When to disclose a subject invention under Bayh-Dole? It doesn’t matter. Really. Let me explain.
The Bayh-Dole Act applies to subject inventions. A subject invention is an invention (i) owned by a contractor (ii) that is or may be patentable (iii) and which has been made in the performance of work under a federal funding agreement. See 35 USC 201 and the Supreme Court decision in Stanford v Roche.
Bayh-Dole has this to say about invention disclosure at 35 USC 202(c)(1), in the list of things that must be in the standard patent rights clause unless a federal agency determines exceptional circumstances:
That the contractor disclose each subject invention to the Federal agency within a reasonable time after it becomes known to contractor personnel responsible for the administration of patent matters, and that the Federal Government may receive title to any subject invention not disclosed to it within such time.
Remember, a subject invention is one that the contractor has somehow acquired. If a contractor does not own an invention, then there is no obligation under Bayh-Dole for the contractor to disclose or even to obtain a disclosure from inventors. If you don’t own the invention, then it is none of your business to disclose it to the federal government. Not even “just in case.” There is no “just in case.” Either you friggin’ own it or you don’t. You can’t not know. No one can get a federal contract and be that incompetent.
Bayh-Dole also provides a complete slip for the disclosure requirement–even if a contractor owns the invention, the obligation to disclose arises only after the invention “becomes known” to the contractor’s personnel responsible for the administration of patent matters. If the contractor does not have any such personnel, then again, there will never be an obligation to disclose because the conditions for disclosure will never go true. Just don’t designate personnel responsible for patent matters and you never have to waste time disclosing another bleeping invention.
Or, if you have screwed up and designated patent personnel anyway, then for heaven’s sake don’t have them know of a subject invention before you are ready for it. Again, the invention has not only to be known to these personnel, but the contractor has to own the invention. It doesn’t matter that other contractor personnel know of the invention–they don’t have any obligation to make the invention known to the patent administration personnel. Only inventors are designated to make inventions known, and even there, there’s more room to slip the requirement. For that, let’s turn to the standard patent rights clause at 37 CFR 401.14.
The standard patent rights clause adds a time limit to a contractor’s disclosure of subject inventions (37 CFR 401.14(c)(1)):
The contractor will disclose each subject invention to the Federal Agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters . . .
Rather than an invention just becoming known to the contractor personnel responsible for patent matters, the invention must be disclosed. As we will see, disclosure also has a definition–it is not merely reporting that an invention exists or some broad brush about what the invention does or how valuable it may be. Furthermore, the disclosure must be in writing. There has to be a document. A phone call won’t do it, a meeting in the lab won’t either. And the only one that can make this disclosure is the inventor. Anyone else reporting the invention, even to those patent matter personnel, doesn’t set the condition for contractor disclosure true. Sorry, that’s just the way it is, NISTwits. Yes, once a subject invention has been disclosed to patent personnel, the contractor has to disclose that invention within two months to the federal agency. But lots of time can go by before then–and as we shall see, we are dealing with possibly geological time.
Bayh-Dole wasn’t always this cluelessly bad. Here’s how the disclosure requirement originally read:
A requirement that the contractor disclose each subject invention to the Federal agency within a reasonable time after it
is made and that the Federal Government may receive title to any subject invention not reported to it within such time.
Yes–disclose after the subject invention has been “made.” An invention is made when it has been both conceived and reduced to practice. An invention is conceived when it is fully represented in a stable form in the mind of the inventor–and to demonstrate that stable form, we expect documentation. Reduction to practice may be either constructive or actual. Constructive reduction to practice requires “enablement” of the invention–a written description sufficiently clear and full that anyone with ordinary skill in the art can practice the invention. Typically constructive reduction to practice involves filing a patent application. Actual reduction to practice requires creating the invention in physical form and testing of the invention to demonstrate that the invention meets every point of the invention that has been conceived.
If testing is necessary but has not been completed, the invention has not been actually reduced to practice. If the invention has not been reduced to practice, it is not yet patentable, and it cannot even be said that it “may be patentable.” An invention cannot be patented if it is not reduced to practice. Here “may” means “we don’t know what the patent examiner will say, but we sure as heck have conceived it and reduced it to practice.” “May” does not mean “perhaps in the future this, um, thing will become a patentable invention when we get around conceiving it and reducing it to practice.” Patent law doesn’t much care for unconceived or unreduced things. Those are called clever ideas, not inventions that are or may be patentable.
You can see then that “made” requires an invention to be both conceived and reduced to practice. One way to do this is to prepare a patent application–and file it. An inventor, for instance, could do that without telling patent personnel for the contractor. They might be pissed, but so what. Pissed off patent personnel is not a matter for Bayh-Dole. Another way to make an invention is to document it (conception) and demonstrate that it functions as described.
But none of that matters because in 1984 clever folk amended Bayh-Dole to replace “made” (which made sense) with “become known.” An invention that becomes known rather than an invention that has been made. Further, the 1984 amendment changed dramatically the time and contractor’s obligation. Originally, the contractor was obligated to know each subject invention that the contractor owned–if the contractor was going to use a present assignment to claim to own just about everything, then the contractor had better be pretty darned diligent to find out about each invention soon after it has been made. Well, university administrators couldn’t live with that pressure, so they popped the plug on the inflatable Santa and got the change in the law so that now there’s no obligation for a contractor to disclose even what the contractor owns unless the invention is made known to those patent personnel–and as we have seen, the patent rights clause makes the “making known” itself take the form of (i) a written disclosure (ii) by the inventor (iii) to the patent personnel. Got it so far?
Now the standard patent rights clause places further stipulations on the disclosure that the contractor must make to the federal government once the contractor owns an invention made under contract and the invention has been disclosed to the contractor’s patent personnel. It’s long–notice that–if you don’t care to read carefully:
The disclosure to the agency
[1] shall be in the form of a written report and
[2] shall identify the contract under which the invention was made and the inventor(s).
[3] It shall be sufficiently complete in technical detail to convey a clear understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention.
[4] The disclosure shall also identify any publication, on sale or public use of the invention and whether a manuscript describing the invention has been submitted for publication and, if so, whether it has been accepted for publication at the time of disclosure.
If the disclosure does not meet these requirements, it is not a complying disclosure. In Campbell Plastics Engineering v. Brownlee, a court decided that even though Campbell had provided all the information concerning a subject invention, had placed a notice of government rights in its patent application, and the federal agency had reviewed that application, because the disclosure did not take the form of a written report and was not submitted on the required form, Campbell forfeited its patent. Thus, we may reason that if a disclosure fails in any of these four points, it is not a disclosure–it is something else, but not a conforming disclosure. Without receiving a conforming disclosure made within the required time, Bayh-Dole provides that a federal agency can request title. One of those strange, ugly little bits in Bayh-Dole, made all the worse by NIST’s recent change that removes the deadline for the federal agency to act once it discovers a failure to disclose. Like other NISTwit moves, however, removing a time frame does not mean there’s not a laches defense if a federal agency does not act when it discovers a failure to meet the disclosure requirement.
The elements of the disclosure are those that would be necessary to file a patent application. [2] includes the inventors; [3] requires an enabling specification of the invention. And [4] requires information that would document whether any publication or public use or on sale would bar filing a patent application. It makes a little bit of sense, once one gets past the strangeness of requiring any disclosure at all. If the government is to request title and be able to file a patent application, it must have a full account of the invention.
But there’s more. The standard patent rights clause also requires contractors to require a written agreement from their employees but for clerical and nontechnical workers:
The contractor agrees to require, by written agreement, its employees, other than clerical and nontechnical employees,
[1] to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and
[2] in a format suggested by the contractor
each subject invention made under contract in order that the contractor can comply with the disclosure provisions of paragraph (c) of this clause . . .
The invention is to be disclosed, not merely reported or made known. It is to be disclosed in writing, and the disclosure is to be made by the inventor. But the disclosure is not to each invention made under contract–but rather to each subject invention made under contract. That is, the inventor must know that the invention has been assigned to the contractor before the inventor has an obligation to disclose it to the contractor.