Bayh-Dole defines a subject invention at 35 USC 201(e) (and repeated in the implementing regulations at 37 CFR 401.2(d)) as
any invention of a contractor conceived or first actually reduced to practice in the performance of work under a funding agreement.
We have questions. Let’s start with this one: is a subject invention something like a work made for hire in copyright law? We are not talking about “invent for hire” — be still my AUTM “Bayh-Dole is a vesting law” friends. There are reasons why *vesting can’t happen*. But we can ask, does the definition of subject invention stick regardless of other matters?
Here is the definition of a work made for hire in 17 UCS 101:
A “work made for hire” is—
(1) a work prepared by an employee within the scope of his or her employment; or
(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.
This is a two-part definition, and gets long, but the essence of it is, if a work is prepared by an employee within the scope of employment or commissioned, in certain categories, and agreed to be a work for hire, then the work is a work for hire, the author is deemed to be the employer or commissioning party, and certain other matters of management arise.
If a work meets the definition of the federal law, then it is a work made for hire, and the properties of such a work, such as term of copyright, attach. Folks cannot decide a work is made for hire, but they can conduct their affairs so that it meets the federal definition and thus becomes a work made for hire. The challenge is that it is not always clear whether someone has been employed to create a work for hire. Thus, the scope of employment, along with various tests of agency, comes into play to decide whether one is an employee for the purposes of copyright law. Asking HR clearly is not sufficient in some cases.
We might ask whether Bayh-Dole is rather set up in this way, but with the federal government as the commissioning party, with the standard patent clause as the means by which a contract is formed with regard to rights in inventions, and various conditions and expectations set up by which the government’s interests in inventions are taken care of, whether by the government directly, by means of universities, or with the inventors themselves.
Within the framework of Bayh-Dole, folks can make something become a subject invention by how they conduct their affairs. There is no requirement that an invention become a subject invention (that is, one does not have to request federal support or to develop an invention within that support), and there is no provision for turning an invention into a subject invention that does not meet the requirements of the definition. One cannot just declare an invention to be a subject invention. And unlike a work for hire arrangement, one cannot just contract privately (as with employees) to make an invention a subject invention–one cannot supply, that is, a private definition for subject invention and present such inventions to the federal government as if there were subject inventions within the statutory definition.
For instance, if inventors conceive an invention, then submit a grant for federal funding, then report the invention reciting the funding, and file a patent application, this is not a subject invention. There was no conception within the funding agreement, and no first actual reduction to practice. Not a subject invention. Does any university actually audit disclosures to determine whether at least one of conception and first actual reduction to practice took place in performance of work under a federal funding agreement? No. Never.
The law does not say an invention is subject because federal funding contributed to development of the invention. No, the conception (formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention–see MPEP 2138.04) or first actual reduction to practice (showing of the invention in a physical or tangible form that shows every element of the invention and sufficiently tested to demonstrate that it will work for its intended purpose–see MPEP 2138.05) have to take place in the performance of work and under a funding agreement. Any thing else is not relevant–activities such as testing other than that resulting in first actual reduction to practice, or further elaboration after conception has already taken place do not count. Not a subject invention.
“Did you use federal funds?” is not the same as “Did either conception or first actual reduction to practice take place in the performance of work (that is, within the planned and committed activities as set out in the statement of work) and under a funding arrangement (grant, contract, or collaborative agreement) involving federal support? Even the discussion in 37 CFR 401 of work “distracting” from or “diminishing” the performance of a federally funded project depends on an invention being made within the scope of the project.
If a subject invention is similar to work for hire, then it is a category defined by federal law. An invention is or it isn’t subject as a matter of law, not by private agreement. A university has standing to require assignment of title under Bayh-Dole only when an invention is a subject invention. If the invention is not a subject invention, then whatever claims a university might make on title, they do not arise under Bayh-Dole, they are not a condition of the grant, and things tumble back to the university’s IP policy, employment agreements, and relevant parts of state law pertaining to claims by employers to employees’ inventions. There is no such thing as treating an invention as a subject invention “just in case.”
If an invention becomes a subject invention as a matter of federal law, then in cases where there is a joint invention, and one inventor’s contribution (conception or first actual reduction to practice) is within the planned and committed activities of a funding agreement, and the other inventor’s contribution is not, it would appear that the invention is a subject invention regardless. How does that shake out?