We are working through the Faster Cures FAQ on Bayh-Dole.
2. What does Bayh-Dole say about the ownership of inventions and technologies?
Pursuant to Bayh-Dole, universities and other nonprofit organizations that receive federal funding, may “elect to retain title to any subject invention.”
Bayh-Dole addresses “patentable inventions” (and plant varieties), not “technologies.” In a sense, Bayh-Dole breaks up technologies into newly patentable fragments. As a federal agency distributes research work to many nonprofits, Bayh-Dole’s effect is to fragment any emerging technology into patentable bits and unpatentable bits. The patentable bits then end up being owned by many different nonprofits, making it virtually impossible for any company to acquire all the rights necessary to practice any particular bit of the technology–and it’s an even greater problem if a company desires to develop a product for sale. Can you think of any slower way to create a “cure”?
Thus, we might say that Bayh-Dole “says” that ownership of bits and pieces of emerging technologies should be fragmented among competing nonprofits, giving preference to each nonprofit pursuing its own financial interest in favor of combining all such ownership positions in a single entity. In prior executive branch patent policy, outside of procurement from commercial firms and the IPA program, the effort was to consolidate patent ownership claims in the federal government and then release for public use the consolidated package of rights–everyone got the same package deal to research, use, develop, compete over, obtain patents on improvements and applications, and develop standards.
If a nonprofit acquires title–making a given invention become a subject invention– Bayh-Dole requires federal agencies to allow the nonprofit to “elect to retain title,” subject to the public covenant that runs with subject inventions as expressed in the standard patent rights clause. Continue reading