Maybe it’s all too clear. In the case of an employee bringing the scope of authorized private consulting into federally funded research, the issue is not the mechanism of the obligation to convey title, but the scope. The problem is not in Bayh-Dole, but in the university’s compliance with the law, and with the implications for a company claiming the benefit of the mechanism by which it expects to obtain title.
If an employee comes back to the university with a valid obligation to convey title to a company, it is up to the university to require the written agreement as Bayh-Dole has it. If the university cannot do that, then either the award should be rejected or the employee should be prevented from participating in it. If the university accepts the award and permits the employee to participate, and there is yet is a way that Bayh-Dole can be complied with, then that is the route the university is constrained to take. Not try to change 30 years of practice and implement the AbyNormal Patent Act, as AUTM and others are attempting, forcing previously valid agreements with reliance and consideration to become void at the university’s whim. And even if one succeed in doing that, there are all sorts of other consequences that are worse and worse. More later, I’m sure.