Another question on RE: When does Bayh-Dole not apply?–1

When does Bayh-Dole not apply?

Bayh-Dole is part of federal patent law, Title 35 USC, placed in Chapter 18 with heading “Patent Rights in Inventions Made with Federal Assistance.” Thus, broadly, we can expect that Bayh-Dole does not apply to non-inventions, to inventions for which there are no patent rights, to inventions not made with federal assistance.

Thus, Bayh-Dole does not apply to original works of authorship, not to copyrights, not data rights, not trade secrets, not gathered stuff, not ideas, not know how, not domain names or trademarks, mask works, experimental set ups, computer software. Not “intellectual property” in general, not even “intellectual property” made with federal assistance, not even inventions made with federal assistance that are excluded from Bayh-Dole’s scope, such as funding agreements not for research, experimental, or development work. Funding agreements where the primary purpose is training or education are within Bayh-Dole’s scope (see 35 USC 212) but Bayh-Dole then exempts such agreements from Bayh-Dole’s contracting provisions, and so Bayh-Dole doesn’t apply to inventions made with federal assistance under those funding agreements, even though it applies to those agreements.

That’s not quite it, but it is a good place to end for people who just want a sound bite. TL;DR. Heave ho, off you go.

Not left yet? Ah. Then one more key point:

The contracting portion of Bayh-Dole does not apply to inventions not owned by a federal contractor. See the definition of subject invention at 35 USC 201(e):

The term “subject invention” means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement: Provided, That in the case of a variety of plant, the date of determination (as defined in section 41(d) [1] of the Plant Variety Protection Act (7 U.S.C. 2401(d))) must also occur during the period of contract performance.

For the contracting portion of Bayh-Dole to apply–to make an invention arising from federally supported research or development meet the definition of “subject invention”– the invention must be owned by a contractor. That’s because, apart from anything else, Bayh-Dole defines a subject invention as “an invention of the contractor.” The Supreme Court in Stanford v Roche made clear (citing itself) that “the use of the word ‘of’ denotes ownership”:

Construing the phrase [of the contractor] to refer instead to a particular category of inventions conceived or reduced to practice under a funding agreement—inventions “of the contractor,” that is, those owned by or belonging to the contractor—makes the phrase meaningful in the statutory definition.

University patent administrators could not (and many still cannot) get their minds around this definition. They, like Stanford’s administrators, wanted “of the contractor” to mean “any invention made in federally supported research.” They wanted Bayh-Dole to be a vesting statute that somehow–they could not agree on just how–vested title to inventions with the organizations that hosted federally supported research, or gave these organizations a first right or special privilege or mandate to acquire such inventions or at least denied inventors the right to do anything but assign their interest in their inventions to the organizations that hosted their federally supported research. The Supreme Court blew up that argument, leading some commentators (and many law firms interested in retaining university patent business) to claim that there was a “gap” in Bayh-Dole that had to be filled by contractors demanding all personnel agree to assign their inventions to the contractor. NIST even got into the act and changed Bayh-Dole’s standard patent rights clause to include in its requirement for a written agreement that certain employees agree to assign subject inventions. But doing so–if the requirement is read broadly and cluelessly–is exactly what the Supreme Court ruled that Bayh-Dole did not authorize.

Failure to comprehend what constitutes a subject invention indicates a deep misunderstanding–and incompetency–about how Bayh-Dole is structured and operates (or would operate if anyone complied with its requirements–a cry here for competent people to migrate into university technology transfer, where incompetency seems to dominate on this point).

The Supreme Court set the record clear. Inventions made in work receiving federal support are not subject inventions–whatever else might be involved–until they are acquired by a contractor. If a contractor does not own a given invention, then Bayh-Dole does not apply. Other federal laws may apply–ones otherwise preempted by Bayh-Dole–but not Bayh-Dole. Or, more particularly, if a contractor does not acquire an invention made under federal contract, then Bayh-Dole’s standard patent rights clause does not apply. Some other patent rights clause might apply–constructed or implied by federal law or regulation, or produced under Bayh-Dole’s procedures for constructing other patent rights clauses–but it’s not Bayh-Dole’s standard patent rights clause. Bayh-Dole’s scope is as broad as “inventions arising from federally supported research or development.” But Bayh-Dole’s definition of subject invention applies only to a subset of this broad scope. And the bright line defining the border between what Bayh-Dole covers and other inventions is whether a federal contractor owns the invention. And contractors cannot acquire such inventions by operation of Bayh-Dole or from some authorization derived from Bayh-Dole.

There. Bayh-Dole doesn’t apply to non-inventions, inventions without patent rights, and inventions not made with federal assistance. Doesn’t apply to inventions not owned either by a contractor or the federal government (except, well 35 USC 205 does apply to inventions in which the federal government has any interest–including just having the right to a license–but 205 is about keeping such inventions secret, not about the disposition of ownership). Doesn’t apply to inventions not made in funding agreements for research, experimental, or developmental work. Doesn’t apply, in its contracting requirements, to inventions that are not subject inventions–that is, doesn’t apply to inventions made with federal assistance but not owned by a federal contractor.

Had enough, have you? Good for you! Your therapist will be pleased that you could pull out. Oh, yes, there’s more to come. But do you really need more? Ah.

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