In most cases, a principal investigator will know immediately whether an invention or discovery is within scope of a well drafted research agreement–is this invention something that was proposed, as the solution to a problem, say, or that might arise as a result of an investigation? Did the research propose to build or demonstrate or test something new that might have utility for the grantor? Why would a principal investigator hold out on a sponsor of research? Would such “holding out” constitute research misconduct? If so, how could university administrators properly review the situation to ensure compliance if “holding out” on a sponsor meant that the university might be in line for profits from patent licensing via an invention management agent? The review of inventions by deans and business officers only works if the university has no interest in the outcome but for compliance.
Of course, with federal funding, this entire calculus is switched around. If the government receives inventions to ensure that the patent system is used to make inventions (and rights to inventions) broadly available to all, then “holding out” on the government amounts to finding a way to prevent the government from making inventions broadly available (without charge, without playing favorites, without upsetting the competition for additional research and development funding). An inventor might “hold out” and claim an invention, then, against the interests of a federal agency because the inventor wants to use the patent system in some other way–to prevent all use, or to make money from any use, or–perhaps–to make the invention broadly available, but using some special method that’s different than the government’s methods and so does for the government more and faster and better than what the government hopes to accomplish using its methods.
The IPA then switches the calculus of this last –perhaps– into the primary position. The government, so the IPA proposes, wants private invention management agents to step in and take assignment of inventions made with federal support from inventors and use the patent system better than might the federal government to do this –perhaps– thing, to make inventions broadly available using special private methods better than the government’s own methods. In this view, if an inventor “holds out,” the inventor is now “holding out” against the assumed better use of the patent system entrusted by the federal government by federal contract operating outside the actual funding agreement to private invention management agents. Continue reading