Federal agency patent enforcement under Bayh-Dole, 4

Posted on June 9, 2020 by Gerald Barnett

We are working through the contention that Bayh-Dole does not authorize federal agencies to enforce patents on federally owned inventions. It’s clear that there is no such authorization in Bayh-Dole, though the law authorizes everything else–getting patents, licensing patents, administrating patents, transferring patents between agencies. Bayh-Dole intends uniform federal patent practice, both for disposition of inventions in federal contracting and for disposition of inventions acquired by federal agencies. There’s an authorization for regulations for each aspect, at 35 USC 206 (contracting) and 35 USC 208 (licensing). Bayh-Dole expressly takes precedence over any prior Acts that dealt with subject inventions–inventions acquired by contractors and made under federal contract. Bayh-Dole does not expressly take precedence over any prior Acts that dealt with federally owned inventions because there were none. Bayh-Dole, however, does set up as the authority under which federal agencies are authorized to dispose of federally owned inventions. And federal enforcement of patents is not authorized.

There are exceptions. We have noted the TVA freedom to do its own thing. Also, Bayh-Dole expressly does not take precedence over Stevenson-Wydler, which authorizes federal agencies to engage in cooperative research, license and assign inventions, and handle royalties–but only in the context of cooperative research and development agreements, and there only with regard to subject inventions–patentable inventions of a contractor, patentable inventions made under a CRADA contract and acquired by a CRADA contractor. But Stevenson-Wydler has some things to teach us. We go down that rabbit hole now. Continue reading →

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Repeal 35 USC 207 and 209, barriers to public use of federally owned inventions

Posted on June 8, 2020 by Gerald Barnett

Bayh-Dole does not authorize federal agencies to enforce patents on federally owned inventions.

Federal agencies

do not need patent enforcement for non-exclusive licensing.

give up enforcement in exclusive licensing.

Federal exclusive licensing

is ineffectual and disrupts rather than promotes public access.

undermines public confidence in agency policies and actions.

Time to end this ineffectual, corrupting, disruptive bureaucratic practice.

Repeal 35 USC 207 and 209. Continue reading →

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Time for an executive order to bring federal agencies into compliance with Bayh-Dole

Posted on June 8, 2020 by Gerald Barnett

Bayh-Dole precludes federal enforcement of federally owned patents.

The president should issue an executive order confirming this situation by forbidding federal agencies to enforce patent rights covering federally owned patents. Doing so would remove a huge barrier to public utilization of inventions made in federally supported work. At a time when regulations should come down to spur economic recovery, this one is easy. No legislation required. No studies. No need for input from patent monopolists. Just prohibit federal agencies from suing for infringement. They don’t have Congressional authorization to sue anyway, so require them to do the right thing and drop the pretense that they can enforce patent rights.

The argument is as simple as it is seemingly outrageous. Congress has those rights enumerated in the Constitution, one of which is the power to reserve to inventors for limited times exclusive rights to their discoveries. That’s the foundation for the federal patent system. Congress has the power to, and has, created patent law by which inventors may obtain the legal right to bring a civil action against infringers of their patents on claimed inventions.

Patents have the attributes of personal property (35 USC 261), but subject to the provisions of federal patent law. For ordinary patents, those provisions are the usual things, including the right to bring a civil action (35 USC 281) to obtain an injunction to stop infringement (35 USC 283) and to receive compensation for damages (35 USC 284). Continue reading →

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The point at which federal patent policy in 1971 broke from public interest

Posted on June 8, 2020 by Gerald Barnett

Here’s the point at which federal patent policy broke from the public interest. In 1971, President Nixon revised the Kennedy patent policy. One of the revisions was to the federal disposition of inventions. Here’s Kennedy:

Government-owned patents shall be made available and the technological advances covered thereby brought into being in the shortest time possible through dedication or licensing and shall be listed in official government publications or otherwise.

If the government obtains a patent, then it must see that the claimed inventions are “brought into being”–achieve practical application–in the shortest time possible. How? By dedication (i.e., disclaiming enforcement) or licensing (i.e., asserting the right to enforce in order to obtain agreement on licensing terms and conditions).

The Kennedy policy required as one of its defaults that when an invention was made in research directed at public health, the government should obtain ownership. When the government obtained ownership, it would make the invention available to all–including the contractor, the inventors, the research team, and anyone else. A federal contractor could make a case for its ownership of the invention when that ownership would better serve the public interest. But the contractor had to make a persuasive case, and a federal agency then had to act to release the federal claim. Continue reading →

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Federal agency patent enforcement under Bayh-Dole, 3

Posted on June 8, 2020 by Gerald Barnett

I have made the claim that Bayh-Dole nowhere expressly authorizes federal agencies to enforce patents on federally owned inventions. There’s no express authorization for federal agencies to enforce patent rights. But perhaps there’s an implied right for the government to issue patents to itself and thus give itself a power to exclude all others from the practice of an invention when the government did not have that right before the patent.

Let’s look at the provision of Bayh-Dole that could be used to get close to such an authorization. 35 USC 207(a)(3) authorizes federal agencies to:

(3) undertake all other suitable and necessary steps to protect and administer rights to federally owned inventions on behalf of the Federal Government either directly or through contract, including acquiring rights for and administering royalties to the Federal Government in any invention, but only to the extent the party from whom the rights are acquired voluntarily enters into the transaction, to facilitate the licensing of a federally owned invention;

You might say, “this is a catch-all clause authorizing anything else that possibly might be done with patents, and so necessarily must include suing citizens for using them.” It’s not that easy. Continue reading →

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Federal agency patent enforcement under Bayh-Dole, 2

Posted on June 7, 2020 by Gerald Barnett

We are working through two assertions about Bayh-Dole. The first is rather easy–Bayh-Dole does not anywhere give federal agencies the right to enforce patents on federally owned inventions. It’s not there. It’s not a matter of much argument.

The second is that Bayh-Dole is the sole authority governing the disposition of patents on federally owned inventions. There is no other authority. Bayh-Dole is part of federal patent law–so one cannot even look to federal patent law and say–“Patentees have a right to enforce patents by means of a civil action. The government is a patentee.” Bayh-Dole changes this right. It’s a big deal. Bayh-Dole is the sole authority for the enforcement rights that federal agencies have in the patents they hold–that the government has issued to itself or had assigned to itself. There is no other authority under which federal agencies have the ordinary rights of a patent holder to sue for infringement–either for injunctive relief (stop the practice of an invention) or for compensation (“damages”).

There are then consequences that directly affect how federal agencies may license or assign patent rights under Bayh-Dole. Those consequences also may seem outrageous. But they aren’t. They are cool. Congress intended cool.

Continue reading →

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Federal agency patent enforcement under Bayh-Dole, 1

Posted on June 5, 2020 by Gerald Barnett

This may appear to be an outrageous claim, but it isn’t.

Bayh-Dole does not authorize federal agencies to enforce patents held by the federal government.

That much is not outrageous because there is nothing in Bayh-Dole that authorizes such enforcement. You can go look. You won’t find anything. But there’s more.

There’s nothing other than Bayh-Dole that gives the federal government authority to enforce patents that it holds.

That’s outrageous! Ah, you say, federal patent law–35 USC 281–remedies!

A patentee shall have remedy by civil action for infringement of his patent.

And a patentee is defined 35 USC 100(d):

The word “patentee” includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.

It seems obvious that the federal government, when it takes assignment of inventions from inventors or from contractors becomes a patentee and has “remedy by civil action” for infringement. The federal government has the right to enforce the patent. Over! Done! QED! There’s glory for you!

If you reason this way, it is easy to see my claim as outrageous, and silly, and unproductive, and  not worth a single moment of precious time. Continue reading →

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Bayh-Dole precludes enforcement of federal patents

Posted on June 4, 2020 by Gerald Barnett

An argument regarding enforcement of federally owned inventions. Bluntly:

the federal government lacks the authority to enforce patents, and

the federal government should not enforce patents, and

federal dealing in patent monopolies does not work.

Let’s expand the argument to show what we are dealing with:

(i) the federal government may own inventions

(ii) the federal government may use the patent system to obtain patents

but

(iii) the federal government does not have authority to enforce patents

and that’s relieving, because

(iv) it is bad public policy with bad outcomes for the federal government

to attempt to enforce federal patents or

to assign patents it owns to non-federal entities to be enforced

and

(v) the very limited situations in which enforcement of federal patents might benefit the public may be addressed through other means.

Let’s work through these points. Continue reading →

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Madison on the patent clause–and Young Frankenstein

Posted on May 31, 2020 by Gerald Barnett

James Madison, writing in the Federalist (43), discusses the Constitution’s patent clause. The discussion is brief, so here it is, with comments:

A power “to promote the progress of science and useful arts, by securing, for a limited time, to authors and inventors, the exclusive right to their respective writings and discoveries.

That’s the Constitutional clause. Here’s Madison’s comment:

”The utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged, in Great Britain, to be a right of common law.

In making this observation, Madison sets up inventions:

The right to useful inventions seems with equal reason to belong to the inventors.

Historically, patents were always granted by government, and those grants were based on favoritism, whim, expediency–pretty much anything but the fact that someone had invented and ought to have a government-sanctioned privilege for having done so. For instance, early patents were used by city states to lure away anyone willing and able to steal trade secrets of a guild in a rival city. One need not be the inventor–just good enough to be able to practice the craft and teach others how to practice the craft–ordinary skill in the art and all–in exchange for a patent monopoly. Restricting patents to inventors is significant.

Continue reading →

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Can federal agencies enforce patents on federally owned inventions?

Posted on May 29, 2020 by Gerald Barnett

Something outlandish.

Bayh-Dole does not authorize federal agencies to enforce patents on federally owned inventions. Go look. I’ll wait.

Patents on federally owned inventions are not ordinary patents. Bayh-Dole is part of federal patent law, Chapter 18 0f Title 35. Patent law stipulates that patents have the attributes of personal property, subject to the provisions of the law. 35 USC 261. For federally owned patents, Bayh-Dole applies and alters the property rights available in federally owned patents.

Bayh-Dole stipulates that for any invention arising from federally supported research or development–including, therefore, federally owned inventions–that the patent system is to be used to promote the utilization of inventions. 35 USC 200. Property rights in federally owned patents are bounded by this requirement. The codification of federal agency licensing requirements reaffirms that promoting the utilization of inventions is the primary objective of Bayh-Dole. 37 CFR 404.2. This is a working requirement. Federally owned patents are not ordinary patents. No one can reason from what the ordinary patent allows. One has to start with the abbynormal patent system as created by Bayh-Dole. Continue reading →

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