Research Enterprise

I have been working through Bayh-Dole.  You may have noticed.   The question that comes up is how does title to subject inventions get from the inventors to universities?   There are three possibilities.

1) universities rely on their own patent agreements with employees

2) universities rely on the same (f)(2) written agreement that protects the government’s interest

3) Bayh-Dole automagically moves title around as needed

I’ve argued that 3) is unconstitutional because there is no just compensation for the taking of the property, just an obligation to share royalties–but no obligation to create royalties and no assurance that those royalties will reflect just compensation.  Continue reading →

I promised one more angle on Stanford v. Roche.  Here it is.  Read on, if you must.   What happens if AUTM’s cruel world argument prevails?  Let’s say the Supreme Court goes, why yes, Bayh-Dole *is* a vesting statute.  Is that the end of it?

I want to explore this, not so much because I think this will come into play, but because it highlights one of the brilliant bits of Bayh-Dole, which is pretty much overlooked.  It has to do with the mechanism by which inventors give up title to their inventions, and in that way might have something to do with how things end up with S v. R.

I’ve aimed to show that Bayh-Dole is a law of federal agreements dealing with rights to inventions as deliverables to the government.   Bayh-Dole requires agencies to make their conditions on deliverables of inventions uniform, varying only with cause.   The conditions that agencies require in funding agreements have the feel of contractual agreements, promises in exchange for federal support but with a federal flavor.   In turn, universities in accepting the support on behalf of PIs, are required by the standard patent rights clause to require written agreements of what we call the research employees, but not others.  It is by means of these written agreements that the government obtains the invention rights deliverables that it bargains for in funding the work. Continue reading →

What are some possible outcomes of Stanford v. Roche?  We will start out simple.  Then we will go into the darkness with a flickering candle.

1. AUTM is right and Bayh-Dole is a vesting statute.  Urk, cruel world.

2. The SG is right, and Bayh-Dole voids scope of all outstanding contracts pertaining to transfer of title upon participation in subsequent federally funded research.  End of private contracting for future inventions. Continue reading →

I was looking at the AUTM Practice Manual the other day.  The part about Bayh-Dole, written by a WARF attorney.  Funny, it argues that a university had better have an invention assignment policy to ensure that it can comply with Bayh-Dole.  And here we have both WARF and AUTM arguing now that that’s all bunk because title is automagically with the university when its employees make a subject invention.

I don’t get it.  At least AUTM should revise its manual before it hops off to the Supreme Court, ears flapping in the breeze.  Better, apologize for such poorly conceived amicus briefs and withdraw them.

But I am not persuaded either AUTM document has it right, though the practice manual is a lot closer to it.   Continue reading →

Under the standard patent rights clause in Bayh-Dole (37 CFR 401.14(a)), a university taking title to subject inventions is restricted in its use of royalty income under section (k)(2) and (k)(3):

(2) The contractor will share royalties collected on a subject invention with the inventor, including Federal employee co-inventors (when the agency deems it appropriate) when the subject invention is assigned in accordance with 35 U.S.C. 202(e) and 37 CFR 401.10;

(3) The balance of any royalties or income earned by the contractor with respect to subject inventions, after payment of expenses (including payments to inventors) incidential [sic] to the administration of subject inventions, will be utilized for the support of scientific research or education;…

First, the university must share royalties with the inventor under (k)(2).    Under (k)(3), the university can subtract “expenses incidental to the administration of subject inventions”.   These expenses include payments to inventors.  Anything money remaining is to be used for “scientific research or education”.

Let’s note some things.  Continue reading →

When an invention is made, title to the invention—essentially the standing to file a patent application and have a patent issue in your name—is with the inventors.  Under the Patent Act, for that title to shift to anyone else, the inventor has to assign title in writing.  Bayh-Dole sets it up that the funding agency can request title to any subject invention, unless the university acts in certain ways to elect to receive that title instead of the government, subject to obligations to the government to meet public objectives.  That’s what “retaining title” means in Bayh-Dole:  obtain title from one’s own employee inventors under the invention title acquisition conditions implemented under the federal award under which the invention was made.

That title to subject inventions is never “clear” of obligations.  Continue reading →

Yippee!  It’s Bayh-Dole review time!  That’s right, let’s reset what Bayh-Dole is, reminding ourselves of what’s written in the law, how it operates, and what that teaches us about federal policy on research innovation. Continue reading →