IPAO interviews Gerald Barnett, PhD, Director, Research Technology Enterprise Initiative (RTEI) University of Washington
IP Advocate: Can you lay out the groundwork assumptions of Bayh-Dole before we delve into the particulars of the Act?
Dr. Barnett: It is important to acknowledge from the start of this discussion that Bayh-Dole applies only to instances of research performed with federal funds and not to any other circumstance of invention. Just because research is done at a university - that doesn't necessarily mean that Bayh-Dole is in play. For that matter, Bayh-Dole only applies to work done within the "planned and committed" scope of federal support. It doesn't apply to fellowships, scholarships, or closely related work that falls outside the "planned and committed" activities of a federal award.
The Good - What Bayh-Dole Was Intended to Do
IP Advocate: Understood. We're framing our discussion around the best and worst of Bayh-Dole - from intent to implication. Let's start with what's good. What was Bayh-Dole designed to do?
Dr. Barnett: Bayh-Dole was and is all about establishing the role of universities as stewards of patentable inventions produced with federal funds. Universities that receive federal awards should serve as trustees on behalf of the intended beneficiaries of the awards. Bayh-Dole lays out who these are: the general public, American manufacturers and small businesses, inventors, scientists, and educators, and the federal government. Universities are not named beneficiaries. That's because they are the stewards.