University Patent Administrators Aim to Ruin Bayh-Dole

There is a third class of ways of managing subject inventions. A university may elect to retain title, but may choose to assign its interest in that title, and its obligations under the SPRC, to another organization. This matter is addressed in SPRC (k)(1). A university may assign its interest at any time, prospectively or after having elected to retain title, or after having obtained assignment of title under (f)(2). The only limitation in that assignment is that the receiving organization must have a primary function in the management of inventions (note: the SPRC does not say patents); if not, then the agency must approve the assignment.

Under this third class of management, a university may never own title to the subject invention for which it elects to retain title. A university may assign its interest, for instance, to an affiliated research foundation, and direct its inventors to make their assignment to the new assignee. The research foundation obtains the benefit, then, of the (f)(2) agreement, and may receive the assignment of the invention, and direct the inventors in any other matters subject to their (f)(2) agreement. Assignment is not limited, however, to affiliated research foundations. A university may assign to a national invention management organization such as Research Corporation, or may assign to a for-profit company, such as Intellectual Ventures, so long as the company meets the requirements of (k)(1) and has as one of its primary functions the management of inventions.

It is this third class of management that opens up the inspired qualities of Bayh-Dole. Rather than treated each subject invention as an employer’s right to profit, Bayh-Dole proposes a much broader treatment of inventions than the typical corporate model of holding onto all inventions as assets for later use. Bayh-Dole says, we are leaving it open how universities manage subject inventions. They can opt out (first class), they can build their own operations (second class), or they can work with other organizations and not try to do it all themselves, with minimal overhead (third class). Any effort to make Bayh-Dole a vesting statute is also an attack on this third class of alternative invention management. It might be expectable that university patent administrators, desperate to preserve their jobs and not face any possible competing interests, would seek to make out a federal law as an entitlement to their approach, excluding others.

Of course they do not want to consider any alternatives. It makes perfect sense why they would take the Stanford v. Roche case to the Supreme Court. They want the Court to tell them that their approach is not only the best, but is a requirement of federal law. They want the Court to restrict Bayh-Dole to ensure their employment and status. There is not much more to it than this. One can give them an A+ for moxy to preserve their jobs, but what they are doing makes for lousy innovation policy and turns Bayh-Dole into a rather dull, restrictive, and necessarily obsolete implementation of federal research and innovation policy.