Research Enterprise

Patentdocs has a useful discussion of Stanford v. Roche, covering the key elements of the case and the history of decisions up to November of last year.   At the end, Kevin Noonan makes an effort to get at why there is this dispute.  Here is the bit I want to discuss (my bold):

While the outcome is not surprising and indeed is consistent with well-established patent law principles, wherein rights to an invention arise first in the inventor and can be freely alienated by the inventor (absent any agreement, such as an employment agreement, to the contrary), it is clear that this outcome is contrary in spirit to the intent of the Bayh-Dole regime.

What is the “spirit of the Bayh-Dole regime”?  And why is spirit being invoked to deal with law, even after agreeing that the court followed well established principles of law?   Does spirit trump principles?  This is important.   In addition, we need to look for where this spirit resides.  Is it in the law, or is it in a group of interpreters of the law?

I am not going to try to be brief here.  Don’t keep reading if you want a short bit.  Maybe later.   Continue reading →

I want to discuss a relatively obscure bit of Bayh-Dole. It is found in section (e) of the standard patent rights clause, our old friend at 37 CFR 401.14(a), with my bold for emphasis:

(1) The contractor will retain a nonexclusive royalty-free license throughout the world in each subject invention to which the Government obtains title, except if the contractor fails to disclose the invention within the times specified in (c), above. The contractor’s license extends to its domestic subsidiary and affiliates, if any, within the corporate structure of which the contractor is a party and includes the right to grant sublicenses of the same scope to the extent the contractor was legally obligated to do so at the time the contract was awarded. The license is transferable only with the approval of the Federal agency except when transferred to the sucessor [sic] of that party of the contractor’s business to which the invention pertains.

Section (e) deals with the rights that a university has after the government has obtained title.   Continue reading →

It’s clear that the standard patent rights clause in 37 CFR 401.14(a) does not expect to get all rights to title in inventions made in the course of federally funded research.  The written agreement in (f)(2) concerns itself only with employees of the university, and excludes clerical and non-technical workers.  If a bottle washer co-invents, there is no mechanism required by which the government’s interest is protected.  Or, that person’s invention rights are not part of the government’s interest.   Also excluded is anyone on a fellowship or other educational support.  These folks can be involved in federal research as well, and they are not employees of the university, even if their funds come through the university.

Take it further.  Continue reading →

There are two ways there could be just compensation.  The first form of compensation is the provision of federal funds in support of research proposed by PIs.  It’s their work that the government supports.   Invention rights are deliverables in that funding arrangement.  No one is compelled to propose the work or accept government support.   So there is just compensation, so long as the title to inventions is obligated to the government as part of the deal.  But if title to inventions is committed outright to *the university*, then we have to find another source of just compensation.  Continue reading →

If  Bayh-Dole is a vesting statute, then it appears to be unconstitutional under the 5th Amendment. At the time of compulsory acquisition of title to inventions for public use, there’s no  just compensation. But hooray I think Bayh-Dole is constitutional, and that the vesting statute argument is very wrong. It will be exciting to see.

Even if things are relatively hunky dory with Bayh-Dole, there still is an open question about just compensation, depending on how public universities in particular have implemented their practice under Bayh-Dole’s standard patent rights clause. It could be at this point that AUTM cannot get out of this any way they turn. Continue reading →