Here is a passage from the “IP Handbook of Best Practices,” from an article about the development of University of California “technology transfer”, co-authored by a former director of the UC tech transfer office (emphasis added):
In 1943, the first UC patent policy was adopted, which provided mechanisms for supporting the licensing of patented inventions.1However, assignment of inventions to the university was determined on a case-by-case basis and UC policy was silent on royalty sharing between the university and inventors. In 1963, the university adopted a new patent policy that foreshadowed some of the requirements the Bayh-Dole Act (1980) later made mandatory, including making the assignment of rights to the university mandatory and specifying a royalty-sharing formula (50/50 sharing of any licensing revenue between the inventor[s] and the university, after deduction of a 15% administrative fee).
Here is the key clause from the 1943 policy from Archie Palmer’s compilation:
It is not that the situation was “case-by-case” as if UC had some say. It was the expressly the policy that assignment was optional. There was nothing “case-by-case” about it from the inventor’s side of things. The policy also was not silent on royalty sharing:
The policy is quite clear. The university intends to negotiate with the inventor a financial interest that *the Regents may have*. That is, the discussion of financial interest is independent of the ownership. The policy instructs the Regents to negotiate a university share. This is entirely different from *taking ownership of an invention* and then generously offering *a share of any licensing income back to the the inventors*.
The discussion goes on briefly to the 1963 policy, commenting that this new policy “foreshadowed some of the requirements the Bayh-Dole Act (1980) later made mandatory, including making the assignment of rights to the university mandatory”. Now we know that the Bayh-Dole Act did not make assignment of right to the university mandatory. It made assignment to the government mandatory unless (a) assignment was made to a qualified agent or (b) the funding agency chose not to require assignment. The US Supreme Court was clear on that point in the Stanford v Roche decision. But here we have text, out in the wild, as “best practices” that ignores all this. At least someone might revisit the article and indicate that it is not correct with regard to Bayh-Dole.