I suspect there also may be something else going on.
Under the Fifth Amendment to the Constitution, the government cannot take private property without due process and just compensation. The contract between the government and the university forms that process and provides for compensation. For the Federal agency, the compensation is in the form of the grant funding. For the university–especially if it is a public university–the law provides for sharing with the inventors. That is, if there were no sharing, and the law provided for the state to acquire the private property of the inventors–their patent rights–without compensation, then there would be a huge problem under the Fifth Amendment. There would not be “just compensation”. For private universities, there would be a similar, but less direct, argument: the Federal government was taking patent rights (under contract) and then agreeing to the transfer of these valuable rights to a private entity (not the inventors). Essentially, a taking without compensation. It would be even worse if Bayh-Dole were automagical, but we have dealt with that elsewhere.
For universities, where extramural research is not assigned nor controlled as to the performance of work and reporting of results, it is simply not possible to construct, within the current policy structure at most universities, anything like invent-for-hire, construing the university as inventor, or accepting that the inventor is an individual but that the property created, and the patent rights that attach to it, are stripped off by the force-field of federal funding. To get there, then the royalty sharing with inventors, which is often construed as a fluffy, warm-hearted gesture of niceness in university policy, really is not. It is a duty under federal contract, implemented to make that contract constitutionally sound. Bayh-Dole fails if the compensation offered inventors is not “just”. That means, royalty schedules set in university concrete policy may not be “just”. Just because they are in policy, or uniform, or look good to whomever had the committee assignment to figure something out doesn’t mean they are “just”. This is entirely different from an employment relationship involving a private company–or private university–and an employee-inventor.
If conducting research is voluntary, and if the public university in its policies claims ownership of inventions, then to survive a taking of private property for public use, there has to be just compensation, and it sure as heck isn’t one’s salary, which is established *without regard* to inventions made in extramural research, and it’s hard to see that access to research facilities is on its own “just” compensation for any inventions so made.
Let’s recap, top down.
The US Constitution provides for the Federal government to provide for patents and copyrights. The stated purpose is to promote progress of useful arts and sciences by allowing inventors and authors exclusive rights to their inventions and writings. The states invest this right in the Federal government on behalf of inventors and authors, on behalf of promoting progress. It is a personal right. The properties that result–patents and copyrights–are personal until circumstances change that outcome.
The Fifth Amendment says, the government cannot take private property for public use without due process and just compensation.
Bayh-Dole comes along and says, use the patent system to promote progress via practical application, better relationships, jobs all around, less administration, competition (but not so intense it screws up research and discovery), and yeah, some commercialization too. Bayh-Dole says, if the university takes the rights, it has to compensate inventors by sharing royalties. It says, if the university doesn’t take the rights, then the government can take those rights for itself, like the old days, where the compensation is the provision of funding. The university *doesn’t provide the funding*. So it can’t make the same argument within Bayh-Dole.
Now we have the bureaukleptic lobby rushing the food bowl barking: take the property outright, automagically OMG!
You see how it doesn’t work. The offer of a royalty share in a bureaukleptic policy is not “just compensation” for the taking unless *something gets licensed for a royalty*. It’s not sufficient to say, since we didn’t license it, or didn’t license it for more than our costs, that it *wasn’t worth anything*. No, the presumption is, it was worth something–that’s why it was taken–and now it isn’t worth anything, and therefore there is harm, without compensation.
Bayh-Dole says: if universities are going to stand in and do the taking, then they have to have a deal with the inventors for “just compensation.” That deal happens at assignment. Without assignment (as in force-field automagic), there’s no deal. At that point it’s entirely open if there is just compensation. At that point, the constitutionality of Bayh-Dole is undermined.
Just a thought.