Way 5. The university declines to elect to retain title, the government declines to request title, and F does not request to retain title. The invention enters the public domain (one year from publication or other statutory bar).
Bayh-Dole does not require anyone to hold title to inventions, or to use the patent system at all. Not the university, not the government, not the inventor. What Bayh-Dole does is this: if a university wants to use the patent system to promote the use of a subject invention, it may do so on uniform terms with regard to the interests of federal agencies setting the conditions for providing research funding.
If F simply publishes the results of F’s federally funded research, no one apparently cares. The government does not pursue faculty researchers for publishing what may otherwise be patentable inventions, so that these enter the public domain. Bayh-Dole is not an effort to force inventions into the patent system, to get more patents, or to help universities make money from patent licensing. It may be that others have these agendas. It’s just not in Bayh-Dole.
Another aspect of this is worth mentioning: in US law, an invention is not an invention until it is recognized as such by its inventor. See MPEP 2138.04 for the discussion. That’s the point of conception. It is also a reflection of differing expectations with regard to what the patent law calls non-obvious to one with “ordinary skill in the art”. If F doesn’t recognize work as inventive, then there is nothing to report, since there is *no invention*.
An invention is not an objective commodity to be harvested by corporate officers or administrative clerks. It is a recognition in the mind of the inventor. It is up to F to recognize whether something is inventive. This is fundamental to Bayh-Dole.
Universities have made up their own mythology of innovation and compliance, called the Little Linear Model. The LLM claims that the key to innovation is that research inventions pass through the hands of university administrators. This they claim is the big insight of Bayh-Dole. It’s like saying the secret to a great dinner is that the waiters have to handle all the food before its served. Fascinating, isn’t it?
How might anyone know that F recognizes F has made an invention? First, F might report it as an invention, either in research records or in a publication or in an invention disclosure. That would be a good start. At least F thinks it’s inventive. Second, F might prepare a patent application. That might also suggest that a patent attorney, perhaps, also believes there’s an invention. Absent either of these indications, how can anyone know if F recognizes some research event as an invention?
Yet universities tell investigators they need to report findings “just in case” they might turn out to be inventive and if so then somehow it would be a violation of Bayh-Dole not to have reported these findings. University administrators even try to take title to unpatentable inventions to prevent investigators from acting on their findings without paying something to the university.
It’s also the case that F might think something is an invention, but the work turns out not to be patentable. That is, while it may be new to F, the work might be anticipated by other reports that F is not aware of. A patentable invention requires absolute novelty, not just a local wow. One can hold title to an invention, but if it works out that the invention is not patentable–and that’s pretty much the only thing that matters with title to an invention under Bayh-Dole–then !poof! A lot of hubbub about nothing.
Bayh-Dole is not interested in inventions without patents. The point of the university taking title is to use the patent system to promote the use of the invention. No patent, and we are done with Bayh-Dole. So whatever we are working with, title to inventions is about using patents that might issue some two or three years later. Title to a research invention is prospective to gaining an ownership interest in a patent on the invention.
Let’s turn to Circular A-110, where Bayh-Dole is a part. Circular A-110 applies to a much broader array of intangible assets, not just patents, but including other intellectual property such as copyrights and trademarks. Bayh-Dole that is not about owning the inventions themselves, but about the use of the patent system to promote the use of inventions. Circular A-110 __.37 says, for any intangible assets that the recipient (for us, the university) acquires or improves in the course of the funded research, it will hold those assets in trust on behalf of the beneficiaries of the research. However the university comes to own intangible assets, it is to act as the steward of those assets.
This is a broader mandate for university technology transfer than those folks focused exclusively on start ups and product development licenses care to discuss. And the aim is to support the beneficiaries, not the university administration.
When investigators conduct research, they discover and realize and develop data and develop proposals. Call these research events. The documentation of these events may give rise to intellectual property. But the dissemination of what’s newly discovered is a matter of instruction. What researchers know generally is standard knowledge. What they know as experts in their fields is pretty special. What they have just realized in their research is potentially distinctive in the world. This is one of the most important of research outcomes. If a university administration is going to do something useful in this area, it will be to contribute to an environment in which these distinctive research events are taught to others. Some few of these events might be taught by way of a patent license. Most won’t be.
While research may be its own “mission” of the university, the reporting of results is a branch of instruction—and it is the instruction to capable audiences, prepared to act on what they learn, that creates the opportunity for transfer of “technology”. Yes, there may be bits of intellectual property hanging onto discoveries, and there may be more intellectual property to be created as folks explore what’s been discovered. The starting point, however, is instruction. Not business, not money making, not patents, not licenses. That’s what F needs to be considering, not whether or not the feds are coming because F publishes without recognizing an invention.
Whatever Bayh-Dole may take as its primary emphasis, for universities supporting the conduct of research in the public interest, Bayh-Dole is subordinate to the instruction in what has been discovered, so that it may be evaluated, studied, and practiced more broadly than the originating laboratory. In that, Bayh-Dole as policy is subordinate to Circular A-110, and all this regulatory framework has to be understood to be subordinate to a broader commitment to discovery and innovation. It is this commitment that universities in their programs have to reaffirm and make visible and contribute to every day. Their business is not to be consumed with fussy compliance with bits and pieces of regulations simply because those regulations exist. Their business is not grubby helplessly acquisitive money-making with patent-happy folks trying to shake down industry and snooker investors of their dollars. These things can indeed be part of the effort. And for all my choice of words—for a particular edge—there are good reasons for both compliance and for “value capture”. But the public interest in research is not, “whew, we are sure glad there is compliance, and boy oh boy, it is great when that compliance single-mindedly supports the university trying to make money by shaking down industry!” It goes all absurd when folks then try to make this *more efficient*.
Bayh-Dole has little to say about innovation. It does not specify what inventions should be managed, nor what agents should be involved, nor how patents are to be used to promote use, nor the incentives. These are matters left to universities—to faculty and students and staff, not just senior administrators, and certainly not just erstwhile business people jumping in to tell everyone how to make big bucks from patent licensing for product development.
Yet we find that community’s discussion consumed by the idea of “commercialization” as if that is the only purpose of Bayh-Dole. After 30 years of this, universities have taken one of the most exciting parts of research outcomes and turned it into one of the dullest things imaginable. Now it’s just a matter of making their dullness the default. Then there will be maximum compliance and some really keen efficiencies. Yeah, that’s innovation for you, university technology transfer style. It just doesn’t get any better than that. And that’s the great sadness.
Even where there are no patents with “commercial potential”, university research sparks with challenges and insights. Our researcher F deserves to have a technology transfer program that puts its effort into creating forums in which research discoveries are taught to capable audiences, and where there aren’t audiences that are capable, then there is even more work to be done.
Not everything good in the world comes about because there are markets, not every collaboration has to be so mercenary that something has to be sold, or even that there has to be a reciprocity of “fair value”. Not every contribution or advance can be reflected in a bean-counting balance sheet. In fact, not many can. In fact, only a very few can. Maybe a handful a decade. That’s not what the public needs from technology transfer, nor what investigators need.
Bayh-Dole does not set the agenda for publicly funded research. It is merely a tool to make one bit of the deliverable interface uniform. Patent licensing may be a part of technology transfer, and important in its way, but it’s a bit role in the big picture. Without university claims on patents–without waiters fingering all the food–there would still be a huge role for technology transfer in many forms, not just from lab to product, but from lab to lab, from community to lab, from practitioners to companies, or to other practitioners.