This is a story about 35 USC 201(b), 35 USC 202(a), 37 CFR 401.9, and 37 CFR 401.14(f)(2) and (g)(1). These provisions of Bayh-Dole, implementing regulations, and standard patent rights clause, when read together, create ruby slippers.
The story requires the usual build up by way of documentation. If you can’t stand the tension, scroll down to the stars.
Here’s the (f)(2) requirement, for each funding agreement (broken up into readable units):
The contractor agrees to require,
That is, the institutional contractor agrees to require–meaning, under the funding agreement containing the standard patent rights clause, the institutional contractor must take a positive action to require, and therefore cannot require anything else–
by written agreement,
That is, the requirement is a written agreement–not merely a policy statement, not something general–and the written agreement establishes the responsibilities of individuals who may invent when they do invent:
its employees, other than clerical and nontechnical employees,
That is, not all employees, but rather only those for which it would be proper for the government to expect an invention deliverable–a clerical or nontechnical employee could not reasonably invent within the scope of his or her employment for the purposes of the federal contract, so no deliverable for them.
And now the delegations:
to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the contractor each subject invention made under contract
Only an inventor can disclose an invention–it’s what the inventor has conceived. An institution can only guess on what the inventor has done until the inventor has documented the invention. Continue reading