Bayh-Dole Government License–1: Practice or Have Practiced

NIST published a Green Paper that evidences its confusion with various aspects of Bayh-Dole. One of these areas of confusion involves the government license that Bayh-Dole requires in all federal research contracts, and in particular in the standard patent rights clause for nonprofits and small business contractors. At the 2020 AUTM national conference, Fuentek hosted a session on the topic of the government license and has posted a “webinar” of their session, “Government Use of Federally Funded IP: Not as Simple as You Think.” The session is worth the listen because it gives a good insight into the level of thinking taking place in university and government settings with regard to Bayh-Dole, the use of the patent system, and the quality of licensing. The webinar is presently here. And the slides are here. The NIST Green Paper is here.

Let’s start by looking at Bayh-Dole and get clear on things. It’s not that difficult. The government license is to make, use, and sell, and have others do so as well for the government. The license operates without formalities whenever a contractor elects to retain title. The license extends to any federal agreements with other countries if the funding agreement so provides. Continue reading

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Follow up: What if a university fails to patent under Bayh-Dole?

If a university fails to patent under Bayh-Dole, nothing ever happens. But that’s not even the meaningful answer. Look, even if a university gets a patent on a subject invention–one arising from federally sponsored research or development–there’s absolutely nothing in Bayh-Dole that requires a university to license each subject invention, license timely, or if it does license the invention, to license exclusively.

The lack of such requirements are utter failings–fatal defects in the law. It’s beyond comprehension that we have tolerated gibberish about how wonderful the law is. It’s a hot mess of drafting ignorance and incompetence. Beyond that, it doesn’t work. It has never worked, like the IPA program before it didn’t work. It has never fully operated, never been complied with, never enforced (but for one instance of federal bullying of a small company over the failure to put a patent disclosure in the form of a written report rather than as a patent application).

Well, the paper-pushing parts of Bayh-Dole have been enforced–the stuff that has absolutely nothing to do with promoting use of inventions, free competition, or US manufacturing–while all the substantive parts are ignored, waived, or hopelessly bungled. So even if somehow one hoped that the hot mess of drafting incompetence worked brilliantly despite all its failings–it doesn’t. Only if you are a gourmand of fake history, fake law, and fake metrics would you swallow the idea that Bayh-Dole has any merit whatsoever. Continue reading

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Q. What if a university fails to patent under Bayh-Dole? A. Heaven!

Here’s a new query on RE: “What if the university fails to patent under Bayh-Dole?”

Answer: Nothing ever happens.

Okay, let’s take more time with this question. First, let’s be clear. Under Bayh-Dole, universities have no obligation to use the patent system for inventions arising in federally supported research or development. Bayh-Dole does not require universities to take ownership of inventions arising in federally supported research or development or to use the patent system, even if they do. Furthermore, nothing in Bayh-Dole vests ownership of such inventions with contractors or mandates that they take ownership or encourages them to take ownership or implies that it is better if they do take ownership. See Stanford v Roche (2011).

Under 35 USC 202(a), a federal contractor, if it acquires a patentable invention arising in federally supported research or development has the right to elect to retain title in that invention relative to any statute that would require otherwise. 35 USC 210(a) sets out this preemption. If the contractor does not acquire title, then Bayh-Dole does not operate. Other statutes might operate, but not Bayh-Dole. In practice, because the other statutes are largely forgotten,

nothing ever happens. Continue reading

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Patents in Space-4

Famiya Masood, a columnist for a Pakistani newspaper, argues in a recent article that government-funded research at universities in Pakistan is not “translating into inventions that can be eventually patented.” Masood seems to believe that this is not a good thing and the government should do something about it. It is one thing to argue that a national patent system provides inventors with an incentive to invent–perhaps–but it is quite another to set about to force, as it were, researchers to invent, and to patent their inventions. That’s an incentive more of the form of an offer one cannot refuse.

If a public purpose of research is to create patentable inventions, then one might do well to focus on areas of engineering and chemistry where it is relatively easy to produce inventions. Any decent engineering or chemistry research team can produce twenty or thirty inventions a year. It’s just that there may be hundreds of similar teams all over the world doing the same thing in roughly the same area. What’s the effect? Cumulative technology is fragmented into tiny bits of ownership claim. Every variation and application and method to produce gets claimed up in competing ways by different organizations, all committed to finding exclusive licensees to mass produce something based on their little bit. If only one patent is needed, then perhaps things go well. But if twenty or fifty or two hundred patents are needed, and those patent owners all insist on exclusive licenses, and the twenty universities involved all start their own companies so they can brag about their exclusive licenses as innovation and economic development, then it is impossible to use, let alone, mass produce anything without infringing some right somewhere. Instead of creating better conditions for innovation–or for mass production–this idea of the patent monopoly in research creates much worse conditions. Continue reading

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Patents in Space-3

We are working through an article by Famiya Masood published March 11, 2020 in The Nation, a Pakistan newspaper. Masood takes up an important issue–how to make Pakistani research supported by the government more productive for things that people are thought to want from it. Masood focuses on what she takes to be the problem that Pakistani research “hardly ever translates into inventions that are eventually patented.”

Perhaps it is difficult to see why the public would care whether research produces inventions or that the inventions are patented. The implicit argument goes something like this: without patents there can be no commercialization, and without commercialization the public does not get the benefit of the research. Buried in this implicit argument is the idea that the primary public benefit of university research should be direct commercialization of the results and not, say, new knowledge that helps anyone, including those with commercialization thoughts, or training students to think clearly about the world and its unknowns using repeatable experiment as one means of doing so, or new working standards so that whatever does get developed works consistently across manufacturers, products, and interfaces. Or that a desirable result of research might be better research (better understandings, better research tools) or clearer choices among existing alternatives (better testing) or results that people can use immediately without having to bother with expensive, high-risk (meaning uncertain, not validated) “development.” Continue reading

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Patents in Space-2

Famiya Masood, a columnist for The Nation, an English-language Pakistani newspaper and law student at Northwestern University, has published an article that argues that Pakistan needs more patents from its government-funded research. Well, perhaps. But she gets Bayh-Dole wrong on the law and doesn’t consider the effects of the law in the United States. So let’s do some of that for her.

Masood argues that the Higher Education Commission funds university faculty research but that research “hardly ever translates into inventions that are eventually patented.” Is that true? I don’t know. But let’s say it is–that funded research does not result in inventions, and the inventions aren’t patented. Is either thing necessarily bad? There’s an argument that if basic scientific research results in patentable inventions, it isn’t basic enough. That argument misses the point that even basic scientific research relies on the development of new research tools–instrumentation and apparatus and sensors and methods of analysis that may well be inventive. Even so, what’s the point of seeking to exclude others in using new research tools? If a discovery is based on the use of such a tool, then won’t its independent evaluation by other scientists also require the use of that same tool? Or must evaluation by others wait two decades or until someone can design around the tool–making its patent worthless? Continue reading

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Patents in Space-1

The Nation, an English-language Pakistani newspaper, published an article on March 11 by Famiya Masood, “Patents in Pakistan” that argues the government must create incentives for university inventors. That much is interesting. But Masood builds her argument using Bayh-Dole as the example, and there she muddies her argument with misrepresentations of the law. I submitted a comment to The Nation‘s web site, but the moderators promptly rejected it. So I will publish it here and add some more comment that might be helpful for any country’s officials think they ought to copy Bayh-Dole. Short answer: don’t be so foolish.

Here’s Masood, describing Bayh-Dole:

Under the Act, Congress attempted to set the incentives straight by giving property rights in the form of patents to the universities that would ensure there was sufficient interest in using the R&D for the creation of invention.

This account of Bayh-Dole is incorrect. See the Supreme Court case Stanford v Roche (2011). Continue reading

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The Key Provisions of Bayh-Dole–Really Edition

I wrote a long article on the key provisions of Bayh-Dole. That’s all fine and good, but none of those provisions get at how Bayh-Dole has to work. Those key provisions are mostly just bureaucratic fluff. Stuff about being able to keep ownership of an invention if you get ownership, and complying with various administrative demands such as obtaining conforming (f)(2) written agreements that turn inventors into parties to the funding agreement and neat stuff like that. Big whoop.

Sigh. Really, when you get down to it, there are two key provisions in Bayh-Dole that make the law work the way Congress intended, but which have been entirely ignored. These provisions take effect only *after* a contractor has gone full fool and acquired ownership of an invention arising in federally supported research or development. Having got the invention onto its administrative finger, there are two key provisions in Bayh-Dole for how the contractor must behave as it tries to get that invention off. Continue reading

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Would you believe an Air Force hockey puck shooting machine?

Bayh-Dole 40, yet another lobbying front organization to push a fake account of Bayh-Dole, put out a tweet a few days ago:

Bayh-Dole’s impact extends beyond just biopharmaceutical innovations. Check out this new invention in the world of sports made possible thanks to #BayhDole.

The tweet includes a link to a TechLink announcement: “Department of the Air Force: Notice of Intent to Grant Exclusive License to STACC Hockey.”

This is all so strange. Let’s have a look. The invention to be licensed is a mechanical hockey puck shooter.

To be clear, Bayh-Dole did not have anything to do with making this invention “possible.” People invent stuff all the time. There’s no indication that people invent less often in publicly funded research if they think they won’t get a patent monopoly on their discoveries. And even if some researchers thought that way about things, someone should explain why those people would then would stop discovering only when they realized that they would own their inventions, not the organizations that hosted their work on behalf of the federal government. “Gosh, if university administrators don’t step in to take ownership of the results of this public research–and assert a patent monopoly to prevent anyone else from using these results without first paying up–then there’s just no incentive left here for me to discover anything!” No, that’s a nonsense position. Continue reading

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A WIPO Economist Gets Bayh-Dole Wrong

Here’s an article by Mario Cervantes, an economist at OECD, “Academic Patenting: How universities and public research organizations are using their intellectual property to boost research and spur innovation start-ups.” Cervantes claims that universities “protecting their inventions” somehow increases their research funding and startups. It is an economic fantasy. Patenting of inventions does little to attract research funding. The only funding that comes in is from exclusive licensees/assignees as part of transfer deals. Since those deals are rare–a few a year per institution–the research funding from royalties or from direct research sponsorship is a drop, other than a maybe once-every-thirty year windfall. But patenting does deter other companies–the ones that don’t get the exclusive license and thus are denied access to the invention from providing funding of any sort.

Patenting of inventions also fragments cumulative technology and research tools across institutions, especially where government funding has spread around research in a given area. Each institution claims the inventions of its researchers, seeks exclusive licensees, and as a result it is virtually impossible to create commons, standards, and interoperable systems. Given that standard terms in university exclusive licenses poison the opportunity to cross-license or grant royalty-free sublicenses, a university exclusive license actively works against widespread access to a university-hosted invention.

Here’s Cervantes on Bayh-Dole:

Indeed, in 1980, the United States passed what is widely considered landmark legislation, the Bayh-Dole Act,

Continue reading

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