Bayh-Dole advocate.
Steps in Disclosure
It is important, then, that folks get the disclosure right. Bayh-Dole’s standard patent rights clause (at (f)(2)) requires contractors to require their technical employees to make a written agreement that includes a promise to disclose inventions to the contractor so the contractor can comply with the disclosure requirement. The disclosure must identify the funding agreement and the inventors, as well as any statutory bar to patenting. But the core of the disclosure is that:
It shall be sufficiently complete in technical detail to convey a clear understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention.
In other words, the disclosure is essentially the text needed for the specification part of a patent application–the part that teaches one with ordinary skill in art how to practice the invention. Put another way: before a contractor must disclose a subject invention, the contractor must
- determine that the invention is or may be patentable,
- obtain information on possible patent bars,
- acquire ownership of the invention,
- determine that the invention was made under a federal contract,
- obtain a sufficient description of the invention that it could use the description to prepare a patent application, and
- convey this description to its patent administrators.
This ought to look like a weird list. How can anyone determine that an invention may be patentable without having a full disclosure of the invention and information regarding patent bars? But none of these things are required until a contractor owns an invention made under a federal funding agreement–including, even, determining whether the invention was made under a federal contract. Continue reading