In boardrooms, staffrooms and chatrooms, a debate is raging over intellectual property ownership, spurred on by the recent verdict favoring the inventor in Stanford v. Roche. The contention continues between university and inventor even as patent "reform" legislation wends its way through the halls of Capitol Hill. Much of the hubbub stems from a presupposition that the university owns the innovation of its faculty scientists. University intellectual property policies reinforce this notion, making sweeping claims over faculty, staff (and often) student inventions.
For example:
The University of Georgia Research Foundation, Inc. is the assignee of intellectual property developed at UGA either through UGA research programs or by UGA personnel.
The University (of Missouri) as the employer and as the representative of the people of the state, shall have the ownership and control of any Invention or Plant Variety developed in the course of the employee's service to the University.
An agreement to assign inventions and patents to the University (of California, Davis) except those resulting from permissible consulting activities without use of University facilities, shall be mandatory for all employees, for persons not employed by the University but who use University research facilities, and for those who receive gift, grant, or contract funds through the University.
As the debate develops, there are those who clearly believe Bayh-Dole implies default university ownership. It is certainly not explicit in the legislation. Others believe that while it is not spelled out, it is the university's right to assert ownership and control. A passionate third faction holds that the university has no ownership rights under Bayh-Dole and that assignment is not required to fulfill the mandate of the Act.
One of the ardent voices in the latter category is Gerald Barnett, Director of the Research Technology Enterprise Initiative at the University of Washington. An industry insider with over 15 years of experience in technology transfer, Barnett is convinced that, "Bayh-Dole assumes inventor ownership of intellectual property unless and until they are required to assign."
He goes on to say, "the University does not have to elect title [to an invention] and instead, an agency funding research could elect title and deal directly with the inventor."
But do intellectual property policies overrun what Bayh-Dole intended? Universities fall back on Bayh-Dole as the underlying reason for the demands it places on its inventors, but is this rationale valid?
"I am confident that anyone can implement policies under Bayh-Dole that do not require the university to equate electing title with patent assignment," says Barnett. "So far I haven't seen anything that would indicate such an approach cannot be implemented within Bayh-Dole. Election is not assignment. Assignment to the university may be sufficient but is not necessary."
Will patent "reform" address the tendency of the university to reach beyond its due? You can't legislate ethical behavior. What's more, the proposed reform measures appear to offer more, rather than less, opportunities for abuse.
Barnett sees this as the "Buzz Lightyear moment" for university administrators. He cautions them, "You are not a flying toy. University title in subject inventions is a matter of falling with style. If you check the sole of your university shoe, you will see a government agency has signed its name. Live with it. More importantly, recognize what you are (a steward) and change your policy and practice behaviors accordingly. This applies equally to university inventors and administrators."
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