Bayh-Dole applies to federal agencies in their contracting with universities. It does not apply directly to universities.
A standard patent rights clause (SPRC) is established by the Secretary of Commerce under the authority of Bayh-Dole. Universities agree to the SPRC, funding agreement by funding agreement.
The SPRC does not require inventors to assign inventions to the university. Assignment to the university is only one possibility available. A university can, for instance, elect to retain title and never actually hold title to subject inventions by directing inventors to assign to an invention agent.
The (f)(2) agreement required by the SPRC is material, not optional, but universities do not generally implement it. When the university agrees to the SPRC, it necessarily waives obligations of employees to the university that would conflict with the SPRC, including with the (f)(2) agreement.
Nothing in Bayh-Dole requires universities to:
- undertake monopoly licensing (they can license non-exclusively),
- commercialize inventions (they can promote access and use without requiring products),
- make money (they can license at no charge, or at cost, or for only what inventors may want by way of royalty),
- or sue industry users for infringement (they can grant licenses for use rather than sue).
A voluntary IP approach between a university and its employees is entirely consistent with BD and the SPRC so long as the (f)(2) agreement is in place. (f)(2) is an agreement between research employees and the government.
*Nothing at all* has to change in how a university administration deals with university investigators if the university places *no obligations* on its employees other than the (f)(2) agreement.