University Patent Administrators Aim to Ruin Bayh-Dole

This point cannot be emphasized enough. It is by means of the university’s action to require the (f)(2) agreement in each funding agreement that the government obtains its interest in inventions made with federal support by university employees. First, the university agrees to the SPRC. To do this, the university must release any other claims or policies it imposes on its employees that would be in conflict with the SPRC. The SPRC is part of a federal agreement. It supersedes private contracts and, in the case of public universities, state administrative rules. A university cannot comply with the SPRC and require something different from its own employees. It cannot be two-faced about things. It has agreed with the federal government to behave in certain ways. It cannot then behave contrary to that agreement with its own employees. Under the SPRC, the university is to require employees to agree to protect the government’s interest in three ways: disclose, permit patent applications to be filed, and establish the government’s rights in inventions.

We can now take up how the government obtains its rights from inventors. We may note that there would be absolutely no reason to include this third element in the (f)(2) agreement if universities owned the inventions of their employees outright, as if Bayh-Dole applied directly to everyone, and therefore stripped university employees of title to their inventions the moment these were created. No, one has to gravely misread Bayh-Dole to get to the idea that it applies to inventors. Clearly, it does not. It applies to federal agencies entering into agreements with universities. It requires universities to do certain things, including getting agreements with university employees. Without those agreements, title to invention does not move from the inventors.

There are multiple pathways by which the government obtains its rights in subject inventions. The simplest is that when university employees make a subject invention, the university reports the invention to the government, waives its interest, and the government then may request that the inventors honor their (f)(2) agreement and assign title to the government. The government can also defer receiving assignment, and following 37 CFR 401.9, may allow the inventors to retain title to their inventions.