I was looking at the AUTM Practice Manual the other day. The part about Bayh-Dole, written by a WARF attorney. Funny, it argues that a university had better have an invention assignment policy to ensure that it can comply with Bayh-Dole. And here we have both WARF and AUTM arguing now that that’s all bunk because title is automagically with the university when its employees make a subject invention.
I don’t get it. At least AUTM should revise its manual before it hops off to the Supreme Court, ears flapping in the breeze. Better, apologize for such poorly conceived amicus briefs and withdraw them.
But I am not persuaded either AUTM document has it right, though the practice manual is a lot closer to it. The only document that Bayh-Dole requires agencies to require universities to require research employees is the written agreement at section (f)(2). And that agreement is to protect the government’s interest.
I know, folks want to think that any employment agreement or IP policy in a handbook or special general purpose for everything agreement to assign to the university everything that the university has an interest in, and a grants compliance policy that everyone working under an extramural contract has to agree to comply with the terms of that contract is enough to cover for that written agreement.
But it’s all easier than that. Why not just recite the requirements laid out in the Act and imposed via (f)(2)? That section does not require assignment to the university, nor that patent applications filed must be owned by the university. There’s good reason for that, as we have worried over at some length, since a university might not elect to retain title, or might assign its Bayh-Dole obligations to another organization.
But there’s another thing. Federal contracts and obligations trump private contracts. So isn’t it the case that the standard patent rights clause in Bayh-Dole, implemented for each award, pre-empts any other contracts that the university might have with its employees on the matter? Isn’t Bayh-Dole really clear–here’s the written agreement you are required to have with your research employees?
So it doesn’t matter that a university has its employees agree to assign future inventions via a promise or a present assignment. Yes, I know, it all comes out in wash so to speak. If the university research employees all have to assign title to everything to the university that the university has an interest in, then the university can take care of all those issues pertaining to filing patent applications and granting the government its royalty free non-exclusive license. So what’s the problem.
Well, here’s one. If the university does *not* elect to retain title, then where is the obligation on the inventors to assign to the government? Ah, perhaps that’s in the general obligation to comply with the terms of extramural research awards, another typical policy statement. But the terms of a federal award under Bayh-Dole require a written agreement by research employees specific to the government’s interest. It’s like inventors are asked to comply with a term of the award that the university has skipped implementing. Yes, comply with a term of the award, but to do that the university would have had to implement that term by requiring the written agreement, and instead it has to rely on a research compliance policy statement that inventors are asked to read as if the university had implemented the written agreement requirement but hasn’t bothered to, so that makes it implemented. Follow?
Further, what happens if the university with its general IP policy to assign fails to properly notify the government of an invention. Then the government can require conveyance of title. But the university has absolutely no standing at that point to elect to retain title. So it’s policy regarding assignment is screwed. The subject invention is most definitely *not* within its scope of interest, so under its own policy it cannot demand title.
What about compliance with the terms of the award? How about that policy? Well there again the term of the award that is to be implemented is a specific agreement that the inventors will do those things indicated to protect the government’s interests. But everything the university is relying on is premised on the university taking title and doing those things. But if it messes up, then the only way the government has what it has bargained for is that it has a deal with the inventors directly. That’s what the university is supposed to do by requiring the written agreement called for by the standard patent rights clause. That’s the cock up in all of this. If the universit
And instead we have pretty much anything but that required agreement. What if this is like all those foreclosures ruined because folks stopped reading the contracts and just started making things up. At least the courts threw them out on their ears and told them to get it right, respect the contracting, and come back when they had it all together.
Perhaps that’s what the Supreme Court will do for these universities. They are behaving just like the banks, some of them. They want to take short cuts with invention rights. They don’t read the law carefully enough to implement it properly or show no evidence that they know or care how the law operates. It’s enough that universities get title, have to throw some meaningless paper work at the funding agencies, and get on with licensing to future monopolists for a share of their upside. They say, in the name of efficiency (and academic freedom, and to protect the public from those ignorant, gullible, greedy inventors–don’t you love the way university patent bureaucrats conceive of innovation policy?), it would be easier if title just vested outright with administrators not inventors. Then Stanford could get its quarter billion more from industry and all that extra requesting of assignments and stuff could be set aside.
If Stanford has justice on its side, I’m sure it will get its quarter billion. Whatever that outcome, I’m hoping that the Supreme Court gives the universities a stern lesson on paying attention to the law rather than making up convenient rationalizing self-interested patches for bits of it as it suits and thinking it’s all okay so long as they get patents free and clear.