Here is some advice for universities on Stanford v. Roche (“Notwithstanding The Supreme Court’s Ruling Against Stanford, Universities Have The Means To Protect Their Rights In Faculty Inventions”): “In a 7-2 decision delivered by Chief Justice Roberts, the Court affirmed the Federal Circuit’s ruling that the university inventor had assigned the invention to Roche Molecular Systems before his employer, Stanford University, managed to obtain title as required by its university patent policy.”
Comment: Stanford’s policy provided for inventor ownership “whenever possible.” The policy did not require the assignment of all inventions. Stanford allowed the inventor to enter into the deal to assign inventions to a company as a condition for the inventor to be trained in the proprietary company technology that led directly to the invention claimed by Stanford.
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More, from the same “advice”: “A “subject invention” is one conceived or first actually reduced to practice in performance of a federal funding agreement.”
Correction: No! Ignores the Supreme Court. A subject invention is an invention of the contractor made in performance of work under a federal funding agreement. If the invention is not owned by the contractor, then the contractor has no way under Bayh-Dole to elect to retain title. “Retain” does not mean “take.”
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Finally: “The good news for universities, other research institutions, and companies performing federal research and development, is that they can protect their ownership interest by requiring a valid advance assignment of inventions as a condition of employment.”
Translation: “The good news is that universities, by renouncing open research policies, may demand an overbroad interest in the inventions made by faculty, students, and staff–at least if they misrepresent and violate Bayh-Dole.”
Question 1: What is the basis for a university having such an ownership interest?
Think about it. It’s *not* Bayh-Dole that requires “valid assignments.” Bayh-Dole is silent on assignment–that’s central to the Supreme Court’s decision. While the university is the putative “employer” in the Bayh-Dole scheme, federally funded research is proposed to the government by investigators, and the compensation for the government’s interest is the funding provided to investigators. The university generally does not employee the investigators, but releases them from their employment duties so they can participate in federally supported work. So what is the basis for the university administration’s ownership interest that is so important to “protect”? For that matter, see 37 CFR 401.14(f) and (g)–both not authorized by Bayh-Dole, but together these require contractors to make their inventive employees parties to the funding agreement–under 35 USC 201(b) and (c), those employees become contractors with their own standing to retain title to the inventions they make under federal contract.
Question 2: How would a “valid advance assignment” be possible given the fact pattern in Stanford v Roche?
It would be of the form: “As a condition of employment you hereby assign to the university all inventions you make that we can legally claim, including ones that we allow you to make for others in exchange for proprietary information that we may use to compete for federal grants and that later if things work out we can void so we can sue the company we got the information from in the first place for infringement when they thought they had rights.” And that’s the *good news*.
That is, the valid advance assignment could never work under the fact conditions in Stanford v Roche. A university instead would have to forbid faculty, post docs, graduate students, staff–anyone–from consulting for, working with, exchanging ideas with, talking with, disclosing, or publishing anything related to university-hosted research. A university would have to claim ownership of everything anyone might make or think, regardless of whether that everything was the result of assigned work, or in the area of expertise of the inventor, or in the area of anyone’s expertise at the university, or more nebulously had “commercial value.” Such a “valid” advance assignment would abrogate academic freedom, destroy a university’s open research environment, cut off all collaboration outside the university, expose the university to export control license compliance for internal disclosure of information to foreign nationals, require a broad non-compete covenant without additional consideration, and if made within the context of Bayh-Dole, such a “valid” advance assignment would violate the standard patent rights clause.