Is there a “second right of refusal” in Bayh-Dole? That is, if the university waives its retaining title, and the agency declines to require conveyance of title, what then? Under Bayh-Dole, the interest passes to the inventors, who may request to retain title. Bayh-Dole provides that the agency may grant this request, after conferring with the university. No guidance on what the conferring involves. Is it just notice that the request has been made and will be granted, or not? Conditions that should be placed on the grant beyond the minimum of 37 CFR 401.9? It would appear, that there are three choices.
First, the inventors must choose to request to retain title. For this to happen, someone has to inform them that the university has waived and the government has waived.
Second, once the university has waived or defaulted, the agency must choose between public domain or inventors retaining title. This is a choice between use of the patent system to promote use, or not.
Third, if the agency chooses the inventors, then the third choice is whether to go with the default obligations or add others. This choice will depend in part on the invention and agency concerns, but also may depend on the university’s position on the matter.
It would appear in this sequence that once the university waives retaining title, the fundamental question is between use of the patent system or public domain, and if the patent system, agency or inventors. The university is out of it, but for consultation.
There would be no fun in the world if it were all this easy.