It appears that AUTM and others are gearing up for a big push to change Bayh-Dole. They hope to get the Supreme Court to take a look at Stanford v. Roche and are ginning up a new amicus brief to that effect. I haven’t see the draft, but I hear that 20+ universities are already signed on.
The change I expect they will argue for will be that Bayh-Dole imposes a federal “invent for hire” condition on all federally sponsored research at universities and other federal contractors, so that the contractor owns patent rights outright without the need for assignments; thus, Stanford v. Roche was wrongly decided, the present assignment is pre-empted under federal law, and Stanford gets its money. Elsewhere I’ve argued this is a heap of parrot droppings, which it is. Close reading of the law puts the AUTM position to shame. Longstanding practice in the PTO and TLOs shows no one has interpreted the law that way. And it’s counter to sound public policy and innovation practice.
The effect of such an argument is to hump up administrative power and treat faculty as mere labor. This, when faculty inventors created the approach the TLOs have inherited and now are running into the ground, making Bayh-Dole into Bah! Dolts!
Now of course, the amicus brief could go a different way than the last one AUTM signed on to. It could be that the argument is that Stanford v. Roche was wrongly decided because the *scope* of the present assignment could not extend to the federal grant work, and that the moment the investigator was working within the scope of the federal grant, the scope of the present assignment was pre-empted. This would be a useful argument to explore. It would have to do with how scope becomes contractual, a meeting of the minds, and the precedence of federal procurement over prior private agreements. Given that the scope language was dictated by the company claiming the benefit (or, the company that acquired the assets and therefore claiming the benefit), one might expect interpretations to go against the drafting party.
Rather than turn the whole invention ecosystem on its head to shake a few million out of corporate pockets, it might be worth slicing the case up a different way. Then one can ask whether it is sound public policy that present assignments are forever unless expressly limited in scope, and that the scope, if broadly applicable to almost anything should be interpreted that way, so that research personnel no longer have independent livelihoods, post-employment. Another way: should any present assignment absent a clear, express commitment by the future inventor to give over all ownership regardless of future circumstances be read that way?
What matters is whether this is how we want things to be, not so much how accidents of the existing law play out.
So we’ll see what AUTM comes up with this time, and whether it continues its attack on university faculty inventors, or whether it rediscovers its roots and changes direction.