I will follow up on the points I made in a previous post with regard to Stanford v. Roche. I will take these one by one.
1. Bayh-Dole is no vesting statute.
Bayh-Dole does not overturn US patent law on ownership of inventions. It never did. Universities never practiced that way. They always got assignments to obtain legal title. The argument was ginned up by university administrators specially for Stanford v. Roche. Vesting statutes for inventions are not common in US law. There have been instances, for special purposes, such as dealing with control of nuclear fuels and weapons. See the AIPLA amicus brief for a good history. In those situations, ownership vested with the federal government. In general, however, the US has not taken to vesting ownership of inventions in other than the inventors themselves, relying on private contracting to manage affairs from there. This is unlike, say, UK patent law, which does provide for ownership of inventions to vest with employers.
There are good reasons not to vest. In the US, of course, we have a constitution that would appear to reserve rights for inventors, and not for employers, and not with the trick that somehow the employer can be the inventor. Instead, we have shop rights, patent agreements, and (in some states, limitations on the scope of claims in patent agreements made as a condition of employment).
Also, the constitution points to something about innovation, about progress, and that is that we may expect it to come about through the agency of individuals not governments or companies, at least with regard to the social structure we call a “patent”. Things could be different, but if we want vesting statutes, we ought to have it out about the constitution, progress, innovation, and the choice between liberty and institutional control. We do that best in public debate, not in clever legal interpretations.
What we learn from Stanford v. Roche is that university patent administrators a present very much want a vesting statute and will go to great lengths to get it. They want patent rights outright, do not want to negotiate anything with inventors, and aim to get title aas expeditiously as possible. This, rather than innovation and economic vitality, is their primary goal. I call it “inventor-loathing” to rile them out of their sense that it is inevitable that they will hit on a way to claim ownership of all faculty inventions in a way that is expeditious and “air tight”.
What really needs to happen is that university administrators become the advocates for inventors, not for institutional ownership of inventions. That would be a sea change, and it would make for a tremendous, positive transformation in the present tone of university innovation.
We learn that many patent administrators think that the issue is whether they will do a “better job” than “inventors”. The proper comparison is: will they do a better job than anyone else in the world, including inventors? For that, the answer has to be, in general, No. This has next to nothing to do with competence. Simply, it is not possible for anyone to be the best in the world at every innovation opportunity involving research inventions, even at a small university, even without the added overhead of complying with institutional regulations.
We learn as well what should have been obvious but has been obscured by various organizations pushing for vesting. Bayh-Dole is a law that applies to federal agencies, to make uniform their management of inventions made in funding arrangements with universities (and nonprofits and small companies). As the agencies are instructed to give up case-by-case consideration of each request for university management, the law requires the agencies to require a standard patent clause that universities must agree to in order to protect the government’s interest as well as that of the public, of industry, and of inventors.
Bayh-Dole is directed at protecting the public from the things that university patent administrators might otherwise do in the absence of specific agency protections. We might say Bayh-Dole is directed at constraining university patent administrators, not entitling them (so to speak).