The Stanford v. Roche case was about how universities get ownership of inventions under Bayh-Dole. Stanford argued vesting. The Solicitor General argued voiding all other alternatives. WARF argued faculty were gullible, inept, and selfish. AUTM threw sticks and dirt in the air. Well, something like that anyway. Irrelevant stuff about how technology transfer was built on assumptions that had to be in the law, and how it would all come crashing down, dooming America, if somehow it was any other way. The Supreme Court didn’t buy any of it, and made a remarkably clear and insightful decision.
Now the retrenchment movement is in full swing. First we get the present assignment advice, which says, basically, strip faculty of invention rights at employment, it’s for their own good and for any trendy words that come to mind–national competitiveness, economic development, innovation, commercialization, wealth creation. Whatever. Next we get a rewriting of history so that the law is imputed with the assumptions and intentions of some of the folks who worked on it, and that they rather than the courts should have the last word on the matter. While it is interesting to hear what folks say their intentions were, those intentions are not legislative intent, and it’s irksome, to say the least, to have folks conflating their personal desires with the law to claim that anyone pointing out how things actually are set up to work under Bayh-Dole must be wrong.
No one in the retrenchment movement apparently has bothered to work through Bayh-Dole after the Supreme Court ruling to figure out what went wrong for them. They persist in such things as “elect to retain title” means “elect title” and “subject invention of the contractor” means “subject invention to be owned by the contractor.” They argue that “retain” must mean “already has by operation of law.” They argue that Bayh-Dole requires employment agreements to assign, or assumes there will be such agreements. All of it is nonsense. It really is. It doesn’t have a leg to stand on, black knight style.
Look at a couple of recent statements. First, from a Mississippi State University presentation for a national webinar.
Now here’s the Supreme Court on the matter:
The Bayh-Dole Act does not confer title to federally funded inventions on contractors or authorize contractors to unilaterally take title to those inventions; it simply assures contractors that they may keep title to whatever it is they already have.
Which statement is correct? Why is Mississippi State putting out that Bayh-Dole “gave the right and responsibility to control and manage IP from federal sponsorship to universities”? Not only is it imprecise–Bayh-Dole deals only with rights to patentable subject inventions, not all IP–but it’s quietly misleading, self-serving, wrong.
Here’s another statement, in a story about careers in university technology transfer in Nature:
Fourteen years ago, there were 26 employees at what was then called the office of technology transfer at the University of Washington. Now there are 54. The growth, which is not atypical for large academic institutions in the United States, is due in large part to the Bayh–Dole Act of 1980. The act changed the pace and mannerof innovation in the United States, giving universities and not-for-profit organizations control over the intellectual-property rights of federally funded research done within the institution.
Sounds familiar? Perhaps it’s just an author who doesn’t get it, but maybe it’s the University of Washington administrators who participated in the story, too. Either way, it’s misleading and wrong.
How about this, from Colorado State University Research Foundation:
As a result of this law, universities retain ownership to inventions made under federally funded research.
The same language is to be found at Syracuse University. All citing a 1999 publication by COGR, despite the Supreme Court’s clear statement of what “retain” must mean.
Not to be outdone, how about this from the University of Colorado (with a crass, irresponsible overstatement of the assets covered by Bayh-Dole)?
Essentially, the presumption of IP ownership lies with the University, as dictated by the Bayh-Dole Act of 1980. Covered IP includes any inventive idea (compound, device or process) or its reduction to practice, including know-how, and copyrightable workspertaining to the invention.
Or this from the University of Rochester (with overclaims about IP and added melodrama to be followed by a full-on retrenchment essay)?
In 1980, congress passed the Bayh-Dole Act or the Patent and Trademark Law Amendments Act, which gave universities, small businesses, and non-profits intellectual property control of their inventions and other intellectual property that resulted from government funded research. Bayh-Dole was, and continues to be, one of the most significant pieces of legislation for university technology transfer. Bayh-Dole not only transformed this process, it re-invented the way university technologies were developed and commercialized.
The retrenchment movement doesn’t cite text carefully, doesn’t want to consider alternatives. Instead, it cites desires and intentions reconstructed to apply to the past and put a pretty face on some very bad reasoning and claims. It cites practices as if they have to be right because they aspire to important themes, or because so many people do it that way. It’s what squatters do who do not want to leave property that is not their own.