I am working to describe how Bayh-Dole operates. That means: building a general picture from the details, rather than assuming a simple, general picture and then ignoring all the details that don’t fit in. It also means: considering how universities have implemented invention practices as a result of accepting the Standard Patent Rights Clause.
Review. Bayh-Dole applies to federal agencies. It makes agency policies uniform on contracting for inventions. It does this by establishing a standard patent rights clause for use in federal funding agreements and setting parameters for agencies in varying from the standard. In agreeing to these clauses universities make a deal with the government regarding the reporting of inventions as a condition of funding and requiring investigators to make a written agreement to protect the government’s interest. That’s all the university agrees to do. Oh, and training for employees about timely disclosure, and designating personnel responsible for receiving reports of inventions. The rest of it—about retaining title and promoting use and sharing royalties and reporting on utilization—is not an entitlement of the law (so to speak) or even of the patent rights clause, but rather is a limitation on the invention deliverables. Title becomes something the university contractor may hold back, if it is in turn something that the university contractor has taken an interest in.
The nub of it is why a university contractor–that is, people acting for the university–would take an interest in inventions made with federal funds. The law does not require it. The Standard Patent Rights Clause does not require it. Nor does agreeing to the SPRC give the university contractor any more right or mandate to an investigator’s patents than otherwise. Nothing in the SPRC changes anything regarding university ownership interest in inventions made with federal support.
It is only when the university does take an interest in a particular invention that the patent rights clause in the funding agreement comes into play, and then it acts as a set of restrictions on the university in its management of the invention and any patents that might issue on it. Any university interest in an invention arises entirely within the university.
At one time, long ago now, it feels like, a university interest in an invention arose because the inventors decided that the university should take an interest. They disclosed the invention to administrators not because they had to, but because they chose to do so. If the administrators took an interest, then the government might release its interest in the invention as a deliverable, allowing the inventors to develop the invention. The university as invention agent was part of the agency review.
The point of Bayh-Dole was to relieve agencies of the need for this review by replacing the review with a standard set of requirements on universities to protect everyone from bad things that might otherwise happen. Somehow all this got turned into the idea that the university had to take ownership of inventions, or that Bayh-Dole gave them the power of federal law to simply take ownership at will. Talk about spitting down the straw to spoil the soda!
Under Bayh-Dole’s way of contracting, universities do not have to have a policy requiring assignment. They do not have to have a policy at all. The selection principle, and it is a very effective one, still is that the university and its invention management resources would be chosen by the inventors because it matched their interests and expectations. If not, then the inventors could designate other agents, or if none were available or acceptable, could work out an arrangement with the funding agent. There is no need and no mandate for university administrators to reach into the process.
So why is there all this advice that universities have to tighten their assignment policies? What is motivating this idea of early, compulsory institutional controls as the route to innovation and economic vitality?