Letters of Marque

Here is an odd thing. Under the US Constitution, Congress is granted in Article I, Section 8, among other Powers, the power

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries

The power granted here is that Congress may establish a patent system, that secures for inventors the exclusive right to their discoveries. That exclusive right becomes the right to exclude others from making, using, and selling the invention (and the variants, having made, offering for sale, importing).  By securing this right for inventors, Congress may thereby promote the progress of the Useful Arts.

Now we turn to the Bayh-Dole Act, which states a somewhat different objective of Congress:

It is the policy and objective of the Congress to use the patent system to promote the utilization of inventions arising from federally supported research or development

First, Congress provides for a patent system that vests ownership of discoveries and inventions with their inventors. Now, some years later, in the 1950s and on, the federal government ramps up its funding of faculty-led research at universities, so much so that it becomes the dominant sponsor of such research, essentially buying up vast tracts of independent curiosity and expertise in competition with industry, with foundations (many of which about the same time, have re-purposed themselves from public advocacy to research), and with tinkering around on one’s own. Then in 1980, Congress is made to fret about what is going on and passes the Bayh-Dole Act to try to deal with this apparent federal enclosure of private rights.

This first stated policy and objective in Bayh-Dole is that the patent system should be used to promote the use of inventions made with federal support. It’s a noble gesture, of course. The question is, however, how it comes about that Congress has the power to limit the exclusive, personal property right represented by a patent in some way by means of a contract the government has made with an employer of the inventor. [Congress cannot dictate by statute the terms of a federal contract that must be used by the executive branch to do what Congress does not have the authority to do by statute.] A patent provides the right to exclude others from using a discovery or invention. There is no working requirement in US patent law. How then does it come about that Congress can pass a law that requires the promotion of the use of an invention? [All “promotion” can possibly mean here is “rah-rah” encouragement, not anything substantive that makes inventors use their inventions, makes inventors use the patent system, or makes inventors assign their inventions to others, such as, say, federal government favorites who get grants or obtain exclusive licenses. Everything university bureaucrats and political bluffers say about Bayh-Dole runs to things that Congress does not have the authority to do, did not do in Bayh-Dole, and did not intend to do–Bayh-Dole is not the statement of a secret public policy that only university bureaucrats and political bluffers can intuit without reference to any act of actually reading the law. The text of the law is to be merely symbolic of the importance of their self-interested, self-flattering, sleezy intuition.]

Bayh-Dole only applies when an employer gets assignment of a patentable inventions made under federal contract. The Supreme Court in Stanford v Roche said as much with its discussion of “of the contractor” where “contractor” was taken to refer exclusively to the university. How then does the contractor get ownership of such inventions? The standard answer, until a couple of years ago, was “by the operation of federal law.” That got thrown out. But perhaps folks were not looking carefully enough for their authority and got hung up trying to find it through clever readings of the Bayh-Dole Act itself.

Instead, they should have been looking at another Power granted to Congress under Article I, Section 8:

To declare War, grant Letters of Marque and Reprisal, and make Rules concerning Captures on Land and Water;

A letter of marque commissioned private parties to attack and capture enemy assets, especially ships. Wikipedia has a statement on it, citing Maritime Warfare and Prize, that has a remarkable similarity to the purposes that appear to be behind the brokers who advocated for the Bayh-Dole Act:

Cruising for prizes with a letter of marque was considered an honorable calling combining patriotism and profit, in contrast to unlicensed piracy, which was universally reviled.

There is no better expression I have found to what AUTM, Joseph Allen, and other prominent brokers and advocates for brokers of federally funded inventions made in faculty-led research are doing. Inventions are the new prizes and patents are the way to take them. And it’s called patriotic to attempt to make money selling these prizes off to raise more money for university research. The last thing anyone wants is for the government to put limits on how these prizes get sold, or what happens to them once they are sold.

Here is a sample letter of marque issued by James Madison during the War of 1812. By this letter, one John Lawton, among other things, is

authorized to detain, seize and take all vessels and effects, to whomsoever belonging, which shall be liable thereto according to the law of Nations and the rights of the United States as a power at war, and to bring the same within some port of the United States in order that due proceedings may be had thereon.

I have written about privateering with regard to foreign patent adventures. Here, let’s focus on domestic privateering. The idea is that Bayh-Dole allows federal agencies to grant “letters of marque” to private brokers of inventions. They can take inventions from inventors –“elect to retain title” rather than “detain, seize, and take”–which is what in practice these brokers have done for thirty years. The port is the invention management agent’s portfolio of accumulated patents, and the due proceedings are the administrative matters established by Bayh-Dole so that the patents get licensed for money, the money going, after privateering expenses, to support the universities, so that’s a good thing that can’t be questioned. The current rage for present assignments of future inventions is just the privateer’s way of not even having to leave port to capture prizes. Just force everything to be captured the moment it becomes a prize.

In short, the Bayh-Dole Act authorizes letters of marque to university patent brokers. It  grants these privateers the right to haul in any invention made with federal support, take ownership of it by means of the patent system, and sell the patent off for whatever value can be got from it. If the privateers make money, and the public is not outraged, then the endeavor is a success. This is not a reading that I expect will hold up in any serious court of law, but it is a reading that lays out what has been going on. Maybe that’s a good enough reason to celebrate Talk Like A Pirate Day–to show one’s opposition to talking like a patent privateer!

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