Another Question on RE: Does a subject invention have to be enabling?

A new question showed up in the RE search queue: “does a subject invention have to be enabling?” How to unwind this one? We can try. Another way to put it might be, “when does something new–an idea, an insight, some hunch, a prototype that accidentally works in an unexpected way–become subject to Bayh-Dole as an invention? Is it when an otherwise qualifying invention is created, or when the invention is anticipated, or when the invention is properly documented?

An “enabled” invention is one that meets the 35 USC 112 requirements for the specification of an invention in a patent application:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

If the specification of a patent application fails this standard, then the invention has not been “enabled” and the application will be rejected. Just because a patent application is rejected, however, does not mean that the subject invention that it claims is no longer patentable. It just means that whoever did the drafting of the application did a bad job. In this sense “enabled” means that everything claimed in a patent application is clearly taught–full, clear, concise, and exact–so that someone with skill in the art can make and use the invention.

A disclosure of an invention to the public may also be “enabling.” In this sense, the disclosure–an article or even an abstract of an article, a grant proposal that’s made public, or most anything else that’s in a recorded form. Here’s a bit from the MPEP on the matter:

A prior art reference provides an enabling disclosure and thus anticipates a claimed invention if the reference describes the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention

In this sense, an enabling disclosure anticipates the claimed invention and, well, that can pretty much make a given set of claims unpatentable. The subject invention may still have patentable elements, but if there’s an enabling disclosure against the drafted claims, the claimed invention is not patentable. In this sense, if a subject invention is “enabled” by a prior disclosure, one year before the application date in the U.S. and at any time before filing a patent application most everywhere else, then the claimed invention is not patentable and therefore that claimed invention does not meet the definition of subject invention in Bayh-Dole–the “is or may be” patentable part of 35 USC 201(d). If an invention is enabled by a prior disclosure, then the claimed invention is *not* patentable, and that bit is not a subject invention. But that’s probably not where the question was headed, so we head a more probable direction.

Here’s it is worth pointing out that the scope of “invention” in Bayh-Dole is broader than the part that may be claimed in a patent application. Federal patent law does not define invention. Bayh-Dole is part of federal patent law, and Bayh-Dole also does not define invention with its definition of “invention.” This is strange. Look–here’s Bayh-Dole’s definition of “invention”:

The term “invention” means any invention or discovery which is or may be patentable or otherwise protectable under this title or any novel variety of plant which is or may be protectable under the Plant Variety Protection Act (7 U.S.C. 2321 et seq.).

This “definition” is utterly unhelpful as a definition. It is rather a scoping statement. An invention is an “invention or discovery.” Well, that’s just replacing one thing with the thing and another undefined thing. But there’s a limitation on these two things–“which is or may be patentable.” The “is” patentable bit comes true when the Patent Office agrees and allows one or more claims. The “is” bit, then requires a patent application and an allowance of claims. The “may be” patentable bit, however, is wonky donkey. Who decides what “may be”? The inventor? Some university administrator? Patent counsel? Bayh-Dole isn’t saying. We are left with the idea that “may be” patentable is broader than “is” patentable. “May be” is at least as broad as “patent counsel agrees that a patent application could be filed and there’s a reasonable chance that all claims won’t be finally rejected. Or “may be” could be as broad as whatever someone thinks at the time may be patentable, as in “hey, let’s get a patent on this” without checking prior art and not considering perpetual motion machinery and the like.

At any rate, referring something to “patentable” necessarily requires there to be a specification–a full teaching of the invention and claims that set out the scope of the invention for patent purposes. If there’s no disclosure or specification, then it’s difficult to see how the invention yet even “may be” patentable. It “may be” if there’s a written description of the invention (subject to someone saying, “hey it might be patentable”), but if there’s nothing written, no pictures, no documentation, then it’s a stretch of “may be” to say, “this may be patentable if it is documented, so it may be patentable now.” If we stumble down this road, then what’s to stop us from saying “this may be patentable if it is thought out more clearly and demonstrated to work as anticipated in all its elements.” In this use of “may be,” pretty much any idea “may be” patentable–all it takes is the rest of the elements of patentability to be met and we are there. So, no, we ought not go down that path. If there’s a written record of the invention (written–any documentary form), and at least one claim, then someone might have a legitimate thought that the invention “may be” patentable.

All this gets at a core practice element of Bayh-Dole’s standard patent rights clause. Bayh-Dole does not require the disclosure of anything that someone thinks or does or observes or collects or assembles. There’s no requirement that an inventor–someone who says “whoa, that’s new”–must document the invention and in so doing make it reach to “may be” patentable. You may have been told otherwise, but it’s not in Bayh-Dole.

Here’s the disclosure requirement in Bayh-Dole’s patent rights clause 37 CFR 401.14(c)(1), based on 35 USC 202(c)(a):

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.

For an invention to be a subject invention, it must (i) be owned by a party to the federal funding agreement and (ii) have been conceived (fully present in the mind of the inventor, who recognizes it as inventive) or first actually reduced to practice (built and tested to demonstrate that it really does work as described, in circumstances in which describing the invention does not give anyone sufficient confidence that the invention does work as described) and (iii) all this has come about in work that has in some aspect received federal funding for research or development. This all, in addition to the “is or may be” bit.

The patent rights clause goes on and adds specificity to the disclosure requirement:

The disclosure to the agency shall be in the form of a written report and shall identify the contract under which the invention was made and the inventor(s). 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.

The disclosure to the federal agency must take the form of a written report. That bit of technical fussiness was used to screw over Campbell Plastics, which had the audacity to send over the patent application, but that wasn’t a “written report.” There’s more. The report has to “convey a clear understanding . . . of the nature, purpose, operation, and . . . characteristics of the invention.” That sure looks like “enablement,” doesn’t it? According to the patent rights clause–not in Bayh-Dole, but as it were riffing off the law–the contractor has to provide an enabling disclosure to the federal agency, vetted by the contractor’s patent personnel, to comply with 35 USC 202(c)(1).

Now look at what is going on. The contractor must disclose each subject invention within two months after the inventor discloses it to patent personnel. (The two months is horse nuggets. Bayh-Dole was changed almost a decade ago during AIA conversion so that disclosure is required prior to the last possible date on which a patent application can be filed. Oh, I know. NIST doesn’t bother to check on changes to Bayh-Dole. It just pulls things from its posterior cortex. But that’s another thing. We are trying to be serious here, even though Bayh-Dole is a clown show.) The original Bayh-Dole has this (former 35 USC 202(c)(1)):

A requirement that the contractor disclose each subject invention to the Federal agency within a reasonable time after it is made

Here, “made” means “conceived or first actually reduced to practice” (35 USC 201(g)). In old Bayh-Dole, a contractor had to go out and find inventions that it owned, but didn’t know it, and determine that the invention has been conceived (thought out but not necessarily tested) or first actually reduced to practice (tested because no one ought to believe it otherwise), and do all this in a “reasonable” time. Apparently Latker didn’t like what he drafted–or the university folks he had organized didn’t–so he drafted a change that stuck in the law in 1984, which is the language we have now–a university patent office doesn’t have to disclose anything until it receives a proper disclosure, and then it has two months. That’s all very convenient for sit-on-your-fanny-and-wait-for-invention-disclosures-to-roll-in practice, but it’s all a very different thing with regard to what’s going on with “may be” patentable. The Bayh-Dole we have now says (35 USC 202(a)):

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 37 CFR 401.14(c)(1) puts an arbitrary hard deadline–unreasonable–on “within a reasonable time” and “becomes known” is turned into “after the inventor discloses it in writing.” If an inventor doesn’t disclose in writing a subject invention (one that the contractor already has acquired) to the contractor’s patent personnel, the contractor has no obligation to disclose the invention to the federal government, no requirement to elect to retain title, no requirement to file a patent application, no license to the government, nothing.

Ah, you say, but the standard patent rights clause fixes this by requiring inventors to make the (f)(2) written agreement–not in Bayh-Dole, copped and weirded from the now defunct Federal Procurement Regulation that codified the Nixon patent policy–and in the (f)(2) agreement, the patent rights clause stipulates that inventors must

to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and 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

That all might have worked (somewhat) with the original Bayh-Dole, since the “reasonable time” clock started when a subject invention was “made.” But in weirded Bayh-Dole, after 1984 changed it, a contractor doesn’t have any disclosure compliance issues until *after* an inventor discloses a subject invention, in writing, to the contractor’s patent personnel. You see–until the inventor discloses in writing, there’s nothing the contractor has to do to comply with the requirement that the contractor disclose to the federal government. Ain’t Bayh-Dole a piece?

What does this have to do with enablement? Ah. The upshot is, the idea underlying Bayh-Dole disclosure practice is that until an inventor presents a written, enabling disclosure of the subject invention to a contractor’s patent personnel nothing else in the Bayh-Dole compliance apparatus operates. Is this just sloppy drafting and amending? Certainly there’s slop here. Or do we wait around for someone to tell us what Sen. Bayh and Sen. Dole truly intended? Or is it–wait for it–actually Congressionally intended federal policy? It sure seems like this last option makes the most interpretative sense. If federal agencies are going to be required to give contractors a default opportunity to keep title to any invention they acquire arising from federally supported work, then that process doesn’t start until a subject invention is enabled in a disclosure to the contractor’s patent personnel.

If it weren’t for Reagan blowing up executive branch patent policy for all the things that Bayh-Dole does not take precedence over, such as inventions arising in federally supported work hosted by contractors and which the contractors don’t acquire, which then should have been governed by the Federal Acquisition Regulation, things might actually find a way to work. With Bayh-Dole, there would be two patent rights clauses in play for every federal funding agreement: the FPR patent rights clause for inventions before a contractor acquires them (oh, it gets metaphysical–there’s a way to do this, but gosh, not now); and the Bayh-Dole clause for inventions after a contractor acquires them. If a contractor doesn’t like the FPR treatment, then it can try out the BD treatment. It just has to run with both patent rights clauses until it decides. But Reagan (Latker, actually) blew this arrangement away with EO 12591, displacing all executive branch patent policy with a mandate to use Bayh-Dole-like patent rights clauses (to the extent allowed by law) for all contractors–not just for everyone other than nonprofits and small businesses. No FPR alternative. No obligation for inventors to disclose inventions that aren’t subject inventions. No obligation for inventors to disclose inventions that are subject inventions because contractors don’t have any obligation to disclose those inventions to the federal government until an inventor does disclose–properly, in writing, in an enabling writing, provided to the contractor’s patent personnel.

So, yeah, a subject invention can exist without enablement–in the mind of an inventor as “conception” or tested because no one would find it credible otherwise–and claimed by a contractor under a theory of equitable title (hired to invent, present assignment properly constructed with consideration, and the like). But for anything to happen under Bayh-Dole besides an invention becoming labeled a subject invention, there pretty much has to be an enabling disclosure of the invention by the inventor to a contractor’s patent personnel.

This condition is true, too, if a contractor makes inventors parties to the funding agreement (as provided by 35 USC 201(b)’s definition of funding agreement). Then inventors are contractors. But even then, until an inventor discloses the invention in writing to patent counsel, it’s a subject invention but nothing happens under Bayh-Dole.

In practice, none of this matters. The actual words of Bayh-Dole and the patent rights clause don’t matter. People make up what they think is plausible and convenient. People at federal agencies and administrators at institutional contractors, that is. Inventors apparently don’t get to either make things up that they think are plausible and don’t get to rely on the words of the statute or the words (such as they are) of the patent rights clause that applies to inventors–namely, 37 CFR 401.9.

Until a subject invention is enabled with a disclosure to a contractor’s patent personnel, nothing happens under Bayh-Dole. In practice, university administrators claim the university owns pretty much everything as soon as it is created, even if no ownership theory applies to any such thing other than the ownership theory of university administrators fantasizing that when they say the university owns something, then by jiggers the university owns it, no matter if there’s no legal theory of ownership available to them. Illegal theories, like the square root of -1, seem to work just fine for them.



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