NIAID Breezily Repudiates Supreme Court Ruling

Perhaps you wanted a short version.

NIAID puts this in guidance to inventors regarding inventions made in NIH-funded work:

Under the Bayh-Dole Act, your institution as the grant recipient owns rights to the NIH-funded invention and has the right and obligation to pursue patent protection.

The Supreme Court in Stanford v Roche ruled directly on this matter in 2011. The Court held that Bayh-Dole does not vest title to inventions made in federal work with the grant recipient. Rights are with the inventor. Bayh-Dole applies only after a grant recipient has acquired title to an otherwise conforming invention in some conventional, non-Bayh-Dole related way.

The NIAID here pointedly refuses to comply with the decision of the Supreme Court. Smells like contempt.

The botch job on Bayh-Dole continues:

As we mentioned above, the Bayh-Dole Act requires that all government-funded inventions be reported to the awarding federal agency; in your case, NIH.

First, they don’t mention this above. Careless. The Supreme Court made very clear that inventions that otherwise conform to Bayh-Dole’s definition of scope do not become subject inventions unless they are owned by a party to the federal funding agreement–a contractor.

Bayh-Dole’s requirement to disclose is expressly limited to subject inventions, not all inventions made in federally funded work. See 35 USC 202(c)(1). NIAID is just wrong. Further, Bayh-Dole’s scope is inventions made in the performance of work under a funding agreement. The definition of funding agreement at 35 USC 201(b) provides that funding may be “in part”; that is, the proper scope of interest is any invention (when acquired by a contractor) arising within the scope of work for which the federal government provides funding for any part of that work.

Regulatory guidance at 37 CFR 401.1 stipulates that merely “funding” an invention is not determinative. Federal funding may be used outside the scope of the funded project to make an invention, and if that use of funds does not “diminish or distract” from the project, it’s not within Bayh-Dole’s scope. So “government-funded invention” is doubly wrong. Not just imprecise. Wrong.

There should be a rule that no law governing a federal agency can be made more complicated than federal agency administrators can comprehend. On that basis, Bayh-Dole should be repealed. It has attracted a whole cadre, a bozonet as it were, of people incapable of reading the law and providing guidance. They just make stuff up that sounds good to them, and ignore even the US Supreme Court ruling on exactly the issues that they are responsible for.

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