37 CFR 3.73. “The inventor is presumed to be the owner of a patent application, and any patent that may issue therefrom, unless there is an assignment.”
In a Bayh-Dole situation, the university is never the inventor. Even if one wanted to construct this in general, along the work made for hire argument in copyright, the structure of the “principal investigator” and the statements we find in university policy that extramural research is at the voluntary request of the faculty member and is not a duty imposed by the university make it clear that the university is not commissioning the inventive work, nor is it being done on behalf of the university. The government is seeking to support the work of the principal investigator, not the university. The university is just a convenient means to manage the funding logistics. The inventor is a natural person.
The university (or whatever organization the university designates) needs an assignment to become the assignee. That’s how the university “becomes of record” to prosecute a patent application directly. That is, it must establish its ownership “to the satisfaction of the Director.” That requires, in turn, a “signed statement identifying the assignee” (that is, the university, let’s say) and “documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment).”
If Bayh-Dole had set up invent for hire, then 37 CFR 3.73 would have been changed. It would have to have been changed. An inventor would be presumed the owner except if supported by a funding arrangement subject to 35 USC Chapter 18, in which case the university would be presumed to be the owner if it had elected to retain title. No documentary evidence showing a chain of title from the original owner to the assignee would be needed. The university would not be an assignee. The university would be the original owner, not the inventor. The only documentary evidence would be a letter from the university to the government electing title, reciting the invention, and showing that the invention was supported by a federal funding arrangement under the standard patent clause at 37 CFR 401.14(a). That’s what folks would be submitting to the PTO. That’s what the MPEP would explain to PTO officials and the public. We don’t find any of that. Clearly this is a WTF? not an OMG! moment.
For someone to persist in going after the idea of invent-for-hire or even instant-title-on-election one has to rebut the presumption that the inventor is the owner, and must establish ownership to the satisfaction of the Director some other way than by means of an assignment document. The argument is then, essentially, that this happens “by magic”. That is, “automatically”. That is, when the university elects to retain title, it also there and then obtains title. That this is so obvious that no one needs even to point it out anywhere else.
It is as if Bayh-Dole creates a force-field that prevents title from attaching to anything until the university chooses to “retain” it. The law does not say this, of course. It does not point out that by electing to retain title, something else substantive happens at that moment–that title is transferred from individuals–their private property–to the university. It does not say, title does not attach to subject inventions until the university decides what to do. Even though this would be a remarkable action in patent law, though not without precedent, it need not be noted. Not being noted–now, that has no precedent. No, it is not obvious that there is a magical force-field. It is not obvious that title to what one has created and the social privilege that goes with that creation are separated at birth, but only for university inventors using federal funds.
If there were a force-field, then there would be no need in Bayh-Dole for written agreements with university research employees to protect the government’s interest. For that matter, there would be no need for the university to elect title. The law would say: the university holds title, and the government can receive assignment of that title if the university doesn’t want it. Inventors would be out of the loop altogether. Much more direct. Screw those nasty, disruptive, bungling, inefficiency causing inventors. In dog language: rush the door, rush the food, rush the cat. Damn the manners! Yap yap yap yap.
And, if the university did not elect to retain title, then why could not the government simply notify itself of its election of title on the same grounds, and save itself the bother of obtaining any paperwork at all from the university inventors to protect its interest? That is, if the university gets instant karma ownership out of it, why doesn’t the government?
The law does not force an assignment; it gives the university standing to require it.
The law does not overturn assignment by OMG specially disenfranchising university inventors of their Constitutional rights; it provides a contractual foundation for that assignment when and to whom indicated.
Bayh-Dole is a law of innovation agent standing and contract, not automagical administrator wish fulfillment.