Mixing Two Governments’ Funding

Here’s an interesting statement of government rights in a University of Arizona patent, 9239453 B2. (I’d link to the USPTO patent server, but since the change in search software, it’s not obviously possible.):

GOVERNMENT RIGHTS (1) This invention was made with government supports under contract numbers 0644446 awarded by the U.S. National Science Foundation, 60827003 awarded by the National Natural Science Foundation of China, and 2009AA01Z308 awarded by the Hi-Tech Research and Development Program of China. The U.S. and Chinese governments have certain rights in the invention.

The invention is assigned jointly to the University of Arizona and Beijing Institute of Technology. There must be a technology administration agreement somewhere behind this patent, dealing with such things as who pays for the patent work and how the invention (patent) will be exploited.

Here’s your Bayh-Dole problem. Bayh-Dole requires that for any subject invention exclusively licensed in the U.S. to use or to sell, product must be manufactured substantially in the U.S. See 35 USC 204. Now how is that going to work with not only a Chinese university involved, but also Chinese government rights in the invention?

It would seem that Bayh-Dole’s national (protectionist?) manufacturing requirements are easily circumvented simply by mixing NSF funding with funding from another government. This can be as simple as collaborating with a researcher from whatever country one wishes to advantage, so long as that researcher is operating under his or her own national interest requirements.

In any event, collaboration with a researcher working under the funding requirements of another country, or accepting money from that country directly, offers a rather different patent management practice.

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