University Patent Administrators Aim to Ruin Bayh-Dole

The second pathway involves the university. The university, when it receives a report of a subject invention from its employees, may elect to retain title to the invention. This means that the university may take actions it has agreed to take in the SPRC or other patent rights clause to which the invention is subject. In essence, the agency upon notice of election to retain title, allows the university to stand in for the inventors and for the agency in the disposition of the invention. To “retain title” does not and cannot mean that the university already got title by means of vesting under Bayh-Dole. It means that the university may retain title on behalf of its inventors, who hold title and otherwise may be obligated to assign title to the government, at the government’s request. To “retain title” means to not be subject to the government’s request for title.

Once a university has elected to retain title by notice to the government, the university then has standing to request assignment of title from its inventors. The university does not have standing under its own policies to do this. It has agreed with the government that the condition under which it obtains title is a condition of the funding agreement, not employment, use of facilities, administrative fiat, or in a quid pro quo for sharing royalties. By agreeing to the SPRC, a university agrees that the basis for obtaining title from its inventors is the act of electing to retain title under the SPRC. That is the condition that supersedes any other statements of condition in the university’s agreements or policies with its inventors. Once a university obtains title, it is then in position to convey to the government rights in the subject invention as it has agreed to do under SPRC sections (b) and (d). The employee’s (f)(2) agreement with regard to the third condition, signing paperwork to establish the government’s interest, is thereby satisfied when title transfers to the university. The obligation to sign paperwork to permit patent applications to be filed remains, but now is subject to the requests of the university rather than the government.

One can see the elegance of the approach. The university needs to have no policy requiring assignment, no present assignment of future inventions as a condition of employment, no policy requiring employees to honor the terms and conditions of extramural research. None of that matters. In fact, it is displaced and superseded when the university agrees to the SPRC for a given funding agreement. It has to be. The university cannot agree to the SPRC and maintain demands contrary to the SPRC with its employees. It is the (f)(2) agreement that provides the government with its interest in subject inventions, and it is also the (f)(2) agreement that provides the university with its interest in subject inventions, subject to its agreement with, and compliance with, the SPRC. Once a university elects to retain title, it then has standing under the SPRC and the (f)(2) agreement to request assignment of title from its inventors. It has this right under the SPRC, and it does not have this right under any other arrangement. This is so because the university has agreed with the government that this is so. It cannot have a secret, fingers crossed, preferential other way of doing things.