In Defense of Inventor Liberty

University patent administrators are proposing a distorted reading of federal regulations in an effort to ensure that you never own your own inventions, even when you make them on your own time, outside of the use of university facilities.  They think it makes for a great national innovation policy for university bureaucrats to confiscate inventions, under the guise of defending the public from university researchers who otherwise might want to have a say in how their inventions are made available to the public.

The patent administrators are so sure of this that they are making the case right now to the US Supreme Court over a law case called Stanford v. Roche.  If they win, it is lights out for all private agreements involving inventions until there’s an actual reduction to practice. Continue reading

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What if…Bayh-Dole is more clever than folks possibly imagine?

I am looking at the following argument.  It is a what-if.  It takes a very different approach to those arguments that assume that Stanford has a subject invention and is losing licensing income but for the action of an imprudent employee and a sneaky company, and that the case is somehow therefore about a weakness of Bayh-Dole that has to be patched up to give universities clear title.  The argument below doesn’t give the university clear title via a vesting statute argument (I’m still a big no on that one) but it does give an avenue where the case is still on, with new instructions for the CAFC, all without arguing a deficiency in Bayh-Dole. Continue reading

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Thanksgiving

With this holiday in America being a time for giving thanks after the harvest and for the establishment of a constitutional government devoted to safety and happiness, making it a truly economic celebration built on a recognition of the good that may come from social collaboration in tune with the great seasons of our environment, it’s good to say thank-you to all the research investigators for their work to discover and invent, to develop and evaluate, to explore, examine, record, fiddle, futz, noodle, dig, and chew their way through the stuff of this world to get at the new, the true, and the tested.

And thank-you, too, to all the folks who collaborate in this environment to help to get work out, to create projects and develop intellectual property, and form businesses and relationships with businesses, and advocate and evangelize, and challenge and question, and coordinate, and even those who say, no, not now, not that way. Continue reading

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How is a Subject Invention perhaps like a Work For Hire?

Bayh-Dole defines a subject invention at 35 USC 201(e) (and repeated in the implementing regulations at 37 CFR 401.2(d)) as

any invention of a contractor conceived or first actually reduced to practice in the performance of work under a funding agreement.

We have questions.  Let’s start with this one: is a subject invention something like a work made for hire in copyright law?  We are not talking about “invent for hire” — be still my AUTM “Bayh-Dole is a vesting law” friends. There are reasons why *vesting can’t happen*. But we can ask, does the definition of subject invention stick regardless of other matters? Continue reading

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The Bitter Irony of Vesting

As you might have noticed if you have followed the development of my discussions on this blog, I have spent much time working through Bayh-Dole, often in association with the Stanford v. Roche case.  As I’ve pointed out, I am much more concerned with how Bayh-Dole is represented in that case than I am with the particular outcomes.

AUTM in particular–and, by that, really, I mean certain people who have chosen to use AUTM as a front for their interests–argues that Bayh-Dole is a vesting statute, that it assigns invention title to host universities as inventions are made, and it is up to universities to follow an apparatus of formalities to keep that title or send on.  The reading of the law that supports this position is more a distortion than anything. Continue reading

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For every scenario, other scenarios

AUTM imagines faculty researchers messing around with patent obligations and creating a situation where no one has undivided ownership of a research invention.  To AUTM, this is horrifying.  How can one make money  exclusively licensing to monopolists to make a pile of money if you don’t have the entire title?  Their answer: Continue reading

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IP in 3DP

There are a couple of articles out now looking at IP in 3d printing.  For the UK, see this article by Simon Bradshaw, Adrian Bowyer, and Patrick Haufe, and for the US, this white paper by Michael Weinberg.   These articles are a good start.

One thing I noticed in these articles is an implicit assumption that IP is or will be a problem for 3D printer users, as if IP is generally a bad thing.   I’m not persuaded that is the best way to come at this stuff, though it is always worth being prepared.

IP is also a cultural innovation.  In its various forms–patent, copyright, and trademark, especially–IP establishes some ground rules for competitive interactions between organizations–to exclude, to include, to trade, to make clear one’s contributions, and to develop standards.   The bit about excluding can be taken too far.  A lot of other things also go on, and one of the best ways not to be excluded is to have some good IP of one’s own and work a deal, such as cross-license, which shifts the basis on which competition might take place–if not IP, then perhaps brand, price, efficiency, quality of goods, availability, features, and effective deals in value chains.

Cross-licensing also is one way of creating a commons.  There are other ways.  Open source licensing is copyright-based and also creates a commons.   Standards also may create a commons, and IP figures as a way to get a seat at the table as much as anything else.  In some ways, IP can define where the table is.

What we need now are some creative ways of looking at the development of standards, of markets, of cross-licensing, and extensions of open strategies that create opportunities for everyone, including companies.   For this, we need to look at IP in the development of 3d printers, composition of materials, post-printing processing, and management of control files and metadata.   And we need to look to IP as a source for developing opportunities, attracting investment, building collaborations, and creating critical mass in new markets.

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A Patent License in the DFARS

With all the talk about template patent licenses these days, I thought it might be worth pointing out that in the DFARS there is a template patent license that the Government expects when obtaining patent rights.  You can find it at DFARS 252.227-7012.   It consists of 10 articles, each with a clause from the DFARs or FARs, with some alternates.   Guidance regarding what goes into each article is also available at DFARS 227.70.   Pretty straight.

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Minimum Policy, Phase 2

[This is a pre-Stanford v Roche discussion. I have updated it for current CFR references. A contractor does not “elect title”–a contractor may “elect to retain title” that the contractor has obtained by conventional means. A contractor’s option under a patent rights clause to elect to retain ownership relative to a request from a federal agency for title is distinct from the means by which an inventor disposes of title through a negotiated assignment or patent agreement.

The discussion lacks an account of the standard patent rights clause (f)(2) written agreement requirement. A prime contractor must require certain employees to make a written agreement to, among other things, establish the government’s rights in subject inventions. A subject invention is a patentable invention made in the performance of work under a federal funding agreement and which is owned by a party to that agreement.

Contractor is defined as any party to funding agreement. An initial or prime contractor may create additional contractors by assignment, substitution of parties, and subcontract. The (f)(2) requirement requires prime contractors to make their technical employees parties to each funding agreement for specific, invention-related actions they perform in their personal capacity. The prime contractor then makes its employees become contractors, and when those employees invent under a funding agreement and own their inventions as a matter of federal patent law, then their inventions are also subject inventions. The patent rights clause that controls these subject inventions initially, however, is 37 CFR 401.9, the inventor patent rights clause, not 37 CFR 401.14, the standard patent rights clause.

Bayh-Dole is part of federal patent law. In federal patent law, invention ownership passes through inventors. Bayh-Dole does not change this. The Supreme Court was clear that Bayh-Dole provides no special privilege by which a prime contractor can take subject inventions owned by the inventor-contractors. See the standard patent rights clause paragraph (g) for the analogous situation in subcontracting.]

The first goal of an IP policy implementing Bayh-Dole is to meet the minimum obligations.  Note, one does not even have to elect to retain title–37 CFR 401.14(d) takes care of that in the case of default by the contractor. But let’s say that in phase 2 of an IP policy build-out, one wants to create the apparatus for notice of election to retain title. This would seem reasonably simple–but there’s more to it than that. Continue reading

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Two paths you can go by

One can read Bayh-Dole to be a means of stripping university research personnel of their invention rights.  This is the tornado view of Bayh-Dole.  Wherever there is federal funding to universities, because Bayh-Dole says the university may elect to retain title title, this means that when the university elects to do this, it actually gets title, sucked out of whatever other commitments anyone in the little towns below might otherwise have.  They should know this, and not make commitments that they would regret later–perhaps years later.

If one is intent on getting title and one routinely gets federal funding, then the tornado view makes a lot of sense, and one reads the law looking for those bits that wind up the tornado. Continue reading

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