University Patent Administrators Aim to Ruin Bayh-Dole

If Bayh-Dole does not dictate the disposition of invention title directly, how then does the government get its rights? Bayh-Dole authorizes the Department of Commerce to create standard patent rights clauses for use by federal agencies. There are two of them, set out in 37 CFR 401.14. We deal with the Standard Patent Rights Clause directed at most university activity, the one given in section (a). We will call it the SPRC, for short.

The SPRC tracks nearly everywhere the text of Bayh-Dole, as one would expect. However, it adds some additional requirements not in Bayh-Dole. The most important of these is SPRC (f)(2). Section (f) of the SPRC concerns “Contractor Action to Protect the Government’s Interest”. Under (f), a university is required to educate employees on timely reporting of inventions and to require written agreements of employees other than clerical and non-technical employees, to protect the government’s interests. These written agreements are required by the SPRC of the university. It is up to the university to obtain these written agreements from its employees, as a condition of the SPRC.

What are the obligations of employees under the (f)(2) agreement? They agree to report inventions timely and in sufficient detail to permit the university to meet its obligations to report inventions to the government. They agree to sign paperwork to permit patent applications to be filed—without any designation of who might be filing the application or who might be an assignee of title to the invention. They agree to sign paperwork to establish the government’s rights in their inventions.

It is important to point out that the SPRC makes obtaining the (f)(2) agreement and its requirements a condition of funding. These are not requirements of law imposed directly on universities. These are not conditions of university employment. The SPRC mandates an *agreement* by the employees, at the time a given funding agreement is accepted by the university. There is no point in making an apparatus enabled by university agreement for something that is otherwise imposed by federal law. One does that to provide an express basis for canceling the agreement upon breach, not to make something happen that must happen anyway by law. The SPRC is not merely a recitation of Bayh-Dole in some ceremonial form for the benefit of extra administrative paperwork. Bayh-Dole does not apply to universities. It applies to federal agencies. It is only through the SPRC that its conditions extend to universities, and it is only through the SPRC’s (f)(2) agreement that its conditions extend to university employees.