2. Inventors own their inventions made with federal support.
Stanford v. Roche is not simply a decision that argues for an additional technical step on the inevitable road to take all invention rights away from inventors as expeditiously and inevitably as possible. This not about “tightening up” policies on ownership or reading contracts more carefully. Yes, universities could do a lot better with their IP policies (even if they don’t tighten them up, they could unscrew them up, as a start). But putting these lessons on the case is to be in denial about what is going on.
The decision points to a very different lesson. Federal policy *expects* inventors to own their inventions and does *not* expect, require, or approve university claims on these inventions. Bayh-Dole is about normalizing the conditions a federal agency may require when a university does take title. It does not say that universities taking title is a goal.
Federal research policy is directed at support for investigators, who may also invent. The deal has always been between the investigators and the government. The university’s role is to manage the formalities.
Prior to Bayh-Dole, the government generally claimed title to inventions made by university investigators (though it varied by agency), and the few universities that took an interest would have to petition to get title back from the agencies (if they didn’t work out a patent administration agreement). Under Bayh-Dole (that is, under the standard patent rights clause that universities agree to, funding agreement by funding agreement), the deal moves from the investigators and the government to the investigators and their universities.
The true heart of Bayh-Dole is the relationship between the investigators (and inventors) and their universities. If this relationship is vigorous, then Bayh-Dole works. If this relationship is suppressed or disrupted, then Bayh-Dole fails, not on its own merits, but because university administrators and faculty are not up to working together, which is the task that Bayh-Dole sets for them.
The system of national innovation, to the extent it involves university administration, involves them as supporting players, not principals. Federal grants to universities expect special performance from the Principal Investigators. It is their expertise that is desired. They, not university management, propose the research, decide its conduct, do the work, analyze results, write reports, and choose forums of publication and release. It is federal policy that these investigators and inventors have primary responsibility in managing their inventions.
If there is a reason for a university to take ownership, it is because an investigator has requested this outcome and university administrators have agreed. There’s no good served by universities getting ahead of themselves and pushing policy or employment agreements to force the issue in the name of efficiency, money, protecting the public, or innovation. Forcing choice eliminates choice.
The lesson of Stanford v. Roche is that individual choices have consequences, and sometimes those consequences are of the “oh darn” variety. The lesson in Stanford v. Roche is that life is not predictable, not that university administrators should take more choices away from investigators. It is not the case that life would be more predictable if individual decisions were replaced by institutional ones. Life gets banal when that happens, and it is only in that sense that it gets more predictable. It is furthermore not the case that had Stanford had a draconian policy on ownership, with complete control over consulting agreements, that it would have gotten a lot of money from Roche. Much more likely, had Stanford had such policies, there would have been no collaboration, Stanford would not have got the federal grants, there would have been no inventions at Stanford to fight about, and most importantly, Stanford would not have been, and would not be now, Stanford–a truly exceptional university that does some of the best research on the planet.