Bayh-Dole applies to federal agencies. It sets a uniform protocol for how they are to contract with universities for invention rights. Everything about how Bayh-Dole reaches to universities is by way of agreements and choices. And it is by agreements and choices that it eventually reaches to individual inventors.
University patent administrators suddenly don’t like this. They want to twist Bayh-Dole to apply directly to their practices and to inventors. They want it to be a vesting statute that strips university inventors of ownership and hands that ownership directly to them. No formalities needed. No evidence, no notice, no appeal, no compensation, no accountability, no options, no discussion. That’s some innovation policy.
University patent administrators cannot imagine not owning title to inventions. They want university ownership of inventions to be inevitable, efficient, and mandated. They don’t want to have to work for it. They don’t want there to be choices. They don’t even want different universities trying different things. They want an invention management monoculture, like the one they have largely created for themselves, and they want the Supreme Court now to make this a reality.
There is no meaningful public debate among university patent administrators on the topic. They can’t. Some have fed a line to their administrative superiors and to the public, and cannot express any doubts about it now. Those university patent administrators who disagree cannot do so publicly, as that would risk their positions, their jobs, their careers.
As a vesting statute, Bayh-Dole would void outright many private agreements regarding inventions and would throw many more into doubt pending any federal funding at a university touching any invention that has not been actually reduced to practice. If the Supreme Court turns Bayh-Dole into a vesting statute, then it will also void 30 years of university assignment practices around inventions, including assignments from inventors to research foundations and waiver of title to inventions without a written assignment. It will also undermine any subsequent licensing or investment based on such assignments being valid.
If Bayh-Dole becomes a vesting statute, then we are back to 1980. Federal research makes a compulsory claim on title to inventions, that title is handed to a bureaucracy saddled with regulations and distractions, and that bureaucracy cannot possibly handle each and every invention in a meaningful way.
It is as if the compulsory, process-bound, risk-averse mindset that Bayh-Dole sought to address has now drifted out of the agencies and made a new nest in universities, where it has eaten the brains and inflamed the monetary passions of university administrators and their patenting officers. In the great experiment of Bayh-Dole, we see how long it takes for this mindset to migrate, re-create itself, and come to dominate. About 30 years.
Universities with their licensing offices are now no better off than the federal agencies were, except the universities do more bad deals, sue industry and their own inventors more often, waste a lot of money, and make university research inventors out to be unethical except when they channel their putative greed, gullibility, and ineptitude through the safe harbor of bureaucratic policy.
Maybe it starts to get clear what is going wrong with federal research innovation policy. I’m sure it isn’t Bayh-Dole, at least the way it is conceived and written. That version of Bayh-Dole is brilliant. No, the problem is in university practice, which has not lived up at all to its calling and potential.