Here’s more in the wild on vesting interpretations of Stanford v. Roche. Written by a suit of attorneys at the firm of Bracewell & Guiliani, it gets a piece of the Supreme Court decision right, does a decent job summarizing the case, and finds the gap in the AIPLA work up of the meaning of “of” in an “invention of the contractor” in the definition of “subject invention”. But then they write this:
It is now up to Congress to patch this loophole by amending the Act to expressly vest title in federally funded inventions in the contracting organizations.
That is, they think that the intention behind Bayh-Dole was to make it a vesting statute, and somehow the Supreme Court made it merely a technical matter that it doesn’t work that way. There’s nothing to indicate that Congress intended Bayh-Dole to be a vesting statute, nothing in revisions of US patent law or the MPEP, nothing in the Department of Commerce’s development of regulations or the Standard Patent Rights clauses. There is, however, reasons to see that Commerce, at least, assumed inventions were going to be assigned not vested–that’s what the (f)(2) agreement covers, for starters. And we find in almost all university practice a step in which assignments are requested–even Stanford requested assignments–something it would not have to do with inventions vested with Stanford outright and Stanford *really believed that*.
What’s consternating is that these attorneys appear to think that Bayh-Dole properly should be a vesting statute. What are they smoking? Perhaps they think it that paves the way for a UK-like patent act, where corporations own what their employees invent, subject to bits of arbitration if the consideration they provide to their inventors is incommensurate with the value of the invention comes to have for the employer. Here in America, we have this problem with the Constitution, which makes invention rights a personal right, and though it may be that a corporation can through its agents control the fixing of expression in a tangible medium and thus support work made for hire in copyright, it’s darned hard to see how conception can take place in a corporate brain. Maybe that’s old hat and we should just treat invention as another service to the employer, at least when the employer is a university. I’m not there yet.
My disagreement with the fine attorneys from B&G is not merely over the pathway–whether vesting outright or via a statutory lien on all other assignments or licenses until the university has satisfied its claims, or a present assignment to all future inventions that are found to be within scope of a federal funding agreement–all that is merely apparatus to rebuild the pre-Bayh-Dole agency approach to inventions as “service” inventions. Bayh-Dole broke that practice and replaced agency service claims with free inventions, owned by their inventors, pending whatever the inventors might work out with anyone who might take an interest–a university, a foundation, a patent management organization, a company, a federal agency. That’s the genius in Bayh-Dole. My disagreement is over what kind of university environment will advance innovation–figuring out where to invent and discover and what to do to gain access to the tools available in the broader community–whether that is investment, factories, brokers, popular imagination, or do-it-yourselfers.
I would think that in matters of universities, scientific or medical research, and innovation, folks would come forward as strong proponents of freedom. If ever there was a place for giving personal liberty some room to explore, it would be in the university venue, with faculty, with research that matters way more than making a quick licensing buck, and with concepts such as innovation, where the last thing one might want is to make the first thing, send it to a bureaucrat for processing.
It is university patent administrators who have made up this foo-fah that Bayh-Dole was a vesting statute, that the intention of Congress was to strip inventors of ownership and hand that to universities outright, and that the purpose of doing so was so that universities could fund their patent licensing operations and pad their discretionary slush budgets by taking on industry, if not via licensing then litigation. It’s a fluffy story, to be sure, and there are folks quick to argue it’s been “successful” and it’s being done “optimally” (at least, under the circumstances). But it’s a made-up story, built on an anti-freedom, inventor-loathing platform, and it may sound great if one likes bureaucleptocracy but it sure sounds rotten otherwise.
A lot of lawyers–the B&G lawyers are not alone–apparently think universities are just another form of corporation, and the goal is to find ways for them to secure inventions as effectively as possible–to expand the reach of their claims, to secure ownership expeditiously and unambiguously, and to be able to amass a hoard of patents. That, to the conventional IP attorney on the hunt for business, seems to be what corporations do–get some, and get some more. Surely there is good eatin’ there for attorneys, given the university administrators are a growth market for patent work, employment contract work, and policy work, and university inventors really aren’t. But it ain’t a meal that’s worth serving if one is looking at innovation generally, or the role of university services in supporting innovation, or invention, or research, or science, scholarship, economic development, or national competitiveness. In the corporate workup of university governance, these sorts of things are just the place to make money, build status and bragging rights, and keep on doin’.
The objection, respectfully, my attorney friends, is that universities are not corporate, do not need to become corporate, and do not serve the public by imitating corporate practices when it comes to supporting faculty, inventions, or community uptake of research results. Universities have a distinctive role, if they don’t ignore it, suppress it, and forget it–if you don’t snooker them. It’s up to folks in the universities to push back on your assumptions: no, we do not need to amass patents, no we do not want federal law to strip invention rights, no we aren’t going to do better by imitating corporate methods of grabbing more inventions, doing it outright, and building defenses to accountability.
If there’s a fix in Bayh-Dole, it is merely that in 35 USC 201(e), remove “of the contractor” and add after
(e) The term “subject invention” means any invention [delete: of the contractor] conceived or first actually reduced to practice in the performance of work under a funding agreement [add: with the contractor]: Provided, That in the case of a variety of plant, the date of determination (as defined in section 41(d) of the Plant Variety Protection Act (7 U.S.C. 2401(d)) must also occur during the period of contract performance.
That fix would remove the assumption having to do with ownership, and make the (f)(2) agreement in 37 CFR 401.14(a) make a lot more sense, since employees ought to be obligated to disclose and sign documents to file patents and establish rights in all inventions they make with federal support, not merely only those that are already owned by the contractor. That would also make better sense of 35 USC 202(d) and 37 CFR 401.9–inventors would retain rights in subject inventions that had not been assigned to the contractor.
Then again, maybe it would be enough to replace “a subject invention” in 37 CFR 401.14(a)(f)(2) with “an invention”. That language would cover inventions whether they met the definition of “subject invention” or not. That would leave the “of the contractor” the way it has been for 30 years, and the way the Supreme Court understood it to mean. The “fix” we need is not to revise Bayh-Dole so it implements a pre-Bayh-Dole mindset about invention ownership, but now handed to universities without agency review and without accountability for the inventions that don’t make it into the press as “successes”.
We have forgotten much, and I fear, we have a lot to lose if we act on the advice these attorneys are offering to university administrators and to legislators. If Bayh-Dole becomes a vesting statute, it should be repealed. There’s no point in merely substituting university bureaucrats for federal bureaucrats.
The perk me up in all of this will be if attention moves to inventors, to investigators, and to their interest, incentives, and motivations in making a difference with the results of their research. It was a problem back in 1948–how to get faculty out in front, taking responsibility for guiding their results to folks who can use them, but not so much that the overall effort of science is distorted. Folks back then were wary of federal funding. It wasn’t seen as a uniform good thing. The answer is not that university inventors will just magically become morally centered entrepreneurs, balancing all their obligations into a satisfying way of doing the right thing all the time and being wildly successful and celebrated for it. Nope. We have a wide range of innovation practice, and need that range of practice. Some folks will be entrepreneurs, some will be utterly indifferent, some will hand off their work, and others will be generous with their time to make opportunities for others. A national invention-in-research policy would do well to recognize the range, and encourage it, and celebrate the folks for the choices they make, as things develop. It may be the researcher who doesn’t give a rat’s ass about patents that discovers the stuff we admire, or it may be the most selfish, irresponsible, egotistical opportunist.
Bayh-Dole is not a perfect law. The text isn’t sacred. There are things to do to improve it. It would be good to have that discussion. It would be good not to revert to the past, or to turn universities into corporate research houses with inventions stockpiled by administrators. Surely we can do better than that.