Roche’s response to Stanford University’s petition for a writ of certiorari is posted here. My read of it is, they got the Bayh-Dole piece of it right. See Section I.A (Bayh-Dole was not intended to be a tool for universities to troll industry); II.A (Bayh-Dole did not amend ownership in patent law; “retain” means as against government interests).
As to the “agree to assign” language, the response only recites MIT’s version, which includes a present assignment. Here are some others. I would guess most have an agree-to-assign or simply an outright claim on assignment without any supporting written agreement.
University of California That’s the policy statement. Here’s the acknowledgment statement that follows on this:
“I acknowledge my obligation to assign inventions and patents that I conceive or develop while employed by University or during the course of my utilization of any University research facilities or any connection with my use of gift, grant, or contract research funds received through the University.”
“As a condition of employment, and even if a specific patent agreement is not signed, University employees agree to assign all inventions in which the University has an interest to the University, to an invention management agency designated by the University, or to the sponsor if required under agreements governing the research.”
University of Louisville even goes so far as to abuse “retain” as if its entire policy is drafted using Bayh-Dolecisms–see its definition of “Elected”.
I hear there’s a move afoot to pitch even more universities, organizations, and lawyers at this case. It’s so wrong.
1) The argument they are making is based on a wrong reading of Bayh-Dole. There is no invent-for-hire. They should know better. I think, actually, they do know better. But that makes it worse.
2) The thing they are worried about isn’t substantive to the case at hand. Whatever their concerns about gaining patent ownership relative to employees’ consulting, it’s not the thing in this case. Save your money and effort for when it matters.
3) The positions the university administrators and their lawyers are arguing is bad public policy. Nothing in Bayh-Dole says the universities are the beneficiaries of the grant work or the inventions or the commercialization. The stewards are trying to be kings. Hasn’t anyone read The Lord of the Rings? Go figure. Even if Stanford has a point, this is not how to get there.
4) Their argument goes further, and is anti-faculty, anti-inventor, and anti-industry collaboration. How can one face up research investigators having signed onto any of these amicus briefs? Not just embarrassment, but shame. It’s not the place to be, if one aims to support creative class culture.
5) Why hasn’t the AAUP looked at the strange claim that by taking patent ownership outright universities protect academic freedom? Has anyone asked any university faculty members about this? C’mon AAUP, this is yours–pay attention.
I really never thought I would see a time in this business when so many good, decent people were recruited to such a poorly conceived action. I feel like a lone voice. I don’t wish anything bad for Stanford. But I also don’t wish anything bad for Roche. There’s a problem, I can see that, and a disagreement, that happens. And there’s like a quarter billion dollars riding on the outcome, so there’s room to hire folks to do the fighting. At least it’s ritual, before a court.
What I really don’t wish for, however, is something bad out of all this for Bayh-Dole–a brilliant piece of work, misunderstood apparently, by a lot of folks who should spend the time to work through it–and for the relationships between research faculty and industry. I just have a bad feeling that a number of university administrators will destroy their credibility over this. There’s still time to change the road they’re on. Will they?
Bayh-Dole is not about making money for universities. It is not about mostly about commercialization, even. It’s about practical application. Benefits for the public. Jobs for American workers. Collaboration. You know, good things, satisfying things. Instead we have university administrators making other choices. They have tipped their hand. It is for them about the money–licensing and research. The only equation they have got now is
money for university = public benefit.
It’s sad. No wonder the public is losing faith in universities.
It would be nice to see a real debate at least. Some universities coming out and saying, this is not what we stand for, it is not how we intend to operate. Some organizations doing the same. Speaking up for a decent interpretation of Bayh-Dole, of the importance of faculty leadership and decisions in matters of invention and publication. It’s no good staying quiet, thinking, maybe the outcome could be something good, if there *were* invent for hire.
I don’t have any joy in working through this stuff and dressing down AUTM, in particular, for its role in all this. But that’s what has to be. Nothing personal. Just I don’t see any way AUTM has much to contribute to any national debate on research innovation when it cannot get it right on the fundamentals of the law that it has built itself around.
Public apologies, retractions, and reconciliation to follow, perhaps, and then we can get back to the important business of dealing research outcomes as catalysts for innovation.