Starting tomorrow, Research Enterprise will feature a series of five articles looking at how the narrative formed that now dominates Bayh-Dole Act discussions. We start with Vannevar Bush’s effort to create a federal agency focused on frontier scientific research and creating an environment for discovery, and how this effort was swamped out by federal agencies and universities. Instead, university research was folded into federal procurement, but with fewer administrative requirements. This conflation of grant and contract leads to an expectation that the government can make whatever claims it wants to when offering support, including claims to patentable inventions as deliverables. You see where this goes, perhaps.
The focus of the articles then turns to efforts to bring some organization to the chaos of federal agency dealings with contractors of all sorts. Universities get no special treatment under the 1963 Kennedy Statement of Government Patent Policy, which establishes a government-wide uniform policy on patentable inventions made in contracting for research. A university is just another contractor without an established commercial position doing work that may involve public health or welfare. The Institutional Patent Agreement approach, started in the 1950s and revived in 1968, navigates within government patent policies and procurement regulations. The IPA created in 1968 by HEW, though, is clever–it gives nonprofit contractors an option under the contract to acquire the government’s interest in securing assignment of inventions. Work through that slowly. The government requires delivery of title to inventions made in a funding agreement. Now the government allows the contractor the option to obtain the government’s right of delivery of title. The government grants the government’s right to take title to the contractor, so the contractor is acquiring title and “administrating” rights as it were on behalf of the government.
With this account in hand, we then can look afresh at how Bayh-Dole operates. It uses a similar approach, but because Bayh-Dole is placed in federal patent law, it cannot use the same procedures. And because Bayh-Dole supersedes executive branch patent policy with legislative branch patent policy, it does away with the very thing that allowed the IPA to operate–the presumption of title, which arises as a directive in executive patent policy (agencies in their contracting may presume (i.e., require) delivery of title unless special circumstances involving the public interest indicate otherwise), but which is nowhere to be found in the legislative patent policy set forth as the first section of Bayh-Dole. Thus, Bayh-Dole does not “vest” rights with anyone, as the US Supreme Court pointed out to the crowd of university lawyers who asserted otherwise.
But Bayh-Dole does more than change procedures for federal contracting for inventions. Bayh-Dole is made part of federal patent law, and there Bayh-Dole establishes a new class of inventions–subject inventions–and stipulates the property rights in patents available for subject inventions. It is in the limitations on property rights–not so much in the standard patent rights clause or march-in procedures–that Bayh-Dole constrains what an owner of a patent on a subject invention may do with the patent. Patents on subject inventions are not ordinary patents and cannot be used as ordinary patents. It’s just that university administrators ignore the law, and the federal government does not enforce the law, and to my knowledge no one sued by a university for infringement has objected based on the law. Perhaps Bayh-Dole is inherently unenforceable. If so, there’s a legitimate question whether it should be law at all.
The articles lay out the issues along with quotes and citations so you can follow the evidence and my reasoning. See for yourself. Ask whether frontier science at universities ought to have special treatment in federal funding arrangements. Should patents on inventions made in such research have special treatment? Or should the broader expectation of practical application announced in the Kennedy patent policy apply to frontier scientific research as well? If frontier science should be different when it comes to patenting, then Bayh-Dole is the primary statutory bar to allowing that difference to be recognized by the federal government. University patent administrators could do a great deal to recognize the distinctiveness of frontier science anyway, even under Bayh-Dole (if they thought there is any distinctiveness), but they haven’t and there’s little to indicate that they ever will, left to the path they have chosen.