University Patent Administrators Aim to Ruin Bayh-Dole

Bayh-Dole is a law directed at federal agency research contracting with universities, other nonprofits, and small businesses. Bayh-Dole makes uniform agency procurement of subject inventions-inventions made with federal support and falling within the definition of subject invention in Bayh-Dole-requiring agencies to use a standard patent rights clause in funding agreements, with any modifications of this clause following an established protocol.

University patent administrators have distorted Bayh-Dole to make it read as an entitlement under which university administrations obtain title outright to federally supported inventions made by research faculty. No assignment necessary. No protections for inventors required. Thereby creating the only general class of inventors in America who do not own title to their inventions, as required by the US Constitution. This is nonsense, bad innovation policy, and bad university governance. But it’s more. It shows that many leading university patent administrators do not have a working knowledge of the law that frames their livelihood. And they intend now to kill Bayh-Dole off. Bayh-Dole, rather than reading as vesting statute, instructs government agencies to leave universities alone, establishing the minimum obligations a university as contractor must undertake, as well as the conditions under which the university must agree to operate if it seeks to obtain title to inventions made with federal support by its employees.

In this, Bayh-Dole is a law of agreements. It stipulates the contracting clauses that agencies may use. Its actions affect universities through the standard patent rights clause or a permitted variation. For universities, Bayh-Dole is a matter of agreements not statutes. The only parts of Bayh-Dole that universities see is through agreements and communications with agencies. Universities agree to the standard patent contract clause or a variant. They make agreements with their employees. They may make agreements with other organizations, by way of licenses, assignments, subcontracts, and substitution of parties. They don’t have to agree with the law because the law does not apply to them. The law applies to federal agencies.

The federal agencies have no authority under the law to reach through to obtain title to inventions from faculty inventors using federal funds. Whatever an agency may obtain is by means of the patent rights clause that the agency uses in any given funding agreement. Similarly, universities have no benefit from the law directly. We repeat: the law does not apply to universities. It applies to agency contracting. Once a university accepts a funding agreement with a federal agency, the university then agrees to the conditions of the patent rights clause in that funding agreement. It could be the standard patent rights clause, or it could be an approved variation. Whatever the conditions, they become effective for a contracting university by means of federal agreement, not by federal law.