The Council on Government Relations, a university front group, published a “tutorial” that advocated that universities adopt a “uniform” policy on patents. COGR’s argument was that since administrators wanted to be able to “mix” funding from different sources, and the government placed certain conditions on its funding, then universities must adopt a single policy with regard to inventions that gave the priority to this government funding. All other sources of funding must be subordinated to the government’s requirements. Thus, there could be only one patent policy, and that patent policy must “comply” with the government’s requirements.
COGR’s tutorial tutors nonsense, but it is a clever nonsense–even an effective nonsense. Look at university patent policies. They have become, just as COGR argued, “uniform” in that sense of “uniform” that means “arbitrary.” The cleverness, however, lies in the claim that university patent policies must become uniform to comply with federal regulations. This part is simply not true. The Bayh-Dole Act requires federal agencies to use a default standard patent rights clause in funding agreements for research conducted at universities. That standard patent rights clause then is a matter of federal contract, not law. No one has to accept the clause (or the money that comes along with it); the clause is not a law imposed on the unwitting, but on those that volunteer and accept its terms and conditions knowingly.
In turn, the standard patent rights clause is self-implementing. It does not assume a university has a patent policy or a capability to manage inventions or a practice in managing inventions that is effective or moral or creative. It makes no policy assumptions whatsoever, requires no policy formation or alteration. In this, Bayh-Dole is utterly unlike the IPA program, which required a review and possible change in patent policy and practice before a university could be allowed an IPA. All the standard patent right clause requires is the ability of a university to comply with four simple requirements: (i) to designate personnel responsible for patent matters; (ii) to educate personnel on the importance of timely reporting of subject inventions; (iii) to report inventions timely to the government; (iv) to require personnel to make a written agreement to protect the government’s interest. That’s it.
Everything else involved in the apparatus of the standard patent rights clause is triggered when a university obtains ownership of a subject invention–and the standard patent rights clause does not have anything to do (yet) with a university’s ownership position with regard to subject inventions. Bayh-Dole concerns only whether a federal agency can require a university to give up ownership of a subject invention, once the university has obtained ownership. The Supreme Court in Stanford v Roche was adamant on this point–this, and a Poeian “nothing more.”
That pretty much rules out that somehow Bayh-Dole authorizes federal agencies to require universities to own inventions made with federal support, much as NIST may want to change the written agreement requirement in (f)(2) into a requirement to assign inventions to the host university. There’s no authority in Bayh-Dole for doing so. And the Supreme Court ruled on the limits of Bayh-Dole. Bayh-Dole pre-empts any other regulation. Without a change to the law–to make it into a vesting statute, which the Supreme Court said it is most definitely not–universities have no right under the standard patent rights clause to take title to inventions made with federal support. They have, rather, the right not to give up what they have obtained if the government asks for it, subject to various terms and conditions–most of which are designed not to operate.
There is nothing a university has to do with regard to policy to comply with the standard patent rights clause in federal funding agreements, other than to have a policy to comply and a practice of meeting these four conditions. It’s just that I don’t know of a single university that complies with the (f)(2) written agreement requirement. Instead, university officials invoke the COGR “uniform” patent policy idea and demand to own all inventions, patentable or not, inventive or not, with the claim that by owning all inventions, they are just being diligent to ensure that the university “complies with federal law.” And at the same time, so the claim goes, what’s good for federal law is good for everything else that might be sold for value by a university licensing office desperate to show its worth.
Well, I’ve added the parts that are left unsaid by university administrators. The truncated version is that a uniform patent policy is necessary to comply with federal law, to treat all inventions equitably, to allow federal money to be mixed with other sources of research support, and to minimize the administrative overhead of managing inventions. But the policy that results is arbitrary, has nothing to do with compliance with federal law, does not treat all inventions equitably (many are treated most inequitably), and does nothing to lessen the administrative overhead of managing inventions (and in fact makes that management much more complicated, difficult, and ineffective). Funny how folks can put up with big contradictions between claims and practice when they don’t know practice or can’t see the context in which claims are made.
Complying with federal law is the “legal driver” for the change in university patent policy. Bayh-Dole was represented as applying to universities when in fact Bayh-Dole applies to federal agencies, dictating their default research funding requirements, and to patentable inventions, defining a new class of patentable inventions and the federal patent policy that applies to these inventions. But depicting Bayh-Dole as a vesting statute (just how varied wildly, showing just the sort of lie the claim was) was sufficient to cause university administrators to change their policies to assume university ownership of all inventions made with federal support.
Once university ownership of such inventions was established as a university policy requirement, then the “mixing” of sources of research support became the liability driver. If a university owned an invention with big obligations to the government, but a crazy investigator mixed sources of funding with conflicting requirements, then the university would be liable for a breach of contract–either to the federal government or to the other sponsor (if not to both). Thus, in the general case (so the argument goes), a university must insist on a single policy so that it can manage its exposure to conflicting claims that follow sources of research support.
In terms of Bayh-Dole’s standard patent rights clause, to breach that clause with regard to any other source of funding, that other source would have to require that the university did one or more of refuse to designate personnel responsible for patent matters, refuse to educate personnel on the importance of timely reporting of subject inventions, refuse to report subject inventions to the government, or refuse to require personnel to make a written agreement to protect the government’s interest in subject inventions. If the university does each of these four things, however, then any issue with regard to ownership or licensing of any invention rests with the university’s personnel, not with the university. A “uniform” patent policy, then, one that starts with compliance with federal funding agreements, would place the responsibility for the disposition of inventions–reporting, licensing, and assigning–with the personnel who receive extramural funding.
It is the university’s voluntary act of demanding ownership of inventions in place of delegating the responsibility for reporting and deploying inventions to inventors that creates the non-compliance with the standard patent rights clause and from there infects the rest of university patent policy in an effort to cover the non-compliance and the effects of that non-compliance on all other aspects of university creative activity. From the perspective of the unreflective, self-interested university administrator (such as those apparently inhabiting COGR), “infects” is a pejorative verb. They would prefer the verb “informs,” as that would suggest that they are knowledgeable and so helpfully revise policy for the good of all. If a university does not own inventions outright in federally funded projects, and the responsibility for invention disposition is with those using the money and resources available to those projects, then a uniform university patent policy would make those same personnel responsible for any other funding that they receive. If all sponsors know that their issues are with the creative talent that does the work that they want done, then whatever the problems might be, those problems are focused on the creative talent, not on the administrative talent and not on the university itself.
It is the university’s voluntary act of demanding ownership of inventions in place of delegating the responsibility for reporting and deploying inventions to inventors that creates the non-compliance with the standard patent rights clause and from there infects the rest of university patent policy in an effort to cover the non-compliance and the effects of that non-compliance on all other aspects of university creative activity. From the perspective of the unreflective, self-interested university administrator (such as those apparently inhabiting COGR), “infects” is a pejorative verb. They would prefer the verb “informs,” as that would suggest that they are knowledgeable and so helpfully revise policy for the good of all. If a university does not own inventions outright in federally funded projects, and the responsibility for invention disposition is with those using the money and resources available to those projects, then a uniform university patent policy would make those same personnel responsible for any other funding that they receive. If all sponsors know that their issues are with the creative talent that does the work that they want done, then whatever the problems might be, those problems are focused on the creative talent, not on the administrative talent and not on the university itself.