It’s clear that the standard patent rights clause in 37 CFR 401.14(a) does not expect to get all rights to title in inventions made in the course of federally funded research. The written agreement in (f)(2) concerns itself only with employees of the university, and excludes clerical and non-technical workers. If a bottle washer co-invents, there is no mechanism required by which the government’s interest is protected. Or, that person’s invention rights are not part of the government’s interest. Also excluded is anyone on a fellowship or other educational support. These folks can be involved in federal research as well, and they are not employees of the university, even if their funds come through the university.
Take it further. What about independent contractors, folks on personal services contracts that might participate in a research project? They are not employees. Does the government have an interest in their share of inventions? It does not appear so. Can a university claim they are required to agree to (f)(2)? No.
The emphasis in 37 CFR 401.1 is the “planned and committed activities” of a given grant or contract. If an invention is out of scope, it is also not part of the things the government has an interest in. Yet I don’t know of any universities that actually review the scope of work of the recited federal grant to determine whether the invention being reported is within scope. Perhaps some do. I would be excited by this prospect. I don’t expect it.
Under the standard patent rights clause, university research employees (as I am calling them) have to report only subject inventions. It is university IP policy that typically requires reporting of all inventions. The sloppiness starts right there, where it is often assumed that these two obligations are one and the same. Clearly they are not, and simply reciting a federal grant does not create a presumption of a subject invention until it is determined that it is in scope, or that it has distracted or diminished work on the federally funded work.
Practice tip: Have a separate disclosure form for subject inventions. Make it clear how to distinguish subject inventions from closely related inventions that are not subject inventions using a worksheet that starts with the planned and committed activities of the federal grant or contract, considers whether any other work distracts or diminishes the federal work in a material financial or progress way, and considers the employment status of each individual named as an inventor.
What’s the point? If Bayh-Dole does not care about all bits of invention that may happen in association with federally funded work, then why should it be that Bayh-Dole automagically passes title to *everyone’s* share of a joint invention to the university, or re-scopes what they have personally obligated, even after the fact? Why would not someone have to determine for each co-inventor whether they have personal rights that stand outside the government’s interest?
Consider individuals who conceive an invention before participating in federal funding, report the invention listing a federal grant because that is what they are working on so perhaps they feel obligated or want to show productivity, and the university does the election to retain title thing and files a patent application (constructive reduction to practice) but then actual reduction to practice takes place in another lab at the university, one that does not have federal funding. No subject invention. No conception or actual reduction to practice within scope.
Universities tend to treat the decision that an invention is a “subject” invention by declaring it such. Whatever they decide. Just in case. But it would appear a subject invention is only what meets the definition. Nothing more. Just like one cannot decide something is a work for hire–it has to meet one of the definitions of the federal law.
What I’m working toward is this: if we have three co-inventors, each a research employee of the university, and a federal grant with the standard patent rights clause, even if an invention is a subject invention with regard to the contributions of two of the co-inventors, it may not be a subject invention with regard to the contribution of the third. The third inventor may be on a fellowship, or may not be a research employee, or may not be an employee at all. The university may elect to retain title in the subject invention–that is, it may elect to retain the title held by the two inventors, but it does not have any standing under the standard patent rights clause to elect to retain title of the third, because the government has no interest in the title of the third co-inventor, and (f)(2) does not operate, and there is nothing to retain.
We might then ask, if someone obligates his/her future invention rights in a valid assignment, so that it would be acceptable evidence of transfer of title for the PTO, is that person, in any subsequent federal research, within the scope of the government’s interest in title? Can the government have an interest in rights that the person does not have? For instance, can the government make the person who received those rights give them up? Can the university IP policy reclaim an interest in something it has waived an interest in? Can the university impose an (f)(2) requirement on someone, but for the rights they have left to commit?
I know, that’s a lot of questions. Perhaps you have good answers. I am working toward that goal, too. I don’t think a university can force anyone to commit more rights than they have, and if they have made a contractual commitment for future invention rights, then that’s the end of it. The university can exclude them from research, but the university can’t make them double assign. The PTO won’t accept that anyway. The later assignment won’t be valid over a prior one that that later assignee is aware of.
I can see why then folks stamp their feet and want the standard patent rights clause, something that the university is obligated to follow, to step in and save the day by chopping off the prior invention commitments individuals may have made. But the university’s obligation is not any of its employees’ obligation until the (f)(2) obligation is required. And it is the university that has to require (f)(2), not the government.
It’s right there, express. The university must require the written agreement to protect the government’s interest. And when that agreement is in place, it does give operation to elements of the standard patent rights clause for those research employees. But the university has no authorization to require (f)(2) of anyone other than research employees. That would appear to be the extent of the government’s interest in title. And therefore, it would also appear to be the extent of the university’s interest in title, their own IP policy notwithstanding. A standing requirement that research employees accept (f)(2) only extends as far as the scope that such a standing requirement can make.
If the employee cannot legally accept an (f)(2) obligation, then the university has to keep the employee out of the research. If the employee can accept a more limited scope for an (f)(2) obligation, what then? The employee can protect the government’s interest in area A, but not in Area B, because Area B is already legally committed to Company F. Could it be that the government’s interest extends only to the rights a research employee has to offer, and not to any other rights? If so, then (f)(2) is only as good as the scope of rights individuals have legally available. If the *university* wants entire title to future inventions under a federal funding agreement, then the university has to do something about a limited (f)(2) obligation. It has to get the research employee to renegotiate the personal obligation. Or it has to exclude the employee from the work altogether.
The government, it would appear, is not so concerned with entire title. Historically, the government is not big on granting exclusive licenses. The government is fine with a uniform policy regarding invention deliverables applicable to most federal agencies. The government is fine getting a non-exclusive license. The government can get all it needs from just one co-inventor under an (f)(2) obligation. It is the university that may want more. If it can’t get more, then it should not retain title. Or, and this is the interesting idea, it should only elect to retain title for the inventors that have a full (f)(2) obligation. It doesn’t need to elect title in the inventions of an inventor with limited (f)(2) obligations. Let that pass to the government to decide upon.
General rule: under (f)(2), and under a university’s own IP policy, the university can only claim to retain the title to inventions that inventors have available to obligate. That is, the university is retaining the title those inventors have, not slurping up all title anywhere it may exist in the world. (f)(2) doesn’t undo anything that is already properly and legally committed to others, nor does university IP policy. “Retain” means: stand in to administrate rights that the federal agency has under (f)(2) by causing its inventors to redirect their attention to the university in this role, rather than the agency in this role. Everything the university does having elected to retain title is *to protect the government’s interest*. Subject inventions are never “just the same” as privately held ones. They are only held in trust by universities to meet the government objectives under Bayh-Dole as laid out in the standard patent rights clause.