Posted on January 12, 2011 by Gerry Barnett

I've worked through a lot of things about Bayh-Dole recently, including looking at the various claims coming forward about how Bayh-Dole works in the context of the Stanford v. Roche case. In particular I am interested in the amicus briefs filed by university patent administrators. They have used a range of organizations to front their claims-AUTM, AAU, APLU, and NACUA, among others. These are part and parcel of the same patent administration outlook, and their arguments reflect this common origin.

The common arguments are these.

Bayh-Dole is all about university commercialization of inventions.

It is not. Bayh-Dole is about uniform agency treatment of invention procurement and use of the patent system to promote practical application of federally supported inventions. Commercialization is one form of practical application among others.

Bayh-Dole operates as a vesting statute, making statutory claims on title to invention.

It does not. It operates as a patent rights clause inserted into every federal funding agreement either via the FARs or via Circular A-110. That clause allows for disposition of title in a broad range of ways. A contractor can do nothing, acquire, waive, assign, license, subcontract, or substitute parties. The behavior of the contractor determines its Bayh-Dole obligations and benefits. There is nothing in the law that turns it into a vesting statute.

Bayh-Dole prevents university employees from assigning their invention rights privately.

Nothing of the sort. Bayh-Dole handles invention rights in the normal way. If Bayh-Dole prevented employees from assigning their rights, then they couldn't assign to affiliated research foundations. No-Bayh-Dole allows assignment-the question is what goes with that assignment. It is up to the contractor to secure the assignments that the contractor desires.

Title is cast into uncertainty if the CAFC decision is allowed to stand.

Hardly. It's the other way. If the CAFC is told to turn Bayh-Dole into a vesting statute, then everyone involved with a commitment of invention (and patent) rights is not going to know if that commitment is valid until universities have gotten done getting federal grants and inventing. Not a good thing.

University inventors are greedy, gullible, and dumb and it's too much work to expect university administrators to look out after each and every researcher.

The patent administrators are appealing to the courts to create a law that would narrow their choices and dictate rights. So we can add, what a stagnant view of research innovation. They want Bayh-Dole to create a monoculture of research invention to correct the evils of loathsome inventors. But Bayh-Dole does just the opposite. It is a law about research inventions getting used, not universities making money from monopolist partners; for diversity, not uniformity. If a university wants to elect to retain title, then it had better have a deal with the inventors over that. If it doesn't, the inventors' only obligations are those in the (f)(2) agreement, and that is on behalf of the federal government.

It is sad (if that's the word) to see so many university administrations lined up behind this AUTM position that attacks inventors, appeals for autocracy and monoculture, refuses to present alternative views, misreads the law (and badly, and brazenly), and working through multiple organizations all strung together with the same thread. Where there should be debate and reflection, just nothing more than a political mob.

There has been no open discussion within the university technology transfer community on how Bayh-Dole operates, what the proper role of university involvement should be in patent administration, what kinds of response might be indicated to guide the courts, and how any of this advances university-industry collaboration or gives the broader public confidence that the overall model is sound and its practitioners capable and candid.

At least now we know clearly what's wrong with university innovation. It's not Bayh-Dole. Bayh-Dole is fine. There are things to be done to improve it, of course. No, the deeper, distressing problem is in the university administrative implementation of Bayh-Dole.

No law is going to change that.