Bayh-Dole is not a perfect law by any means. But what are the weak points? Where can things be improved? Here is one suggestion. In 35 USC 202(c)(5) funding agreements are required to have language to permit agencies to request periodic reporting on utilization or efforts at obtaining utilization. Fine and good. But then this information is locked up under FOIA, so no one can get at it. This prevents public accountability, in particular, of university claimed subject inventions. The provision should be divided so that the portion applicable to universities and non-profits goes to (c)(7), and is further divided so that the portion of reporting that pertains to march-in investigations may be held under FOIA, but not routine periodic reporting. Further, as regards non-profits, the public should be provided with an explanation for why an agency does not require periodic reporting, on the model of 35 USC 202(b).
As to periodic reporting, there are many details that are properly within FOIA. However, there are some aspects of university management of subject inventions that properly should be public information. In the case of public universities subject to state public disclosure laws, there may be ways to get at this information outside of FOIA. For private universities, however, state public disclosure laws are not very helpful. What information are we talking about here?
Imagine that a university kept records this way. When a subject invention is reported, a new entry line is made in a journal, such as a speadsheet. The entry provides a unique identifier for the subject invention, agency, funding agreement# and date reported. The agency and funding agreement are required information under 37 CFR 401.14(a)(f)(4), so this information will become public anyway.
Subject Invention Report
1 Invention ID Report Date Agency Contract
There may be more than one agency and more than one contract.
Disposition of Title
2 Notice Date Elect or Waive Filing Date Issue Date
Along with the date on which notice is given, state whether the invention is elected or waived. This tells us the frequency of university claims in subject inventions. We cannot discover that information from the public record because universities do not report subject inventions in a form that allows one to trace the history of each. The proposed approach will do this. Again, no information regarding the nature of the invention, not even a title or an inventor or area of art, needs to be disclosed. All this information will become public when a patent application is published.
Disposition of Invention
3 License Date Licensee Type License Form Commercial Use Date Use Form
There may be multiple entries under license. Licensee Type is government, small business, large business, other. The License form is non-exclusive, exclusive, and other. 37 CFR 401.14(a)(h) requires reports to include date of first commercial sale or use. Use Form identifies whether the reported commercial activity is use or sale.
There are many more bits of information that may come about. A license may be terminated. There might be infringement. Costs to file and license an invention. Gross royalties received. All these bits are interesting as well. But to get at the core functioning of the system, we need the above.
Disposition of Royalties
4 Net
The implementing regulations state that universities will report gross royalties received, but keep that under FOIA. Bayh-Dole requires that any funds remaining after costs will be used for scientific research or education. The remaining funds is the more important figure, as it indicates an invention operating at a net positive income. And the remaining funds should be releasable public information under state disclosure laws. All we need is for the same information to be made available by private universities. Oh, and the net is auditable by the government for compliance with the requirement that it be used for scientific research or education.
This is the set of information that one would have for metrics. It would be a much better set than the present licensing survey. It would be grounded in Bayh-Dole requirements. It would not mix in other inventions. It would track each invention from report through licensing rather than aggregate so pathways cannot be evaluated. It would show timelines and proportions of inventions at each step. It could be easily done with a web interface that allowed posting, even posting from entries made in existing patent management software systems. It would provide a basis for claims and criticisms, and give us real, useful information from which to plan improvements in our approach to research-catalyzed innovation.