For some reason, the New York Times response form is down. So I thought I’d post this letter here while I wait for the response form to come back on line.
Mr. Pérez-peña:
On November 21 the New York Times published an article written by you that pertains to university patenting and licensing. The fourth paragraph of the article contains an error with regard to the Bayh-Dole Act, referred to there as “a 1980 federal law.” You write:
A 1980 federal law gave universities ownership of patents arising from federally funded research, and the results have generally been seen as a boon to universities.
The Bayh-Dole Act does not give universities ownership of patents. This was the central issue of the US Supreme Court decision in the case of Stanford v Roche, decided in 2011. The Supreme Court was clear on this point:
Held: The Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.
The Court elaborated its lack of regard for Stanford’s claim that the Bayh-Dole Act gave ownership of inventions made with federal support to universities that hosted the research:
It would be noteworthy enough for Congress to supplant one of the fundamental precepts of patent law and deprive inventors of rights in their own inventions. To do so under such unusual terms would be truly surprising. We are confident that if Congress had intended such a sea change in intellectual property rights it would have said so clearly—not obliquely through an ambiguous definition of “subject invention” and an idiosyncratic use of the word“retain.”
It would be accurate to write, “A 1980 federal law allowed universities, if they acquired rights to inventions arising from federally funded research, to retain ownership to those inventions if they applied for patents.” It would also be accurate to write, “A 1980 federal law has been used by universities as an excuse to take ownership of inventions arising from federally funded research, an action that the Supreme Court determined to be unsupported by the law.” Or, “University administrators have long held that a 1980 federal law gave universities ownership of federally funded inventions. This claim was overturned by the Supreme Court in 2011, but universities have continued the practice of demanding ownership of faculty and student inventions, and have represented the practice as a boon.”
The big story is not that universities cannot make much money on patenting, and it is certainly not that universities should spend more on technology transfer in the form that they have been doing–that is, seeking to own everything and selling it off to anyone willing (or forced) to pay.
Many universities have refused to accept the Supreme Court decision. They have not revised their policy statements, and they have continued the same practices they used before the decision in Stanford v Roche. Over the years, they have changed their patent policies to “comply” with federal law. They have done so by misleading the faculty and students, or by imposing the change without debate. Now they use those same policies to claim that even if federal law does not say anything about their right to own faculty and student inventions, their patent policies now do make that claim, and the policies must be followed, regardless of Bayh-Dole. That in itself is worthy of a story.
It would advance considerably the public discussion of university patenting if the New York Times corrected its story. The idea that federal law strips faculty and students of their invention rights borders on administrative corruption. Uncritically repeating the claim puts the New York Times in the service of such folk. Does that really serve the Times’ readership? For starters, you might talk with the AAUP about its concerns.
Regards,
Gerald Barnett