1. Assignment of inventions to the university is not a condition of federal funding or federal law.
Whatever demands assignment, it ain’t Bayh-Dole. It is not true, and it is not even credible after Stanford v. Roche, to claim that federal funding requires assignment to the university. Assignments made this way are made under false pretenses. What is motivating the university administrators’ demand for assignment?
2. Invention rights are with inventors unless and until assigned.
Just like US patent law says. For research at universities, this is a hugely good thing. Freedom over orderliness–just what innovation needs. Now, we need more researchers exercising their freedom. It is not whether university administrators can do a better job with inventions than inventors (especially after putting policies in place to make it harder for inventors to do anything with their inventions!)–rather, it is whether university administrators are uniformly better than anyone else in the world in working with any individual inventor on any given invention. Answer: not possible. University innovation needs free agency, choice, engagement with community, and diversity of opportunity. Administrative processes will never get us there.
3. University administrators really want outright ownership of invention rights.
Over 70 universities signed onto amicus briefs supporting Bayh-Dole as a vesting statute. The stewards want to be kings. They want government control of innovation–to hand rights to administrators. Every innovation must touch an administrator. Is this not a ludicrous desire? Why does it persist? Why would universities be arguing for control rather than freedom? Is it just for the money? Or do folks really believe that this is the dawning of the age of adminstratium? I thought the mid-level managers were sent on the *first* spaceship out for a different reason.
4. Present assignment of future inventions would not have changed the ownership outcome in Stanford v. Roche.
But making consulting and collaboration more difficult certainly would have! Stanford would not have had early access to PCR, may not have gotten the federal grant, there wouldn’t have been inventions, and there may not have been a product on the market. Stanford alters its scope of expectant claim when it encourages a post doc to work at the company and allows the invention assignment commitment to the company. Changing how an assignment is made does not change the conditional nature of the scope of future interest. A university cannot rely on a past promise to assign when it has waived that promise in order to collaborate–and folks are relying on that waiver. More administrative waiving is generally a good thing for university innovation. The only thing better is not having such a general claim in the first place and work with stuff because people want you to, not because you demand to.
5. Bayh-Dole is designed to protect researchers, inventors, industry, government, and the public from the practices of university administrators acting without case-by-case government review and supervision.
The fundamental point about Bayh-Dole is that while it limits when agencies can require title to inventions made with federal support, it also limits how university administrators behave. Why is that? Because the law does not trust administrators to do the right thing on their own! The odd thing is that university patent administrators think Bayh-Dole is all for them. It’s really a set of standard clauses defending everyone else from them, so agencies don’t have to do it, laboriously, one case at at time.