Research Enterprise

What’s funny (funny “strange” not funny “funny”) is that universities could implement the core of this version of the law themselves, right now, no politics necessary. Yes, there is still all the wasted paperwork to throw around under the current Bayh-Dole Act, but other than that, there’s is still the 35 USC 202(d) to 37 CFR 401.9 pathway that allows inventors to own their inventions and have only limited restrictions on what they can do with any patents they obtain.

Universities could work this approach without a whole lot of effort or expense. First, there’s the usual invention reporting overhead. The university gets a report of a subject invention and dutifully passes that along to the federal agency that funded the work. But instead of demanding assignment from the inventor(s), the university sends a notice to the federal agency that the university will not elect to retain title if the federal agency agrees to permit the inventors to retain title (which they still have at this point), subject only to the standard patent rights clause at 37 CFR 401.9.

That clause reads:

Agencies which allow an employee/inventor of the contractor to retain rights to a subject invention made under a funding agreement with a small business firm or nonprofit organization contractor, as authorized by 35 U.S.C. 202(d), will impose upon the inventor at least those conditions that would apply to a small business firm contractor under paragraphs (d)(1) and (3); (f)(4); (h); (i); and (j) of the clause at § 401.14(a).

Let’s unwrap the requirements: Continue reading →

In Part 1, I proposed a new law governing federal patent policy for public interest research conducted at universities–research to advance science and technology, or to address matters of public welfare. That new law carried with it public covenants that ran with each patent on a subject invention, created commons for research and public use, and limited exclusive licensing in ways imagined by the original Bayh-Dole but amended away by the conniving forces of university bureaucrats with power lust and no desire for accountability. But all of this is predicated on the policy position that the federal patent system on its own is inadequate to meet the needs of advancing science and technology and all that, and so there has to be a second set of requirements falling on all patents made in public interest research at universities.

That has been federal policy since 1947, at least. The Kennedy patent policy expanded it. The Institutional Patent Agreements bowed to it at least (while doing their end-run). Bayh-Dole incorporates it (though walks it back everywhere it can, and where it can’t walk it back, it gets amended away a few years later, and in the meantime, everyone misrepresents the law and ignores compliance so that when amendments are proposed they appear to track “best practice” and therefore are only “clarifications.” Right NIST?) Just “clarifying” that (f)(2) requirement in the regulations to make sure that Bayh-Dole “requires” assignment when the law does nothing of the sort and the Supreme Court was crystal clear on the point. But will anyone at NIST care?

So the law proposed in Part 1 captures the social requirements that attend to a patent law “tuned” to the expectations of public science, public technology, and public interest research. Continue reading →