The Supreme Court ruling in Stanford v Roche makes it clear that the Bayh-Dole Act does not vest title in inventions with universities, does not mandate that universities take title, does not constrain inventors to assign only to their university employer, nor gives a university the “right” to take ownership of inventions.
The university right to “retain” title arises only as a term of agreement between the university and government. If the university obtains title to an invention made with federal funds, then it can “retain” that title by complying with the patent rights clause in the funding agreement in which the invention was made.
Any policy, practice, or educational material that states, assumes, implies, or suggests otherwise is in error, and if left unchanged after the Supreme Court ruling could undermine agreements under which inventions are assigned to the university.
The consequence of the Supreme Court ruling is that universities must re-evaluate the road they are on with regard to inventions–in terms of motivation, policy, practice, and communication. Why would inventors ask a university to own inventions? Why would a university claim ownership of inventions? It would be good to have sound answers to these questions. And it would be good to have sound IP practices at universities, ones tuned to the distinctive roles that universities may play in society.
The great opportunity under Bayh-Dole is just this, to use the patent system in all sorts of ways to promote the application of federally supported inventions. Whether the inventions are owned by the inventors, by agents, by the university as such an agent, or by the funding agency, that’s the mandate. Universities have the resources, the public mandate, and the platform to be the most innovative of all. For that, however, they have to open up practice, diversify, engage, and explore.
Tightening up IP policies is not the answer. Business thinking is not the answer. Trying to “commercialize” everything is not the answer. Starting paper company puppy mills is not the answer. It may even be: routing everything through a single office or policy is not the answer. Instead: time for a new earth, rotate the crop, allow others to both sow and reap, and from this expand the range of activities that build up community–for scholarship, for the feckful, for students, and for industry as well.
New earth: that is sounding mighty good.