Bayh-Dole requires federal agencies to require that owners of subject inventions grant to the government a license in those inventions. Sounds easy, and really, it is. But people are fickle and university patent administrators can be more fickler than most, especially with nearly unlimited legal budgets to force their fickles on the rest of us.
Here’s Bayh-Dole (35 USC 202(c)(4)):
With respect to any invention in which the contractor elects rights, the Federal agency shall have a nonexclusive, nontransferrable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world:…
That is, federal agencies are required to use a patent rights clause that “effectuates” this license. Notice that the license is directed to the subject invention, not to any particular patent right in the subject invention.
Notice as well that the license is required as a condition of the contractor’s “electing” to retain ownership of the subject invention. That is, the license happens, generally, before any patent has issued on the subject invention.
The license is to the invention as disclosed and acquired by the contractor.
That is, regardless of whatever rights the contractor might develop in the invention. Why does this matter?
In the late 1940s, when the Department of Defense expanded its contracting for research, it included an “anticipation” clause–the DoD required a license to any invention made with federal funding or in anticipation of federal funding. One could not rush to file patent applications based on a proposal for federal support and thereby frustrate the federal government’s license in whatever work was done under the contract after it was awarded. Makes sense, especially if one is working in a world full of fickle university administrators. Continue reading